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 .
Election/Restrictions
Applicant's election with traverse of Invention I (claims 1-7) and species B (illustrated in Figure 151) in the reply filed on December 9, 2025 is acknowledged. The traversal is on the grounds that claim 1 has been amended to serve as a linking claim for other claim sets such that a serious search burden on the examiner does not exist. Relative to the species election, Applicant argues that the claims are generic so no species election should be necessary. This is not found persuasive.
MPEP Section 808 states:
Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction is not required . . . .
The MPEP expands upon part (B) in Section 808.02 (titled “Establishing Burden”). Specifically, Section 808.02 recites the following:
Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) - § 806.06, the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required. Thus the examiner must show by appropriate explanation one of the following:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Note that it is only necessary to show one of (A), (B), or (C) to establish a serious burden. In the instant case, at least part (C) of Section 808.02 has been established. Examiner noted that, at the very least, different search queries would be necessary to examine the exclusive characteristics of each invention/species. Furthermore, in the unelected inventions, there are differing scopes between them without limitations present in other claimed inventions. Because the other inventions do not depend from claim 1, claim 1 is not considered a linking claim. Thus, burden has been properly established.
The requirement is still deemed proper and is therefore made FINAL.
Note that it is only necessary to show one of (A), (B), or (C) to establish a serious burden. In the instant case, at least part (C) of Section 808.02 has been established. Examiner noted that, at the very least, different search queries would be necessary to examine the exclusive characteristics of each invention/species. Furthermore, in the unelected inventions, there are differing scopes between them without limitations present in other claimed inventions. Because the other inventions do not depend from claim 1, claim 1 is not considered a linking claim. Thus, burden has been properly established.
Claims 8-26 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitations recite sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitations are: drilling assembly in claim 1; drill guide assembly in claim 1; front support assembly in claim 1; actuating assembly in claim 1; lock mechanism in claim 1; switch assembly in claim 1; clamp assembly in claim 3; and bias member in claim 5.1
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-7 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 1 recites “the drilling assembly is movable along the drill guide assembly between an extended position and a retracted position.” in Lines 13-14. It is ambiguous as to whether the drilling assembly is movable only within a range between the positions or from a retracted position to an extended position (and vice versa). Appropriate correction required.
Claim 1 recites “the front support assembly includes a set of retractable support legs that can be moved downward between a retracted position and an extended position.” in Lines 17-18. The phrase “can be” infers an option, which creates a lack of definiteness. If Applicant means to refer to capability, simply reciting “capable of” or “movable” would set forth a clearer limitation. Furthermore, the phrase “between a retracted position and an extended position” is ambiguous as to whether the support legs are movable only within a range between the positions or from a retracted position to an extended position. Claim 6 recites similar language regarding movement between positions and is rejected under the same rationale. Appropriate correction required.
Claim 1 recites “when the first handle is moved away from the lip, the lever moves the drilling assembly toward the lip” in Lines 25-26. The term “when” creates a lack of clarity because it is unclear if the limitation is required if “when” never occurs. The term “when” is recited in Lines 28, 30, 32 and 34, respectively. Each clause containing “when” is rejected on the same ground. Appropriate correction required.
The term “proximate” in claim 1 is a relative term which renders the claim indefinite. The term “proximate” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction required.
Claim 1 recites “allows a user to see an area of the workpiece proximate to where a pocket hole will be drilled to facilitate positioning of the base assembly on the workpiece” in Lines 35-36. The phrase “will be” provides for an indeterminate time in the future, which creates a lack of clarity. A “will be” clause is recited in Line 38 and is also rejected under the same rationale. Furthermore, it is unclear how the ability to see a drilling location facilitates positing on the workpiece. Appropriate correction required.
Claim 5 recites “when the clamp assembly is unclamped from the set of retractable support legs” in Lines 7-8. The term “when” creates a lack of clarity because it is unclear if the limitation is required if “when” never occurs. The term “when” is recited in Lines 28, 30, 32 and 34, respectively. Each clause containing “when” is rejected on the same ground. Appropriate correction required.
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.
Claims 1-4, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Robinson (US Patent No. 6,599,064 B1) in view of Sommerfeld et al. (US Pub. No. 2008/0219788 A1) and (DE 20008356 U) and Quick et al. (US Patent No. 2,898,785).
(Claim 1) Robinson discloses a powered pocket hole drilling system (Figs. 1, 8, 14). The system includes: a base assembly (44, 54); the base assembly extending between a front end and a rear end (Figs. 1, 8, 14); the base assembly having a plate (44, 94); the plate having a drill bit opening extending through the plate (70; Figs. 9, 14); a lip (66) operably connected to the plate; a drilling assembly (30, 18); the drilling assembly includes a motor (10 - motor therein; Col. 5, Lines 44-45); a drill bit (106) connected to the motor of the drilling assembly; a drill guide assembly (20, 24); and the drill guide assembly operably connected to the base assembly and the drilling assembly (Fig. 8). The drilling assembly is movable along the drill guide assembly between an extended position and a retracted position to extend and retract the drill bit through the drill bit opening at an angle (Figs. 1, 8, 14; Col. 5, Lines 48-55). The drilling assembly includes a switch assembly (14) configured to turn on the motor when the drilling assembly is moved away from the retracted position; and the switch assembly is configured to turn off the motor when the drilling assembly is moved to the retracted position (Col. 8, Lines 50-58). Robinson does not explicitly disclose an actuating assembly as claimed, a front support assembly as claimed, a lock mechanism as claimed, or a window and indicator as claimed.
