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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3-9-2026 has been entered.
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.
Claims 13-14 and 25-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPGPUB 20090314149, Clark.
Regarding Claim 13, Clark discloses:
A wire saw device (cutting apparatus 10, abstract) comprising:
a saw wire 16 and
a wire saw (combination of frame 13, rollers 27-31) including:
a wire drive (motor 44, which drives the roller and 31, par. 0095);
a wire store for the saw wire (combination of rollers 27-31), the wire drive and the wire store defining a drive and storage unit (since the parts 13 and 31 act together to drive and also store the wire, par 0030-0032); and
an actuator (66 and 71, par. 0096) for tautening the saw wire (see par 0096 and fig. 6) arranged on the drive and storage unit (figs. 4 and 6); and
a first side (space between wall 25 and rollers 29 and 32, see figs 4 and 8; and annotated fig. 6, shown below) with an interior facing the wire store (see annotated fig. 6 below) and an exterior facing away from the wire store (see annotated fig. 6 below);
the saw wire being an endless saw wire (par.0091/0096; since it forms a closed loop, see fig. 6) guided from an exterior of the wire saw (see annotated fig. 6 below) to an interior of the wire saw through the first side (see annotated fig. 6 below), and guided to exit the interior of the wire saw through the first side, (see annotated fig. 6 below) the saw wire thus extending away from the wire saw to define a cutting loop section (see second annotated fig. 6 below).
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Regarding Claim 14, in Clark: the actuator 32 is provided to set a tension in the saw wire (par 0096).
Regarding Claim 25, in Clark: the wire store has a plurality of side by side rollers (e.g. 27 and 29 and 30 and 28).
Regarding Claim 26, in Clark: the wire store has two sets of side by side rollers (e.g. 27 and 29 and 30 and 28).
Regarding Claims 27 and 28, in Clark: the saw wire is guided from the exterior of the wire saw to the interior of the wire saw by an inlet guide roller (28), and guided to exit the interior of the wire saw via an outlet guide roller (29), wherein the inlet and outlet guide rollers are located on the exterior side (fig 4 and 6, roller 28 being partly exterior and roller 29 partly exterior).
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 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 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 15-16, are rejected under 35 U.S.C. 103 as being unpatentable over Clark as applied to Claim 13 above, and further in view of USPGPUB 20150101471 to Pierce.
Regarding Claim 15-16, Clark lacks the wire saw further comprising a cover for the wire store, a wire tension lower than an operating wire tension being settable when the cover is opened (claim 15) and wherein the operating wire tension is settable when the cover is closed (Claim 16).
Pierce discloses a wire saw (see abstract) in the same field of endeavor as the wire saw of the present invention and discloses that such a system includes a cover 112 for a wire store thereof (housing), and a wire tension lower than an operating wire tension being settable when the cover is opened (par 0085 which discloses that a wire tension may be reduced while the cover 112 is removed, or prior to and while a cover 112 is removed; and see par 0066 which discloses that “The tension adjustment member 240 is adjustable to adjust a quantity of tension applied to the cutting member 24 and may be adjusted to allow for removal and replacement of the cutting member”) in order to allow for removal of the cover to allow for replacing the wire saw blade when worn, (par 0085)(claim 15) and wherein the operating wire tension is settable when the cover is closed (par 0066) (Claim 16), in order to adjust the tension during use (par. 0066).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Clark by including a cover thereon and by a wire tension lower than an operating wire tension being settable when the cover is opened (claim 15) and wherein the operating wire tension is settable when the cover is closed (Claim 16), in order to adjust the tension during use and to allow for removal of the wire when needing to be replaced as taught by Pierce.
Claims 17 and 21-24, are rejected under 35 U.S.C. 103 as being unpatentable over Clark as applied to Claim 13 above, and further in view of USPGPUB 20040231654 Parsells.
Regarding Claim 17, Clark lacks a remote control, and the actuator for tautening the saw wire being a constituent of the remote control (Claim 17).
Parsells discloses a wire saw (see abstract) in the same field of endeavor as the wire saw of the present invention and discloses that such a system includes a remote control (“remote control” par. 0030), and the actuator for tautening the saw wire being a constituent of the remote control (par 0030), in order to reduce exposure to workers of hazardous conditions see abstract.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Clark by including a remote control, and the actuator for tautening the saw wire being a constituent of the remote control (Claim 17), in order to reduce exposure to workers of hazardous conditions as taught by Parsells.
Regarding Claim 21, Clarke discloses a method for tautening a saw wire in a wire saw (par 0091), the method comprising: a) providing a wire saw 10 with a saw wire 16, the wire saw being as recited in claim 13 or the wire saw being provided as part of a system comprising the wire saw (see claim 13 rejection and as discussed above) and
b) introducing the saw wire into the wire store of the wire saw (fig 1, and par 0091, “An endless diamond wire 16 is wound about the roller guides/sheaves 27-30,”); and c) simultaneously tensioning the saw wire within the wire store manually and actuating an actuator of the wire saw with the result that the saw wire is tautened (see par. 0091 and 0096).
