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 .
Response to Arguments
Applicant's arguments filed 9/15/2025 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that the amended cutting head does not invoke under 112(f), Examiner has carefully considered but has not found persuasive. A cutting head is considered a generic placeholder with no specific structural meaning, wherein the generic placeholder is modified by functional language, configured to score and separate the ceramic pieces, without being modified by sufficient structure for performing the claimed function. When looking to the specification, Figures 1 and 6 show a cutting element on the cutting head (3). The claim limitation is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Without the disclosure of the cutting tool as shown in the Figures, the claimed invention lacks sufficient structure to perform the claimed scoring and separating.
The 112(b) rejections provided below have been updated to reflect the amendments submitted in Applicant’s Response. Please see below for further details.
Claim 1 presently recites:
said mobile support preventing the guide from bending during the scoring and separation of short-length ceramic pieces; and
wherein the upper end of the at least one mobile support has a hole for passage of the at least one longitudinal guide.
Applicant argues that the support device (19) of Hoffman “does not provide support when the guide rail bends downward” (page 6, Arguments). Applicant then argues the apparatus of the instant invention “advantageously mitigates bending forces on guide 2 in both directions: upward…and downward”, and “Hoffman…fails to teach or suggest such features”. Applicant’s arguments are not commensurate in scope with the claimed invention, as the claimed invention neither recites the argued functional language, nor structure sufficiently limiting the claimed invention to thereby differentiate the claimed invention from the prior art. Hoffman discloses undesirable deformations and bending of the guide rail 3 are to be feared due to the high forces when breaking tile, and the support device (19) is specifically provided in order to prevent the undesirable bending/deformation; see page 5 of the English translation.
For the above stated reasons, Examiner has not found Applicant’s arguments persuasive. This action is made final herein, please see below for the updated grounds of rejection to reflect the amendments submitted by Applicant, i.e. as necessitated by amendment.
Examiner’s Note
The amended claims submitted on 9/15/2025 have several claim status identifier issues. For example, in claim 1 submitted on 9/15/2025, ‘guide’ is underlined (i.e. indicated as an additional amendment), but this limitation existed in the examined claim set dated 2/27/2023. There is also an additional ‘the’ as well as an ‘and’, underlined, both of which existed in claim 1 the previous claim set. In amended claim 5 submitted on 9/15/2025, claim 5 is submitted as follows:
PNG
media_image1.png
107
657
media_image1.png
Greyscale
However, originally filed and examined claim 5 did not include the above crossed out language of “
For the sake of compact prosecution, Examiner has proceeded to examine the claims as submitted on 9/15/2025, as the differences are minor. Examiner strongly suggests confirming the claims submitted in subsequent actions reflect the proper claim statuses.
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:
a cutting head configured to score and separate the ceramic pieces in claim 1. A cutting head is considered a generic placeholder with no specific structural meaning, wherein the generic placeholder is modified by functional language, configured to score and separate the ceramic pieces, without being modified by sufficient structure for performing the claimed function. When looking to the specification, Figures 1 and 6 show a cutting element on the cutting head (3).
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 Objections
Claims 5-7 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 5, please amend “it” to reflect the structure being narrowed.
Regarding claim 6, please amend “its” to reflect the structure being narrowed.
Regarding claim 7, please amend “they” to reflect the structure being narrowed.
Claim Rejections - 35 USC § 112
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 6-8 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 6, claim 6 recites “wherein the base has at least two longitudinal tracks”, and depends from claim 1. Within the context of the claimed invention, it is unclear if the at least one longitudinal track of claim 1 is being narrowed to at least two longitudinal tracks (i.e. two or more total) or if the recited at least two longitudinal tracks are in addition to the at least one longitudinal track (i.e. the at least one longitudinal track of claim 1, plus two longitudinal tracks of claim 6).
Claim 6 also recites “a single longitudinal guide”, wherein claim 1 recites “at least one longitudinal guide”. It is unclear if the longitudinal guide of claim 6 intended to recite/refer to the same longitudinal guide of claim 1 but recites improper antecedent basis, or if claim 6 intends to recite an additional longitudinal guide to the at least one longitudinal guide of claim 1.