Sommerfeld et al. (“Sommerfeld”) discloses an actuating assembly (110) is operably connected to the drilling assembly. The actuating assembly includes a lever (136) and a first handle (138) positioned on an upper end of the lever; wherein when the first handle is moved away from the lip, the actuating assembly moves the drilling assembly toward the lip to the extended position through the drill bit opening (¶¶ 0025, 0029, 0031, 0039, 0054; Figs. 1, 9 - in particular, paragraph 0025 discloses that the handle may be moved upward (i.e., away from the lip) to activate/actuate the drill); wherein when the first handle is moved toward the lip, the actuating assembly moves the drilling assembly away from the lip to the retracted position (¶¶ 0025, 0029, 0031, 0039, 0054; Figs. 1, 9); wherein when a lower surface of the plate is placed on a first surface of a workpiece with the lip placed against an edge of the workpiece, the drill bit is positioned to drill a pocket hole in the workpiece when the drilling assembly is moved to the extended position (¶¶ 0025, 0029, 0031, 0039, 0054; Figs. 1, 9). At a time prior to effective filing it would have been obvious to one having ordinary skill in the art to provide the system disclosed in Robinson with an actuating assembly having movement away from the drilling target location/lip as suggested by Sommerfeld in order to operate the system with a pull of a handle and transfer clamping force to the workpiece (¶ 0026).
Quick et al. (“Quick”) discloses a front support assembly (51, 52); wherein the front support assembly includes a set of retractable support legs that can be moved downward between a retracted position and an extended position (Col. 2, Lines 64-68); wherein the front support assembly is configured to hold the set of retractable support legs in the extended position to hold the front end of base assembly in a raised position above a worktable (Fig. 3 via threaded connection between 51 & 52 with lock nut 53). At a time prior to effective filing it would have been obvious to one having ordinary skill in the art to provide the system disclosed in Robinson with a front support assembly as suggested by Quick in order to level the system (Col. 2, Line 64).
DE 20008356 U (‘356) discloses a system including a window (15) in a base assembly (Figs. 2, 3). When the base assembly is placed on a workpiece, the winder allows a user to see an area around where the drill bit enter the workpiece (Figs. 2, 3). The base assembly includes one or more indicators (30, 31) proximate to the window. When the base assembly is placed on the workpiece, the window allows a user to see an area around where the drill bit enters the workpiece and the one or more indicators facilitate positioning of the base assembly in an intended location (29). The 356 patent also discloses a lock mechanism (49, 50, 53). The lock mechanism is capable of locking a lever (8) in place when the drilling assembly is moved to the retracted position. At a time prior to effective filing it would have been obvious to one having ordinary skill in the art to provide the system disclosed in Robinson with a window, indicators and locking mechanism as suggested by the ‘356 patent in order to position the drill bit, and therefore the hole, relative to the workpiece and lock the position of the lever (see translation).
(Claim 2) In the modified system, the front support assembly is configured to hold the set of retractable support legs in place at an infinite number of positions between the extended position and the retracted position (Quick via threads between 51, 52).
(Claim 3) In the modified system, the front support assembly includes a clamp assembly (Quick 53) configured to clamp the set of retractable support legs in place (Col. 2, Lines 63-68).
(Claim 4) In the modified system, the front support assembly includes a clamp assembly configured to clamp the set of retractable support legs to hold the retractable support legs in place and unclamp from the set of retractable support legs to allow the set of retractable support legs to move between the retracted position and the extended position (Quick 53; Col. 2, Lines 63-68).
(Claim 6) In the modified system, the set of retractable support legs are configured to separately move between the retracted position and the extended position independent of each other (Quick via threads between 51, 52).
(Claim 7) In the modified system, the front support assembly includes a clamp assembly (Quick 51-53) configured to clamp the set of retractable support legs in place. While the clamp assembly does not explicitly disclose a cam and clamp plate as claimed, such mating components are well-known in the art, the fact of which examiner takes official notice. As such, at a time prior to effective filing it would have been obvious to one having ordinary skill in the art to provide the system disclosed in Robinson with the clamp assembly includes a cam and a clamp plate positioned between the cam and one of the set of retractable support legs; wherein rotation of the cam presses the clamp plate against the one of the set of retractable support legs thereby clamping the one of the set of retractable support legs in place as a simple substitution of one known element for another. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Robinson (US Patent No. 6,599,064 B1) in view of Sommerfeld et al. (US Pub. No. 2008/0219788 A1) and (DE 20008356 U) and Quick et al. (US Patent No. 2,898,785) further in view of Wolf (US Patent No. 4,572,715).
(Claim 5) In the modified system, the front support assembly includes a clamp assembly (Quick 51-53) configured to clamp the set of retractable support legs to hold the set of retractable support legs in place and unclamp from the retractable support legs to allow the set of retractable support legs to move between the retracted position and the extended position. Yet, the modified system does not explicitly disclose bias members as claimed.
Wolff discloses a front support assembly that includes a set of bias members (8) configured to move the set of retractable support legs to the extended position when a clamp assembly (11) is unclamped. At a time prior to effective filing it would have been obvious to one having ordinary skill in the art to provide the system disclosed in Robinson with bias members as suggested by Wolff in order to provide set adjustment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
1 The first recitation of each term is identified, but the interpretation applies throughout the claims.
Prosecution Insights