Clarke lacks a remote control to actuate the tautening.
Parsells discloses a wire saw (see abstract) in the same field of endeavor as the wire saw of the present invention and discloses that such a system includes a remote control (“remote control” par. 0030), and the actuator for tautening the saw wire being a constituent of the remote control (par 0030), in order to reduce exposure to workers of hazardous conditions see abstract.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Clark by including a remote control, and the actuator for tautening the saw wire being a constituent of the remote control (Claim 17), in order to reduce exposure to workers of hazardous conditions as taught by Parsells.
Regarding Claim 22, in Clark, the actuator is arranged 32 on a drive and storage unit of the wire saw (see fig 1 and 4).
Regarding Claim 23, in Clark, the method of use is carried out by only one user (see par 0139 where a single operator is disclosed).
Regarding Claim 24, Clark discloses:
A method for using an actuator 32 for tautening a saw wire in a wire saw (par 0091 and 0096).
Clark lacks actuating the wire saw method of use comprising using and actuating the actuator while the actuator is a constituent of a remote control and simultaneously tensioning the saw wire within a wire store manually (it is noted that Claim 24 is claimed in the alternative and comprises either the actuator being arranged on the drive and storage unit of the wire saw or being a constituent of a remote control).
Parsells discloses a wire saw (see abstract) in the same field of endeavor as the wire saw of the present invention and discloses that such a system includes a remote control (“remote control” par. 0030), and the actuator for tautening the saw wire being a constituent of the remote control (par 0030), in order to reduce exposure to workers of hazardous conditions see abstract.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Clark by including a remote control, and the actuator for tautening the saw wire being a constituent of the remote control, in order to reduce exposure to workers of hazardous conditions as taught by Parsells.
Claims 18-20, are rejected under 35 U.S.C. 103 as being unpatentable over Clark in view of Parsells, as applied to Claim 17 above, and further in view of USPGPUB 20210039178, Ramfjord.
Regarding Claims 18-20, modified Clark discloses all of the limitations of claim 17 as discussed above:
Modified Clark lacks the device further comprising a communication link between the wire saw and the remote control (claim 18), wherein the communication link is wireless (Claim 19), in Pierce, wherein the remote control is carryable by a user of the system (Claim 20).
Ramfjord discloses a remote controlled saw wire assembly (abstract and also par. 0041) in the same field of endeavor as the wire saw of the present invention and of Modified Pierce, and discloses that the device includes, a communication link (31 and 30b) between the wire saw and the remote control (see par. 0041) (claim 18), wherein the communication link is wireless (see par 017) (Claim 19), in Pierce, wherein the remote control is carryable by a user of the system (par 0009) (Claim 20), in order to reduce injury risk to operators by allowing the control to be performed at a distant location from the cutting (par 009).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Clark by having the device further comprising a communication link between the wire saw and the remote control (claim 18), wherein the communication link is wireless (Claim 19), in Pierce, wherein the remote control is carryable by a user of the system (Claim 20) in order to reduce injury risk to operators by allowing the control to be performed at a distant location from a cutting.
Claims 13-14, 17, and 25-27 are rejected under 35 U.S.C. 103 (in the alternative) as being unpatentable over USPGPUB 20200061725, Lilly in view of USPGPUB 20100006082 to Glinski.
Regarding Claims 13-14, Lilly discloses:
A wire saw device (cutting apparatus 200, abstract) comprising:
a saw wire 220 and
a wire saw (combination of frame 260 262 and rollers 232, 230, 236, and 234) including:
a wire drive (motor and gearing and control disclosed in par 0054);
a wire store for the saw wire (combination of rollers 232, 230, 236 and 234), the wire drive and the wire store defining a drive and storage unit (since the parts rollers 232, 230, 236, and 234 and the motor and gearing act together to drive and also store the wire, par 0054); and
a first side (at frame part 210) with an interior facing the wire store (see annotated fig. 2 below) and an exterior facing away from the wire store (see annotated fig. 2 below);
the saw wire being an endless saw wire (since it forms a closed loop, see fig. 2) guided from an exterior of the wire saw (see annotated fig. 2 below) to an interior of the wire saw through the first side (see annotated fig. 2 below), and guided to exit the interior of the wire saw through the first side, (see annotated fig. 2 below) the saw wire thus extending away from the wire saw to define a cutting loop section (see annotated fig. 2 below).
