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
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected apparatus, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/3/2026.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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:
locking mechanism (e.g. claim 4) - e.g. a nut engages a recess in a pivotable clamp arm, and a finger of the clamp arm engages the depth rod (paragraphs 70, 80)
clamping element (e.g. claim 5) - e.g. a clamp arm
indexing mechanism (e.g. claim 14) - e.g., a circumferential indexing surface with a plurality of spaced teeth, where a spring biased pin engages the indexing surface (paragraphs 89-90)
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
Claim 3 is objected to because of the following informalities:
Claim 3 recites “claims 1”, but should be amended to recite --claim 1--.
Claim 3 recites “wherein locking knob” but should be amended to recite --wherein the locking knob--.
Appropriate correction is required.
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 1-17 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 1 recites “the distance” in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites “the circumferential indexing surface” in line 7. There is insufficient antecedent basis for this limitation in the claim.
The remaining claims are rejected by virtue of their dependency on claim 1.
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, 3, 8-9, and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McCurry (U.S. Patent 5,191,921).
Claim 1: McCurry discloses a power tool (plunge router 10) comprising: a housing (12); a motor (14) assembly arranged to rotate a cutting tool (column 2, lines 29-33), the motor being mounted in the housing (column 2, lines 26-27); at least one guide post (28, 30) slidably mounted to the housing (column 2, lines 37-42); a base (20) fixed to the at least one guide post (Id.); and a depth adjustment mechanism (46) arranged to adjust the distance the cutting tool projects through the base, the depth adjustment mechanism comprises: a depth rod (38) adjustably mounted to the housing and arranged to engage the base when the housing is plunged towards the base (column 2, lines 59-67); a depth adjustment knob (70) mechanically coupled to the depth rod being arranged to move the depth rod with respect to the housing (column 3, lines 33-38); a locking knob (76) for selectively locking the depth rod (column 3, lines 41-45), wherein one of the depth adjustment knob and the locking knob is at least partially nested within the other of the depth adjustment knob and the locking knob (evident in Fig. 3; see also column 4, lines 8-10 and 15-16).
Claim 3: The locking knob (76) is mounted on a rotatable shaft (62).
Claim 8: The depth adjustment knob comprises a sleeve portion (e.g. the sleeve-like inner or outer cylindrical portions of the knob 70 evident but not labeled in Fig. 3) mountable on at least a portion of the locking knob (the term “mountable” suggests the mere ability to be mounted in some unspecified way, such that the knob 70 or sleeve portions thereof are technically “mountable” on at least a portion of the locking knob even if not intended to be used as such).
Claim 9: The sleeve portion is mountable on the rotatable shaft (as shown in Fig. 3).
Claim 17: The power tool is a plunge router (e.g. title).
Claim 18: McCurry discloses a depth adjustment mechanism (46) for a power tool (plunge router 10) for adjusting a distance a cutting tool projects through a base (20) of the power tool, the depth adjustment mechanism comprising: a depth rod (38) adjustably mounted to a housing (12) and arranged to engage the base when the housing is plunged towards the base (column 2, lines 59-67); a depth adjustment knob (70) mechanically coupled to the depth rod being arranged to move the depth rod with respect to the housing (column 3, lines 33-38); a locking knob (76) for selectively locking the depth rod (column 3, lines 41-45), wherein one of the depth adjustment knob and the locking knob is at least partially nested within the other of the depth adjustment knob and the locking knob (evident in Fig. 3; see also column 4, lines 8-10 and 15-16).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over McCurry.
Referring to McCurry, the locking knob is not nested within the depth adjustment knob. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have nested the locking knob within the depth adjustment knob since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Additionally or alternatively, it has been held that the mere reversal of the essential working parts of a device involves only routine skill in the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955). Please note that in the instant application, e.g. paragraph 62, Applicant has not disclosed any criticality for this arrangement (noting a preference is not criticality) and contemplates the reverse arrangement.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over McCurry in view of Zaiser et al. (U.S. Patent 7,950,882).
Claim 11: McCurry discloses a power tool substantially as claimed except for wherein the depth adjustment mechanism comprises a rotatable scale collar. However, Zaiser teaches a similar power tool wherein the depth adjustment mechanism (28) comprises a rotatable scale collar (56 - column 4, lines 57-58). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a rotatable scale collar in order to have helped indicate the adjustment amount of the knob.
Claim 12: The rotatable scale collar is rotatable with respect to the depth adjustment knob (52 - as cited above).
Claim 13: The housing comprises a scale mark for aligning with the rotatable scale collar (it is noted that the term “scale mark” does not necessarily have a particular meaning or structural denotation and could practically refer to any feature of the housing which one could align with the scale marks). Alternatively, Zaiser shows what appears to be a scale mark on the housing corresponding with a similar knob on the upper-left portion in Fig. 1, and the examiner submits it would have been obvious to have similarly provided a scale mark for the depth adjustment knob to indicate the rotational position thereof.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over McCurry in view of Watanabe (WO 2017122642, with reference to translation).
Claim 14: McCurry discloses a power tool substantially as claimed except for wherein the depth adjustment knob comprises an indexing mechanism configured to index rotation of the depth adjustment knob. However, Watanabe discloses a knob comprising an indexing mechanism (knob 16 has teeth 18A/18B around a circumference thereof, which engage with spring-biased pins 30/32) configured to index rotation of the depth adjustment knob (see pages 7 and 10-11). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided an indexing mechanism in order to have allowed the knob to sit at discrete rotational positions and have a sense of detent to the user (Id.)
Claim 15: Referring to Watanabe, the indexing mechanism comprises a circumferential indexing surface (18) mounted on a portion (underside) of the knob.
Claim 16: The indexing mechanism comprises a spring (32) biased pin (30) arranged to engage the circumferential indexing surface.
Allowable Subject Matter
Claims 4-7 and 10 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.
The following is a statement of reasons for the indication of allowable subject matter:
McCurry is considered the closest prior art of record. Regarding claim 4, McCurry does not disclose a “locking mechanism” per the interpretation under 112(f). Claims 5-7 depend therefrom.
Regarding claim 10, the sleeve portion does not comprise a pinion engageable with a reciprocal rack mounted on the depth rod. Instead, the pinion 60 is mounted to the opposite end of the shaft 62.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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, 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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/Matthew P Travers/Primary Examiner, Art Unit 3726
