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 .
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 driving unit configured to rotate in claims 4 and 11
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 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.
Claim limitation “a driving unit configured to rotate (Claim 4, line 4 and Claim 11, line 10)” 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 any structure that performs the function in the claim. 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.
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.
Claims 1-5, 11-13, 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 828,120 to Jones.
In re claim 1, Jones teaches a cutter apparatus for a double tube comprising:
a main body (11); a cylindrical protection member (13) connected to the main body, the cylindrical protection member (13) configured to receive therewithin an inner tube of the double tube, the double tube including the inner tube and an outer tube; and
a cutter member including a blade (8) configured to cut for cutting the outer tube.
Note, the preamble is directed to a cutter, not the combination of the cutter and the workpiece (which in this instance is the double tube). The cylindrical protection member has to be capable of receiving an inner tube of the double tube, in which it is. The cutter is inserted inside a pipe for cutting (Col. 2, lines 67-85)
In re claim 2, wherein the cutter member is (capable of being) on the cylindrical protection member (13, as shown in at least Figure 5).
In re claim 3, wherein the blade configured to fold (as shown in at least Figure 5) on the cylindrical protection member (13), and is configured to protrude (as shown in at least Figure 6) from the cylindrical protection member (13) when the outer tube is cut.
In re claim 4, wherein the cylindrical protection member (13) is rotatably connected to the main body (11), and the main body (11) includes a driving unit (thread, which engage the threads of the cylindrical protection member) configured to rotate the cylindrical protection member.
In re claim 5, further comprising: a cylindrical outer cover (5) on the main body (11) and surrounding the cylindrical protection member (13).
In re claim 11, Jones teaches a cutter apparatus for a double tube, the cutter apparatus for the double tube comprising:
a main body (11);
a cylindrical protection member (13) rotatably connected to the main body and configured to receive therewithin an inner tube of the double tube, the double tube including the inner tube and an outer tube;
a cutter member the cylindrical protection member and including a blade (8) configured to cut for cutting the outer tube; and
a driving unit (threads of the main body) configured to rotate f the cylindrical protection member.
In re claim 12, wherein the blade (8) is configured to fold (as shown in at least Figure 5) on the cylindrical protection member (13), and is configured to protrude (as shown in at least Figure 6) when the outer tube is cut.
In re claim 13, further comprising: a cylindrical outer cover (5) on the main body and surrounding the cylindrical protection member (13).
In re claim 18, Jones teaches a cutter apparatus for a double tube comprising:
a main body (11);
a cylindrical protection member (13) connected to the main body (11) and configured to receive therewithin an inner tube of the double tube, the double tube including the inner tube and an outer tube;
a cutter member (as shown in at least Figures 1-6) on the cylindrical protection member (13, as shown in at least Figure 5) and including a blade (8) configured to cut the outer tube;
and a cylindrical outer cover (5) on to the main body and surrounding the outer tube, the outer tube being outside the cylindrical protection member.
Claim Rejections - 35 USC § 103
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 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 6, 14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of US Patent No. 7,913,395 to Nigh, and in further view of US Patent No, 7,316,069 to Graybeal.
In re claims 6, 14, and 19, Jones teaches wherein the cylindrical outer cover (5), but does not teach the cylindrical outer cover includes a transparent material.
Nigh provides a teaching in the art of pipe cutters, a transparent shield (30) around the entire perimeter of the cutter (Abstract, Col. 5, lines 62-67, Col. 1, line 1).
It would have been obvious one having ordinary skill in the art before the effective filing date of the invention to fabricate the cylindrical outer cover of Jones from a transparent material as taught by Nigh which is advantageous for providing increased safety and visibility for making precise cuts in various environments.
Jones teaches wherein the cylindrical outer cover, but does not teach the cylindrical outer cover includes a scale to check a length of the outer tube to be cut.
Graybeal teaches a cutter apparatus having a cylindrical outer cover with a scale (134) to check a length of the outer tube to be cut.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the cylindrical outer cover of Jones with a scale as taught by Graybeal which is advantageous for precision, speed, and efficiency of the user.
Response to Arguments
Applicant’s arguments with respect to claims 1-6, 11-14, 18, and 19 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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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.
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/JENNIFER S MATTHEWS/Primary Examiner, Art Unit 3724
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