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 .
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 “stop assembly extends to an adjustment assembly (Claim 1)” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Specification
The amendment filed April 26, 2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Regarding claim 3, the phrase “wherein said stop assembly is positioned between the first end of the second linkage member of said linkage assembly and a first end of said adjustment assembly” filed December 3, 2024 is inconsistent with the disclosure and is new matter. The term “end” per Merriam Webster Dictionary is defined as the part of an area that lies at the boundary. At least Figures 2B and 3B disclose a threaded connection at an end of the second linkage member. Figures 2B and 3B does not provide support for the stop assembly (142) being positioned between the first end of the second linkage member (as shown in Annotated Figure 1, below) and the first end of the adjustment assembly.
PNG
media_image1.png
525
654
media_image1.png
Greyscale
Regarding claims 11-12, the phrases “wherein moving said adjustment assembly in a first direction moves the second linkage member in a first direction thereby, increasing a cutting depth of said blade when the roof cutter is in the deployed configuration, (claim 11),” “wherein moving the said adjustment assembly in a second direction moves the second linkage member in a second direction, thereby decreasing the cutting depth of said blade when the roof cutter is in the deployed configuration (claim 12)” in the response filed December 3, 2024are new matter. Page 7, [Para 0021] discloses the functionality of the adjustment assembly, but does not disclose any structures performing the functions. In other words, there are no details to the adjustment assembly being rotatable. How is the adjustment assembly rotated about the longitudinal axis? Is it Applicant’s intent to define the adjustment assembly as being rotatable about the threaded connection? Threads usually function to lock one structure relative to another, rather than providing linearly movement (without the incorporation of another structure moving along the threads, as a nut). Based on the known function of a threaded shaft, how is the adjustment assembly rotated?
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:
an adjustment assembly is configured to selectively adjust an amount of travel in claim 1.
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 1-9, 11, 12, 14-18 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 claim 3, the phrase “wherein said stop assembly is positioned between the first end of the second linkage member of said linkage assembly and a first end of said adjustment assembly” was not described in the specification in a way to reasonably convey one of ordinary skill in the art had possession at the time of filing, is inconsistent with the disclosed subject matter, and is new matter. The term “end” per Merriam Webster Dictionary is defined as the part of an area that lies at the boundary. At least Figures 2B and 3B disclose a threaded connection at an end of the second linkage member. Figures 2B and 3B does not provide support for the stop assembly (142) being positioned between the first end of the second linkage member (as shown in Annotated Figure 1, below) and the first end of the adjustment assembly.
Regarding claims 11-12, the phrases “wherein rotating the said adjustment assembly in a first direction moves the second linkage member in a first direction thereby, increasing a cutting depth of said blade when the roof cutter is in the deployed configuration, (claim 11),” “wherein rotating the said adjustment assembly in a second direction moves the second linkage member in a second direction, thereby decreasing the cutting depth of said blade when the roof cutter is in the deployed configuration (claim 12)” were not described in the specification in a way to reasonably convey one of ordinary skill in the art had possession at the time of filing and are new matter. Page 7, [Para 0021] discloses the functionality of the adjustment assembly, but does not disclose any structures performing the functions. In other words, there are no details to the adjustment assembly being rotatable. How is the adjustment assembly rotated about the longitudinal axis? Is it Applicant’s intent to define the adjustment assembly as being rotatable about the threaded connection? Threads usually function to lock one structure relative to another, rather than providing linearly movement (without the incorporation of another structure moving along the threads, as a nut). Based on the known function of a threaded shaft, how is the adjustment assembly rotated?
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 1-9, 11, 12, 14-18 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.
Claim limitation “an adjustment assembly” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function recited in the claim(s) nor is there any association between the structure and the function in the disclosure. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The 112, second paragraph rejection can be overcome by amending claim 1 (lines 14-15) to recite “wherein the adjustment assembly adjusts an amount of travel of the--.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended 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.
Mertes (CA 2206442) which discloses a cutter having a base, a blade that is positionable between a disengaged and engaged position, a brake assembly, and a linkage assembly. A handle is biased with respect to the tool and aids to adjust the depth of the device. The braking mechanism is also controlled via the rotational position of the handle.
Shirlin (US 7,373,859) teaches a roof cutter having a rotational handle in which vibrations are absorbed, but there is no teaching in Shirlin to a stop assembly having an aperture and being in engagement with a linkage assembly.
Johnson (US 20070164598) teaches a cutter having a base, a blade, and an adjustment assembly coupled to a linkage second member by a threaded connection extending form a first end of a second linkage member of said linkage assembly.
Response to Arguments
The Specification Objections to claim 1 (lines 11-12) in the Office Action mailed January 15, 2025 have been obviated by the amendments filed July 14, 2025. The Specification objections to claims 3, 11, 12, and 16 have been maintained.
The Claim Objections in the Office Action mailed January 15, 2025 have been obviated by the amendments filed July 14, 2025.
The 112, first paragraph rejection to claim 1 (lines 11-12) in the Office Action mailed January 15, 2025 have been overcome by the amendments filed July 14, 2025.
The 112, first paragraph rejection to claim 3 in the Office Action mailed January 15, 2025 have been maintained. Applicant argues the subject matter to “wherein said stop assembly is positioned between the first end of the second linkage member of the linkage assembly and the first end of said adjustment assembly” is supported in Para [0019] and shown in Figures 1, 2A, 2B, 3A,3B, and 4.
Figure 2B from the disclosure is set forth below in Annotated Figure 1. As shown below the stop assembly (142,144) does not appear to be positioned between the first end of the second linkage member and the first end of the adjustment assembly nor is the subject matter disclosed. Para [0019] states the stop member can extend from the adjustment assembly, but that does not provide any support for the stop assembly being positioned between a first end of the second linkage and a first end of the adjustment assembly. Where are the first ends of each assembly to satisfy this limitation? Para [0019] states engagement member 130 defines an aperture for receiving the second linkage member; therefore, the stop assembly appears to extend below the adjustment assembly and along the second linkage member.
PNG
media_image1.png
525
654
media_image1.png
Greyscale
The 112, 1st paragraph arguments with respect to claim 10 are moot due to the cancelation of claim 10 in the amendments filed July 14, 2025.
Regarding claims 11-12, the Examiner acknowledges Para [0021] is discloses the adjustment assembly 123 is configured to selectively adjust, prevent, or otherwise control travel of the second linkage member 122 relative to the engagement member 130, thereby adjusting, preventing, or otherwise controlling movement of the base 102 relative to the retracted configuration and/or relative to one or more cutting configuration. This is the only mention of the adjustment assembly and the terms “adjust, prevent, or otherwise control travel” does not provide support for “moving the adjustment assembly in a first direction.” There are no details as to how the adjustment assembly is adjusted or controls travel of the second linkage. There are further no details to the adjustment assembly moving in a first/second direction to move the second linkage in a first/second direction to increase/decrease the cutting depth.
The claim can be amended to recite “said wherein said adjustment assembly controls travel of the second linkage member relative to the engagement member to control movement of the base to increase and decrease the cutting depth of the blade” or similar language. This language is directly from Para [0021].
After further consideration, the Examiner acknowledge the BRI of the term “wheel base” set forth in the Remarks/Arguments filed April 26, 2024. The 112, 1st paragraph arguments with respect to claim 16 have been overcome.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER S MATTHEWS whose telephone number is (571)270-5843. The examiner can normally be reached Monday-Thursday 8am-4pm.
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, Adam Eiseman can be reached at 571-270-3818. 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.
/JENNIFER S MATTHEWS/Primary Examiner, Art Unit 3724