DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s arguments, see "Remarks", page 6, filed December 30, 2025, with respect to the objections to the specification and the rejections of claims 1-5 under 35 U.S.C. § have been fully considered and are persuasive. The above-mentioned objections and rejections of July 30, 2025 have been withdrawn.
However, in light of the amended claims, a new ground for rejection of claims 1-5 under 35 U.S.C. § 112(b) has been cited below.
3. Applicant’s arguments with respect to the rejection of claims 1-5 under 35 U.S.C. § 102(a)(2) have been considered but are moot because the new ground of rejection under 35 U.S.C. § 103 does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Drawings
4. The drawings are objected to because Fig. 6 is unclear - namely, there is not sufficient contrast to determine where the markers for element 206 are pointing. When using black and white photography for drawings, the photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent under 37 CFR 1.84 (b)(1) [see MPEP
§ 608.02]. 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.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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.
5. Claims 1-5 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “planar faces” in claims 1 and 4-5 is used by the claims to mean “surfaces” while the accepted meaning is “flat, two-dimensional surfaces.” The term is indefinite because the specification does not clearly redefine the term. For the purposes of examination, Examiner will read “planar faces” to mean “surfaces”.
As claims 2-3 are dependent on claim 1, they inherit the deficiencies described above.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
6. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over StewMac (StewMac online webpage of the product catalog, listed as Non-Patent Literature page 1 Reference U of the attached PTO-892 - hereinafter "StewMac") in view of Raeder (US 2673399 A; cited in prior PTO-892, hereinafter “Raeder”).
In regard to claim 1, StewMac teaches a tool for use with a stringed instrument [four-pack of "2-in-1 Precision + Notched Straight Edge" luthier tools, hereinafter "luthier tools"], having at least first, second and third edges [four luthier tools have eight longitudinal edges] and at least three external, longitudinally-extending planar faces [four luthier tools have at least 8 longitudinal exterior faces], wherein the first edge includes a first plurality of notches formed in the first edge in spaced relation to one another with each notch in the first plurality of notches being a first predetermined distance from the adjacent notch ["Short Guitar Scale" notched edge], and the second-edge includes a second plurality of notches formed in the second edge in spaced relation to one another each notch in the second plurality of notches being a second predetermined distance from the adjacent notch ["Long Guitar Scale" notched edge], the second predetermined distance being different than the first predetermined distance [shown in image with four luthier tools], wherein the first and second plurality of notches are each laterally-opening recesses provided in respective the first and second edges [shown in image with four luthier tools] and are dimensioned to receive individual frets and paced in accordance with successive fret positions of distance instrument scale lengths ["Short Guitar Scale" and "Long Guitar Scale"].
StewMac does not teach that the luthier tools have an elongated triangular cross-section body such that each of the at least first, second, and third edges extend in mutually parallel fashion along the triangular cross-section body.
However, tools with triangular-shaped cross-section body and a plurality of edges with different scales, such as architectural/engineering rulers, are well known in the art, such as that shown by Raeder [Fig. 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined StewMac’s plurality of tools to have Raeder’s triangularly-shaped cross-section body in order to better have differing scales readily available for use in the same tool, as taught by Raeder [col. 1 lines 25-35].
In regard to claims 2-4, StewMac further teaches at least one of the first, second and third edges includes a continuous straight edge that extends the length of the edge [shown on luthier tools with "Short Guitar Scale" and "Long Guitar Scale" opposite notched end]; at least one of the first, second and third edges includes a continuous straight edge without notches formed therein but that extends less than the length of the tool [shown on the luthier tools without notched edges]; and comprising a hole formed through at least one of the planar faces [shown on all four luthier tools].
In regard to claim 5, StewMac does not teach that the external, longitudinally-extending planar faces are concave.
However, Raeder teaches a concave groove in each of the external, longitudinally-extending planar faces [finger grooves, best shown in Figs. 1 and 5].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used Raeder’s concave finger grooves with a triangular combination of StewMac’s luthier tools – as described for claim 1 – in order for a user to better grip a tool, a well-known engineering practice.
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 DANIEL QUINN whose telephone number is (571)272-2690. The examiner can normally be reached M-F 7:30-5:30 PST.
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, JOHN BREENE can be reached at (571)272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL M QUINN/Examiner, Art Unit 2855
/JOHN E BREENE/Supervisory Patent Examiner, Art Unit 2855