DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Applicant noted the correct claim dependency for claims 7-18 and the claims are fully examined in a Non-Final rejection below.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “said support base having an edge extending from at least one of said guide rails adjacent one of said first and second ends, said edge being adapted to engage a side of the workpiece and to slide along the side of the workpiece” of claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
-Examiner notes that while the figures (1 and 15-17) may show an edge, the drawings to not provide a reference character noting the location of what “edge” extends from at least one of said guide rails.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: reciprocating engagement member of claim 9; drive key and control rod of claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
-Regarding claims 7 and 8, the language concerning the control lock and body lack written description. Examiner notes Paragraphs 0041-00042 appears to provide the body (also described as housing 54) of the control lock 30 as reference character 54. The specification also provides in paragraph 00041 “As illustrated, the housing 54 is integrally formed with the end channel 28”. How does the control lock 30 include structural elements from the end channel 28 that is a portion of the plate 20? It appears from the provided paragraphs that the control lock merely works with or engages the body 54 of the plate (20), but the control lock itself does not appear to consist of a housing or body element as required by the claim language. It is unclear where one structural component begins, and the second structural components ends as currently claimed.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 7-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
-Regarding claim 1, the phrase “said support base is then moved along said workpiece with the tool positioned a spaced distance from the side of the workpiece” is unclear. Examiner notes the claims to be directed to an apparatus of a power tool guide, and neither the power tool, nor the workpiece is positively claimed. Is the support base moved by the user, capable of movement by itself, or through some other unknown means? As currently claimed, it is unclear if Applicant is attempting to claim positive recitation of method steps while the claims are directed towards an apparatus claim due to the positive recitation of multiple components engaging in contact with an unclaimed workpiece. For the purposes of examination all limitations regarding the power tool and workpiece will be treated as intended use, and any tool guide is capable of use with a variety of power tools and workpieces.
-Claim 1 recites the limitation "the tool" in line 16. There is insufficient antecedent basis for this limitation in the claim.
-Claim 7 recites the limitation "said mating control lock teeth" in line 4. There is insufficient antecedent basis for this limitation in the claim.
-Claim 7 recites the limitation "said guide teeth" in line 4. There is insufficient antecedent basis for this limitation in the claim.
-Claim 8 recites the limitation "said wheel" in lines 3-6. There is insufficient antecedent basis for this limitation in the claim.
-Claim 8 recites the limitation "said rails" in line 6. There is insufficient antecedent basis for this limitation in the claim.
-Claims 9-11 recite the limitation "said tool engagement clamp" in line 1. There is insufficient antecedent basis for this limitation in the claim.
-Claim 11 recites the limitation "the reciprocating engagement member with said housing" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
-Claim 12 recites the limitation "the tool" in line 2. There is insufficient antecedent basis for this limitation in the claim.
-Claim 15 recites the limitation "said lock plate" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 9-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Collins (U.S. Patent No. 5,080,152).
Regarding claim 1, Collins teaches a power tool guide comprising:
a tool plate (30) adapted to receive a power tool, said tool plate having a power tool engagement clamp (32,34,50) adapted to engage a power tool and connect the power tool to said tool plate (Figure 1; Cols 4-5 Lines 63-68 and 1-61);
said tool plate (30) having opposed channels (26)(Figures 1 and 7; Col. 3, Lines 56-64) and a control lock (72)(Figure 1 and Col. 4, Lines 7-10);
a support base (14,16) having opposed guide rails (20)(Figure 1), each of said guide rails having first and second ends (X1, X2; See annotated Figure 1 below), said tool plate opposed channels being removably mounted (Via brackets 22 and socket aperture 23) upon said support base opposed guide rails between said first and second ends, said channels allowing said plate to slide upon said opposed guide rails (Col. 3, Lines 56-53),
said control lock locking said tool plate with respect to said support base at a desired position along said opposed guide rails a spaced distance from said first and second ends (Figure 1, 2 and 7 and Col. 6, Lines 32-49),
said support base (14,16) having an edge extending from at least one of said guide rails adjacent one of said first and second ends, said edge being adapted to engage a side of the workpiece and to slide along the side of the workpiece (See Figures 1 and 4; Examiner notes the support base has multiple “edges”(See reference characters 14/16 in Figure 1 noting the edge surfaces) that extends from the positioning of the guide rail 20 and adjacent to the second end X2 (Annotated Figure 1 below) and the edge is capable of engaging a workpiece such that the edge slides upon a side of the workpiece);
whereby said tool plate (30) is positioned upon said support base (14,16), said tool plate (30) is locked a spaced distance from said first and second ends (See annotated Figure 1 below), said support base is then moved along said workpiece with the tool positioned a spaced distance from the side of the workpiece (Figures 1 and 3; Examiner notes the support base is capable of movement along a workpiece, with the power tool spaced a distance from a side of the workpiece. As the workpiece is not directly claimed, the limitation is capable of performing such an action with a variety of unclaimed workpieces).