Claim 6 also recites “a single mobile support”, wherein claim 1 recites “at least one mobile support”. It is unclear if the recitation of “a single mobile support” intended to recite/refer to the same at least one mobile support of claim 1 but recites improper antecedent basis, or if claim 6 intends to recite an additional mobile to the at least one mobile support of claim 1.
Claim 6 also recites “respective slides”. It is unclear if the recitation of the “respective slides” is in addition to the already established “at least one slide” (claim requires minimum of three slides), or further narrowing the “at least one slide” (claim requires minimum of two slides).
Regarding claim 7, claim 7 recites “wherein the base has at least two longitudinal tracks”, and depends from claim 1. Within the context of the claimed invention, it is unclear if the at least one longitudinal track of claim 1 is being narrowed to at least two longitudinal tracks (i.e. two or more total) or if the recited at least two longitudinal tracks of claim 7 are in addition to the at least one longitudinal track (i.e. the at least one longitudinal track of claim 1, plus two longitudinal tracks of claim 7).
Claim 7 also recites “two parallel longitudinal guides”, wherein claim 1 recites “at least one longitudinal guide”. It is unclear if the two parallel longitudinal guides of claim 7 intended to narrow the at least one longitudinal guide of claim 1 but recites improper antecedent basis, or if claim 7 intends to recite two parallel longitudinal guides in addition to the at least one longitudinal guide of claim 1.
Claim 7 also recites “two mobile supports”, wherein claim 1 recites “at least one mobile support”. It is unclear if the recitation of “two mobile supports” of claim 7 intended to narrow the at least one mobile support of claim 1 but recites improper antecedent basis, or if claim 7 intends to recite two mobile supports in addition to the at least one mobile support of claim 1.
Claim 8 inherits the rejection as applied to claim 7 above and thus is additionally rejected herein.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1, 4-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hofmann (AT-15477-U1), please also refer to the attached English translation.
Regarding claim 1, Hofmann discloses a manual long-length ceramic cutter (see Figure 2 and Abstract), comprising:
a supporting base for a ceramic piece to be cut (see base plate 18 and tiles 2, shown in Figure 2 and disclosed on page 5);
at least one longitudinal guide installed above the base (see guide rail 3 installed above base 18, see also page 5 of the English translation); and
a cutting head configured to score and separate the ceramic pieces (wherein there is a scoring tool 20, see page 4 of the English translation), operable manually and installed on the at least one longitudinal guide so that the cutting head can move longitudinally (wherein scoring tool 20 is displaceably mounted on the guide rail 3, wherein lever 5 is disclosed as being manually operated for scoring using tool 20, see page 4 of the English translation);
at least one mobile support (see Figure 9, see support device 19) having:
an upper end installed on the at least one longitudinal guide (wherein there is an upper end of support device 19 installed on guide rail 3, see Figure 9 as well as page 5 of the English translation), and
a lower end installed on at least one longitudinal track of the base (see grooves 27, wherein sliding blocks 28 are slidably mounted therein, Figure 9; see also page 5 of the English translation);
wherein said at least one mobile support can move longitudinally along the at least one longitudinal guide and along the at least one longitudinal track (page 5 of English translation: the additional support device 19 is preferably releasably and/or slidably attached to the base plate 18, wherein the support device is displaceable by the sliding blocks 28 sliding within grooves 27), said mobile support preventing the guide from bending during the scoring and separation of short-length ceramic pieces (page 5 of the English translation: undesirable deformations and bending of the guide rail 3 are to be feared due to the high forces; wherein the support device is provided in order to prevent and/or avoid the undesirable bending); and
wherein the upper end of the at least one mobile support (19) has a hole for passage of the at least one longitudinal guide (please see Figure 9, wherein there is a slot and support surface, wherein the guide rail 3 is supported therein; see also page 5 of the English translation).
Regarding claim 4, Hofmann discloses the claimed invention as applied above, wherein Hofmann further discloses wherein the lower end of the mobile support comprises at least one slide installed on the at least one longitudinal track of the base (see at least sliding blocks 28 in Figure 9, as well as page 5 describing the sliding blocks 28 within grooves 27).
Regarding claim 5, Hofmann discloses the claimed invention as applied above, wherein Hofmann further discloses wherein further comprising a threaded knob acting on the at least one slide to tighten it against the at least one longitudinal track of the base and locking the at least one mobile support in a desired position (please see at least screws 29 within the sliding blocks 28, as well as page 5 of the English translation disclosing that the sliding blocks are fastened by means of the screws 29; wherein the claimed function language is disclosed by the prior art, as the screws 29 may be further threaded or loosened).
