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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/21/2026 has been entered.
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 16-17 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 16 recites that “the plurality of cutting teeth are immediately proximate the guide”. However, it is unclear how exactly the plurality of cutting teeth are “immediately proximate the guide”? In what sense? Further clarification is needed.
Claim 17 recites that “each individual cutting tooth comprises a two-tiered cone shape”. However, it is noted that since the term “comprises” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004)), the metes and bounds of each individual tooth “comprising” a two-tiered con shape, are unclear. Does each individual cutting tooth, comprise an additional element? The examiner suggests amending the claim so as to defined that each individual cutting tooth is a two-tiered cone shape. Further clarification is needed.
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.
Claim(s) 10-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scaglione US 10,835,969.
In a first interpretation regarding claim 10, Scaglione discloses (as in Figures 1-12) a tool (100) for cutting a recess into a piece of drywall, the tool (100) comprising: a plate (102) having an inner portion (300), a middle portion (308 or 302a-d), and an outer portion (116a,d) the outer portion defined by a substantially flat drywall-contacting surface (refer to the flat surface of 116a,b in Figure 4, which abuts against a workpiece and acts as a stop as in col 7, lines 56-59 and col 9, lines 23-26); a plurality of individual cutting teeth (refer collectively to each one of 110a-d) positioned within the middle portion of the plate (see Figures 1-3); each individual cutting tooth (each one of 110a-d) of the plurality of individual cutting teeth is individually coupled to the middle portion of the plate (via 114a-d and 120a-d); wherein the plurality of cutting teeth (110a-d) are capable of being configured to cut into the piece of drywall to a predetermined recess depth defined by a height of the plurality of cutting teeth (110a-d) wherein the outer portion of the plate is capable of being configured to prevent the plurality of cutting teeth (110a-d) from cutting deeper than the predetermined recess depth (col 7, lines 56-59 and col 9, lines 23-26).
In a second interpretation regarding claim 10, Scaglione discloses (as in Figures 1-12) a tool (100) for cutting a recess into a piece of drywall, the tool (100) comprising: a plate (102) having an inner portion (an inner portion of 300), a middle portion (a middle portion of 308 or a middle portion of slots 302a-d), and an outer portion (an outer portion of 116a,d) the outer portion defined by a substantially flat drywall-contacting surface (refer to the flat surface of a portion of 116a,b in Figure 4, which abuts against a workpiece and acts as a stop as in col 7, lines 56-59 and col 9, lines 23-26); a plurality of individual cutting teeth (refer collectively to each one of 110a-d) positioned within the middle portion of the plate (see Figures 1-3); each individual cutting tooth (each one of 110a-d) of the plurality of individual cutting teeth is individually coupled to the middle portion of the plate (via 114a-d and 120a-d); wherein the plurality of cutting teeth (110a-d) are capable of being configured to cut into the piece of drywall to a predetermined recess depth defined by a height of the plurality of cutting teeth (110a-d) wherein the outer portion of the plate is capable of being configured to prevent the plurality of cutting teeth (110a-d) from cutting deeper than the predetermined recess depth (col 7, lines 56-59 and col 9, lines 23-26).
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Regarding the intended use limitations “for cutting a recess into a piece of drywall”; “drywall-contacting surface”; and “cutting teeth are configured to cut into the piece of drywall to a predetermined recess depth defined by a height of the plurality of cutting teeth and wherein the outer portion of the plate is configured to prevent the plurality of cutting teeth from cutting deeper than the predetermined recess depth” it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a “recitation with respect to the matter in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations”, if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) See MPEP 2114. The tool of Scaglione having an inner portion (1) 300 or 2) an inner portion of 300), a middle portion (1) 308 or 302a-d or 2) a middle portion of 308 or a middle portion of slots 302a-d), and an outer portion (1) 116a, d or 2) an outer portion of 116a,d) and the outer portion has a substantially flat workpiece-contacting surface (refer to the flat surface of a portion of 116a,b in Figure 4, which abuts against a workpiece and acts as a stop as in col 7, lines 56-59 and col 9, lines 23-26), is capable of performing the intended use of contacting/machining drywall.
In regards to claim 11, Scaglione discloses the tool of claim 10, Scaglione also discloses that the plurality of cutting teeth (110a-d) are removably coupled to the plate (see Figure 3).
In regards to claim 12, Scaglione discloses the tool of claim 10, Scaglione also discloses that the plurality of cutting teeth (110a-d) form a spoke pattern within the middle portion of the plate (as the cutting teeth 110a-d are disposed on spokes as in Figure 3, then the teeth form a spoke pattern).
In regards to claim 13, Scaglione discloses the tool of claim 12, Scaglione also discloses that at least one cavity positioned in the middle portion of the plate between each spoke pattern of the plurality of cutting teeth (110a-d) (see Figures 1-2 and 3 and refer to the cavities between each spokes).
In regards to claim 14, Scaglione discloses the tool of claim 10, Scaglione also discloses a guide (pilot guide drill 150), wherein the guide (pilot guide drill 150) is coupled to the inner portion of the plate (see Figure 1).
In regards to claim 15, Scaglione discloses the tool of claim 14, Scaglione also discloses that the plate (102), the guide (150), and the plurality of cutting teeth (110a-d) are a unitary structure (see Figure 1).
In regards to claim 16, Scaglione discloses the tool of claim 14, Scaglione also discloses that the plurality of cutting teeth (110a-d) are immediately proximate the guide (150) (see Figure 1).
Allowable Subject Matter
Claim 17 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 07/21/2026 have been fully considered but they are not persuasive.
Applicant argues on page 6 that Scaglione “does not disclose “outer portion defined by a substantially flat drywall-contacting surface,” a “predetermined recess depth defined by a height of the plurality of cutting teeth” or “the outer portion of the plate configured to prevent the plurality of cutting teeth from cutting deeper than the predetermined recess depth”. The Examiner disagrees.
Scaglione, as discussed above does disclose a structure of a frame having an outer portion defined by a flat surface that contacts a workpiece, being machined. It is noted that since the specific structure that defines what exactly is catalogued as an inner portion, middle portion and outer portion, are not being recited, the Examiner’s new interpretations, as set forth in the rejection above, are not precluded. The Examiner suggests clearly delimiting where exactly each of these portions, are being located on the tool.
In response to applicant's argument on pages 8-9that “Scaglione does not disclose that perimeter region 104 contacts drywall”, 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. Since, as disclosed above, Scaglione does disclose the structure of a plate 102, having an inner portion (an inner portion of 300), a middle portion (a middle portion of 308 or a middle portion of slots 302a-d), and an outer portion (an outer portion of 116a,d) and the outer portion has a substantially flat workpiece-contacting surface (refer to the flat surface of a portion of 116a,b in Figure 4, which abuts against a workpiece and acts as a stop as in col 7, lines 56-59 and col 9, lines 23-26), then Scaglione’s tool is indeed capable of performing the intended use of contacting/machining drywall.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722
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