Regarding claim 9, Collins teaches the power tool guide of claim 1, wherein said tool engagement clamp includes a housing (32, 36)(Figure 2 noting the recessed shape) and a reciprocating engagement member (50) reciprocally mounted within said housing (Figure 2 noting the housing 32,36 allows for the reciprocating engagement member to be mounted within the housing; Col. 4, Lines 24-40).
Regarding claim 10, Collins teaches the power tool guide of claim 9, wherein said tool engagement clamp includes feet (66) that mate within undercuts (38) on said tool plate to retain said tool engagement clamp with respect to said tool plate (Figures 1-2 and Col. 5, Lines 29-42).
Regarding claim 11, Collins teaches the power tool guide of claim 1, wherein said tool engagement clamp includes an alignment protrusion (66), said alignment protrusion aligns the reciprocating engagement member with said housing (Figures 1-2 and Col. 5, Lines 29-42).
Regarding claim 12, Collins teaches the power tool guide of claim 9, wherein said reciprocating engagement member includes a front face (top face as shown in Figure 1) to facilitate engagement with the tool (Cols 4-5 Lines 63-68 and 1-24).
Regarding claim 13, Collins teaches the power tool guide of claim 9, wherein said reciprocating engagement member includes drive key and a control rod, said drive key is mounted to said control rod (Figures 1-2).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Collins (U.S. Patent No. 5,080,152) in view of Foster (US6,585,106).
Regarding claims 15-16, Collins does not provide a lock plate that includes serrations, or said tool plate includes mating serrations ; or wherein said lock plate includes biasing members to bias said serrations and mating serrations into engagement.
Foster teaches it is known in the art of connections to provide a locking plate (38) with sidewalls (40,42) including serrations (S) wherein the side walls (40,42) are utilized as biasing elements to engage a second component (Figures 2A and 4; Col. 4, Lines 36-56).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the device of Collins to incorporate the teachings of Foster to provide a locking plate with corresponding serrations and biasing elements. In doing so, it allows for a frictional gripping contact towards a second connecting component.
Regarding claim 17, the modified device of Collins does not provide wherein said biasing members are coil springs.
One of ordinary skill in the art would have good reason to pursue known biasing elements which are known to be useful for a particular biasing function. There are a finite number of possible biasing means which pertain to a tool guide and allow for the desired biasing function. Thus, it would have been obvious to a person of ordinary skill in the art to try any reasonable biasing means, including coil springs, in an attempt to provide an improved biasing function for the locking components, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp with a reasonable expectation of success. KSR Int' l Co. V. Teleflex Inc. 550 U.S. _, 82 USPQ 2d 1385 (Supreme Court 2007) (KSR).
Claimed Subject Matter
It is to be noted that claims 7-8 have not been rejected over prior art. However, indication of allowable subject matter is withheld, as it is not clear how the claims will be amended to overcome the rejection under 35 USC 112. Examiner notes that while the prior art has similar corresponding structure to claims 7 and 8, the control lock of the prior art is incapable of utilizing a body element of a separate structural component as provided for in the current claim language.
Claims 14 and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 07/09/2026 have been fully considered but they are not persuasive.
Applicant notes the rejection of claim 1 under 112 second paragraph as unclear. As previously recited in the Non-Final office action, the language of the claim appears to positively recite structural elements, such as the workpiece and power tool. The claims however, are only directed to the tool guide. All recitations directed to the power tool and workpiece are considered intended use. Any tool guide is capable of use with a variety of power tools, and it is unclear as to what the bounds of “adapted to receive a power tool” are to be as well as the support base being positively moved along the workpiece. What kind of power tool is used, what is the size, shape, material of the workpiece such that the support base of the guide is capable of movement? The claims appear to lack detail on what the guide works in combination with these positively unclaimed elements, and as such, are unclear.
Applicant’s further arguments concerning the workpiece of claim 1 are noted but not persuasive. As noted in the 112 rejection above, the workpiece is not positively claimed and a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The edge referenced in the rejection is capable of engagement with a plurality of different workpieces, of different materials size and shape, thus capable of performing the claimed function.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD D CROSBY JR whose telephone number is (571)272-8034. The examiner can normally be reached Monday-Friday 8:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RICHARD D CROSBY JR/ 09/18/2026Examiner, Art Unit 3724
Prosecution Insights