DETAILED ACTION1
REJECTIONS UNDER 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.
Claims 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2009/0279968 to Kiezel.
Claim 17 recites an engagement interface for a cutting guide apparatus for guiding placement of bore holes. Kiezel relates to such an interface. See Kiezel [0038]-[0039]. The preamble also states the bore holes are intended to be in a door, but this is mere intended use and the device of Kiezel is capable of facilitating the boring of a hole into any substrate. Kiezel teaches an engagement interface (19) having a first arm (23) and a second arm (24). See Kiezel Fig. 3 and [0039]. The first arm (23) has a first end operably coupled to a first mounting bracket (14) and a second end operably coupled to a second mounting bracket (15). See Kiezel Fig. 1 and [0038]-[0039]. Likewise, Kiezel teaches the second arm (24) ha[s] a first end operably coupled to the second mounting bracket (15). Id. Figures 1-4 further show that the first and second arms are each operably coupled to a common pivot axis (22) and are adjustable about the common pivot axis to define a range of different distances between the first and second mounting brackets. Claim 17 then recites that the engagement interface is configured to retain the cutting guide apparatus proximate to an edge of the door and center an edge bore guide between an inside face and an outside face of the door over an entirety of the range of different distances between the first and second mounting brackets. The term configured is interpreted in line with USPTO practice to require that the interface be capable of the intended uses of retain[ing] a cutting guide in proximity to a door without additional modification. The device (10) of Kiezel can be placed next to a door without any modification and, if placed, is also capable of center[ing] an edge bore guide (40) between two door faces over a range of different distances between the first and second mounting brackets.
Claim 18 recites that the edge bore guide comprises an edge bore collar that defines the common pivot axis. Figures 2 and 6 of Kiezel show the retainer has a tubular guide (58) that anticipates the collar and that sits on the common pivot axis (22). The collar the functions as a guide for a drill bit (66) to bore a hole in a substrate, such as a door. See Kiezel [0060]. Regarding claim 19, figures 1-2 and 20-21 of Kiezel show a midpoint of each of the first arm and the second arm is operably coupled to the edge bore collar. Claim 20 recites that a midpoint of the first arm and a second end of the second arm are operably coupled to the edge bore collar. Neither claim 20, nor parent claim 17, defines specifically where the second end of the second arm begins. Examiner defines the second arm (24) as having a first end connected to the mounting bracket and the second end being the region of the arm from the aperture to the distal end. Under this interpretation, claim 20 is also anticipated.
REJECTIONS UNDER 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious2 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 6-8, and 13-16 rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2007/0110528 to Chao in view of U.S. 2007/0041800 to Santos.
Claim 1 recites a cutting guide apparatus for guiding placement of bore holes in a door. Chao relates to such a cutting guide. See Chao [0002]. Chao teaches an engagement interface (50) configured to retain the apparatus proximate to an edge of a door (12) and center an edge bore guide between an inside face and an outside face of the door. See Chao [0004], [0007], and [0018]-[0019]. Figures 2-3 of Chao show the engagement interface comprising a first arm (52) and a second arm (54) that are each operably coupled to a common pivot axis (51). Chao then teaches a backset assembly (24). Specifically, figures 2-3 of Chao that the backset assembly (20) comprises a first mounting bracket (24) operably coupled to a first portion (521) of the first arm and a first portion (541) of the second arm (54) via bolts through the two unlabeled elongate openings aligned with labeled slots (34 & 36). Figure 6 shows that the first mounting bracket [is] disposed along one of the inside face or the outside face. Chao also shows that the backset assembly…is operably coupled to the engagement interface to enable an amount of backset from the edge of the door to a center of a handle hole guide (66) to be adjusted.
Claim 1 then recites that the backset assembly comprises a second mounting bracket operably coupled to a second portion of the first arm, the second mounting bracket being disposed along the other of the outside face or the inside face. Chao does not teach a second, opposing, mounting bracket. But it would have been obvious to modify Chao to include one in view of Santos. Santos also relates to a centering guide for boring holes in a door. See Santos [0005] and Fig. 8. Thus, Santos is highly analogous art. Santos taches a backset assembly (22) having two opposing mounting brackets (24). See Santos Fig. 1. It is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). In this case, it would have been obvious to modify Chao to have a second, opposing bracket, as taught by Santos to aid in centering the bore holes via either side of the door. Furthermore, the second bracket could easily, and predictably, be attached to the second portions (522, 542) of the arms (52, 54) via the bolts in the same manner as the first portions are attached.
Regarding claim 2, figure 3 of Chao shows the edge bore guide comprises an edge bore collar (56) that defines the common pivot axis, the edge bore collar defining a guide for a boring tool to cut or bore a hole in the edge of the door. Regarding claim 3, figure 3 of Chao shows that a midpoint of each of the first arm and the second arm is operably coupled to the edge bore collar. Figure 3 further shows that the first and second arms have an equal length as recited in claim 4.
Claim 6 recites that the amount of backset is adjusted by changing a distance of a center of a handle hole collar in the handle hole guide from the edge of the door. This is actually reciting a method step, which constitutes an intended use. The device of Chao has a handle hole collar (70) and is capable of changing a distance of a center of a handle hole collar in the handle hole guide (66) from the edge of the door. See Chao [0024]-[0025]. To be clear the collar is defined as the circular portion (70) that extends axially further out that the non-circular guide portion (72). Regarding claim 7, Chao further teaches that the distance of the center of the handle hole collar is adjusted by rotating the handle hole guide 180 degrees prior to operably coupling the handle hole guide to the first mounting bracket or the second mounting bracket. See Chao [0025]. Claim 8 recites the handle hole guide comprises a guide body having engagement members disposed on opposite ends. The non-circular element (72) is this guide body with the two outer engagement members being on the opposing ends. This guide can be fitted into the hole in the bracket (24) and would also be insertable into the opposing bracket based on the modification, which would duplicate the same hole.
Claim 13 recites substantially similar structures as claim 1, which are rejected for the same reasons. Claim 13 further recites a handle hole guide configured to interchangeably attach to one of the first mounting bracket or the second mounting bracket via a first set of engagement structures or a second set of engagement structures. The handle hole guide (66) can attach the first bracket (2) via the central hole. The guide (66) has both first and second (72) engagement structures. Based on the orientation, they both dispos[e] a center of a handle hole collar a first distance [or a larger second distance] from an edge of the door. Regarding claim 14, figure 3 shows the two engagement structures [are] disposed on opposite sides of the guide body. Claim 15 recites features from claim 1 and is rejected for the same reasons. Claim 16 recites the same feature as claim 7 and is rejected for the same reasons.
ALLOWABLE SUBJECT MATTER
Claims 5 & 9-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 5, the prior art does not teach or suggest attaching the end of the second arm to the edge bore collar. Unlike claim 17, the end cannot be arbitrarily defined in claim 5 because the proposed modification of Chao in the rejection requires the second end of the second arm to be connected to the second bracket.
Regarding claim 9, the X-shaped spacer element (50) of Chao does not expand and contract by rotating a threaded rod coupled through the two central bores. Nor would such a modification have been obvious absent some teaching to suggest it, which has not been found. As such, claim 9 and claims 10-12 that depend from it, are allowable.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil 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. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”