Regarding claim 6, Hofmann discloses the claimed invention as applied above, wherein Hofmann further discloses wherein the base has two longitudinal tracks (27, see Figure 9) and the manual cutter has:
a single longitudinal guide (3) arranged in correspondence with a longitudinal median plane of the base and attached at its ends to the base (see at least guide rail 3, arranged in correspondence with the central axis of base 18, attached to rail supports 17; see Figure 1); and
a single mobile support (19) having two branches (B1, B2, Reference Drawing 1) diverging towards a lower area, installed by respective slides (28) on the two longitudinal tracks (27) of the base (18).
PNG
media_image2.png
374
423
media_image2.png
Greyscale
Reference Drawing 1
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 7, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hofmann (AT-15477-U1) in view of Liou (US 5,040,445).
Regarding claim 7, Hofmann discloses the claimed invention as applied above, wherein Hoffman further discloses wherein the base has two longitudinal tracks (27, see Figure 9).
However, Hofmann does not explicitly teach an alternative to the single guide rail (3) comprising an additional, parallel guide rail, and therefore the mounting components of elements (4) and (19) on two parallel guide rails. Hofmann does not explicitly teach two parallel longitudinal guides; and two mobile supports installed such that they can move along the two parallel longitudinal guides and the two parallel longitudinal tracks.
From the same or similar field of endeavor, Liou teaches of a tile cutting device comprising a base (10), two parallel longitudinal guides (14) having two sliding pieces (20, 40) mounted thereon, wherein each of the sliding pieces has two sleeves, i.e. upper ends of mobile elements, installed such that they can move along the guide(s) (see Figures 1-5 of Liou, as well as Col. 1, line 54-Col. 2, line 15).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus of Hofmann to include two parallel longitudinal guides, and modifying the cutting device and support device to be mounted on the two parallel guides, as taught by Liou. Imparting an additional guide rail in the configuration taught by Liou would also entail the elements mounted on the guide rail of Hofmann to be configured for displacement on the parallel guides, i.e. emulating the sliding pieces (20, 40) of Liou. As such, the top end carrier piece (4) of Hofmann would have two sleeves (22) connected by a central body portion (see Figure 1 of Liou).
One would be motivated to impart the modification so as to disperse forces occurring during cutting/scoring across two support rails, thus decreasing strain on the support elements and reducing the likelihood of deformation, which is a goal of Hofmann’s. Furthermore, this modification is recognized as a duplication of parts, and considered an obvious modification that would yield predictable results with a reasonable expectation of success; see also Section (VI.)(B.) of MPEP 2144.04.
Regarding the claimed two mobile supports installed, Hoffman provides one mobile support element (19) but does not explicitly teach a second mobile support element. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated an additional support device of Hoffman, i.e. thus totaling two support devices configured to move along two parallel guides and parallel tracks. Supplying an additional support device would provide the same beneficial features of the singular support device; undesirable deformations and bending of the guide rail(s) would be reduced (see page 5 of Hoffman, translation). This additional support would also assist in reducing sagging of the guide rail(s) (see page 3 of Hoffman translation). One would be motivated to incorporate an additional support for the reasons as previously stated, and in order to preserve the condition of the apparatus and reduce the likelihood of damaging and/or breaking the device, thus increasing the overall life of the apparatus. Furthermore, this modification is recognized as a duplication of parts, and considered an obvious modification that would yield predictable results with a reasonable expectation of success; see also Section (VI.)(B.) of MPEP 2144.04.
Regarding claim 8, Hofmann in view of Liou teaches the claimed invention as applied above, wherein modified Hofmann further teaches wherein the two mobile supports are attached to one another, and configured to move simultaneously along the two parallel longitudinal guides of the manual cutter (wherein the combination as applied to claim 8 teaches this limitation; wherein the two additional support devices 19 of Hoffman are attached to one another by the guide tracks and guide rails, and are configured to move simultaneously when both are pushed).
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 MAKENA S MARKMAN whose telephone number is (469)295-9162. The examiner can normally be reached Monday-Thursday 8:00 am-6:00pm.
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, David Posigian can be reached at 313-446-6546. 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.
/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723