Lilly lacks: an actuator for tautening the saw wire arranged on the drive and storage unit (Claim 13) and the actuator is provided to set a tension in the saw wire (Claim 14), (Even though Lilly discloses a remote control for tensioning the wire and the part 236 is said to move the saw wire relative to the other rollers, which would by inference tighten the saw wire; the reference is still not clear as to the movement of the part 236 actually imparting the tensioning of the wire via the remote control).
Glinski discloses a wire saw (see abstract) in the same field of endeavor as the wire saw of the present invention and discloses that such a system includes an actuator (16/22, par 0049) for tautening the saw wire (12) the actuator arranged on a drive and storage unit (housing 10 and rollers 18 and 20), (Claim 13) and the actuator (16/22) is provided to set a tension in the saw wire (par 0049), (Claim 14) in order to tension the wire during use and thus reduce tortional stresses on the wire; par 0049.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lilly by including an actuator for tautening the saw wire arranged on the drive and storage unit (Claim 13) and the actuator is provided to set a tension in the saw wire (Claim 14), in order to tension the wire during use and thus reduce tortional stresses on the wire as taught by Glinski.
Regarding Claim 17, in Lilly the system includes a remote control (par 0106) for tautening the saw wire, par 0106.
Also, as modified to include the actuator in view of Glinsky, an artisan skilled in the art would also include the actuator for tautening the saw wire being a constituent of the remote control, since the remote control in Lilly is for tautening the wire (par 0106), and since as modified above the actuator tightens the wire (Claim 17).
Regarding Claim 25, in Lilly: the wire store has a plurality of side by side rollers (e.g. 232 and 230).
Regarding Claim 26, in Lilly: the wire store has two sets of side by side rollers (e.g. set on3, 232 and 230, and set two, 236/234).
Regarding Claim 27, in Lilly: the saw wire is guided from the exterior of the wire saw to the interior of the wire saw by an inlet guide roller (238), and guided to exit the interior of the wire saw via an outlet guide roller (230) (annotated fig 2 below).
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Response to Arguments
Applicant’s arguments, see remarks, filed 3/9/26, with respect to the Specification objections and 35 USC 112b Claim rejection(s) have been fully considered and are persuasive. With regard to the Specification objections, Applicant has amended the specification in accordance with examiner’s recommendations rendering the objections moot. Also, Applicant’s amendments to the claims to remove the redundancy of the side having a side have rendered the indefiniteness rejection moot.
Applicant’s arguments, see Remarks, filed 3/9/26, with respect to the rejections of claims 1-5 under 35 USC 102/103 (as the claims have now been amended) have been fully considered and are partially persuasive and partially not persuasive.
Applicant first argues that Clark lacks the saw wire extending away from the wire saw to define a cutting loop. To support this, Applicant argues the cutting loop identified by the Examiner in the previous action did not constitute a loop. Examiner disagrees that Clark’s wire does not define a loop. The loop is more clearly delineated in the Claim 1 35 USC 102 rejection in the present Action.
Applicant next argues that the Clark does not disclose the saw wire guided from an exterior of the wire saw to an interior of the wire saw, through the first side and guided to exit the interior of the wire saw through the first side. To support this, Applicant notes that the wire of Clark does not go through a first side. Examiner has clarified the first side in Clark, and has shown, above, how the saw wire goes through the first side. A side is defined by Oxford Languages Dictionary as “a part or region near the edge and away from the middle of something”. As defined in the present action, the space defined by a side wall of the frame 13, e.g. near part 25 and the rollers on the side wall can be considered a “side” through which the wire passes. Thus, the rejection in view of Clarke, is maintained.
Applicant next argues that the combination of Clark and Lilly would fail because “One of ordinary skill in the art would not have thought to combine the devices of Clarke and Lilly because Clarke and Lilly teach towards completely different applications and have incompatible designs. Clarke teaches towards an underwater wire saw for cutting tubes from oil wells, whereas Lilly teaches towards a vehicle mounted saw for cutting wind turbine blades. One of ordinary skill in the art would not have looked towards a saw mounted on a land vehicle to modify the underwater saw of Clarke”. This argument has been found persuasive. The remote control of Lilly, used in an above the ground assembly, might not actually work in an underground underwater assembly. Thus, a new rejection is made over Clark in view of Parsells. And over Lilly in view of Glinsky with regard to the remote control limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPNs/USPGPUBs 4735188 and DE 29821386 U1 disclose wire saw device which include the wire going into and out of a wall of a wire saw device during a driving of the saw, and thus are similar to the saw wire assembly of the invention. Thus, each of these references disclose elements relevant to the present invention/application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FERNANDO A AYALA whose telephone number is (571)270-5336. The examiner can normally be reached Monday-Friday 9am-5pm Eastern standard.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached on 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FERNANDO A AYALA/Examiner, Art Unit 3724
/BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
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