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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim1, 2, 4 and 5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 newly requires “the cutting end point is maintained at a constant position regardless of cutting conditions including a width and across-sectional shape of the workpiece.” Which is inaccurate with respect to the disclosure—applicant has not disclosed and defined a device which maintains the cutting end point at a specific “constant position” “regardless of…cross sectional shape of the workpiece.”
Applicant means that the cut will ‘always’ end at “Pc” shown below:
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However, this is not true “regardless of…cross sectional shape of the workpiece.”
For example, the below cross section will result in the marked cutting end point, which is not as claimed (or disclosed):
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Having demonstrated that applicant’s own disclosure fails to meet the limitation discussed supra, the claim clearly lacks appropriate written description—those of ordinary skill would not understand applicant to have demonstrated possession of that which is claimed.
This is also a question of indefiniteness, treated below.
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, 2, 4, and 5 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.
As noted above, claim 1 requires that the device maintains the cutting end point at a specific “constant position” “regardless of…cross sectional shape of the workpiece.” Which is indefinite in this context, because the device as shown and disclosed does not accomplish the scope of that limitation, and therefore the limitation is not understood according to its plain meaning—“regardless” means regardless. And as shown above, varying the cross section of the work used on applicant’s machine does not result always or regardless in the same constant end point. The claim therefore does not make sense as submitted and is rejected as indefinite.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Diener (US 7,874,236) in view of Skinner (US 5,105,862) and Stumpf (US 5,755,148) .
Diener discloses most of the features of applicant’s claims—including
A horizontal band saw machine (figure 1), comprising: a fixing vise jaw (13, 15) configured to fix a workpiece by holding the workpiece between the fixing vise jaw (13) and a movable vise jaw (15); a guide post (28, 27) extending linearly in a vertical direction (See figure 1); and a cutting head (5, 33, 34, etc. figure 1) configured to cut the workpiece while descending along the guide post. See Col 5 line 10+: “After the miter angle is adjusted, the saw frame 5 is guided vertically downward along the two arms 27 and 28 that act as a parallel guide, with the aid of a not shown drive motor. During this downward movement, the bandsaw blade 34, which is positioned with its working edge between the two bandsaw blade guides 36 and 37, cuts into and through the workpiece 16.”
Diener discloses the cutting head includes a housing (saw frame 5, inter alia, figure 1) to which a driving wheel (right roller 33: “The right roller 33 can be selectively set in rotation with the aid of a drive motor 38 that is flanged to the rear side of the saw frame 5.”) and a driven wheel (Left 33) are rotatably attached (See figure 1).
Diener further discloses an endless band saw blade tightly stretched between the driving wheel and the driven wheel, (See figure 1).
Diener further discloses when the workpiece is cut with the band saw blade between the driving wheel and the driven wheel, the housing moves linearly up and down along the guide post while maintaining a positional relationship between the driving wheel and the driven wheel, (as discussed above Col 5 line 10+ “…during this downward movement…cuts into and through the workpiece…”)
Diener does not show a center of the driving wheel is located above a center of the driven wheel, because Diener uses the opposite--- the driving wheel is slightly lower than the driven wheel as shown in figure 1. The natural outflow of that relative position will be that in Diener Cutting of the workpiece by the band saw blade is not completed at a cutting end point that is an intersection between a fixing vise reference, which is a vertical plane on which the fixing vise jaw fixes the workpiece, and a workpiece support reference, which is a horizontal plane defining a lower end of the workpiece, and the cutting end point is maintained at a constant position regardless of cutting conditions including a width and a cross-sectional shape of the workpiece.
Applicant, by this claim, has asserted that having the termination point of cutting be at the intersection of the fixed vise and the work support is inventive.
In the case of Diener—changing the height of the motor side wheel to be higher than the driven side (left) will naturally result in the same claimed effects that applicant has set forth as the “regardless…” condition, noted above to be indefinite, lacking written description etc.
How do those of Ordinary Skill use Fences
In cutting stations with clamping or fixing work to be cut—the termination point is often selected or naturally falls to be at the lowest furthest point from the cutting initiation—because cutters travelling through work must end somewhere—and cuts which are designed to interact with a fence will often travel from the more distant locations from the fence towards the fence. This is natural, since the fence is what is causing alignment of the work with the intended cut line. If a cut were to start at a fence, then the work would become more unstable earlier in the cut.
For example—in a radially moving saw saw such as Stumpf (US 5,755,148) the cutting line will move from the right to the left, and terminate at the joint between the fence and the work support (See figure 4).
As further explanation, IN a chop saw/ miter saw context, Skinner (US 5,105,862) discloses a saw blade that is meant to interact with fence 18 (a fixed fence). During the cutting stroke, in the same manner as applicant’s fence and saw, when the work is rectangular or has a termination point at the joint between the fence and the workpiece support surface, Skinner shows that the end of the cut will be at the lower intersection point between the fence and support—because the saw comes ‘from’ the outside and pushes and cuts in and toward the fence. (See figure 1).
The same action is shown in the fence and blade interactions of Kohler (US 3,339,597) figure 1 and 2.
Is angling a Band Saw inventive?
No, of course not. Those of ordinary skill understand that the angle of a band saw as it interacts with work is a routine decision, which can be made to be fixed or variable. Clark (US 7,645,093) demonstrates this in the figures thereof. Clark shows a band saw for undersea cables. In figures 4 and 5 the band saw is held fully horizontal, with neither the motor side nor the follower side elevated above the other. The band in figures 4-5 is moved vertically, the same manner as the present application, but without an incident angle relative to the work (as it is round) and / or the fence 200 which guides and positions the work to be cut. However, Clark further shows other embodiments, and describes other features of the saw—such as its ability to be articulated to different angular attitudes with respect to the work or fence. See for example Figure 13 which shows both motor and non-motor sides of the saw being chosen to be elevated relative to the other in different set ups; and the indicators 150 and 152 shows the relative movement during a cut (vertical; “The column 43 contains a hydraulic cylinder 100 or lift cylinder and rod 110 that moves elevator 47 up and down (schematically indicated by arrows 150 and 152 in FIGS. 4-8). An elongated vertical slot 44 is receptive of elevator 47. Column 43 provides upper end portion 45 and lower end portion 46. As schematically indicated by arrow 150 (upwards motion) and arrow 152 (downwards motion), the elevator 47 can be raised and lowered using the hydraulic cylinder or other lift cylinder 100 (such as is commonly used with automobile lifts).”) Clark reiterates the obviousness of choosing to elevate either side in a band saw in figures 21-23 with respect to a wire cutter embodiment.
In light of the above evidence, it would have been obvious to one of ordinary skill in the art to make the motor side of the Diener saw higher than the other side—since deciding to have saw paths end at the fixed fence side of a work is a known way to arrange saws (according to Skinner (US 5,105,862) and Stumpf (US 5,755,148) and Kohler (US 3,339,597), since doing so permits the fence to support the work as long as possible, and because the evidence of record shows that the angle of a band saw is known to be oriented horizontally or to have either side higher, as shown in Clark.
Because the reason for pursuing the opposite anlge (opposite side being higher) is shown to be known in the art, (Skinner (US 5,105,862) and Stumpf (US 5,755,148) and Kohler (US 3,339,597)) and the technological means of implementing such an expedient (Clark) are known, it would have been obvious to pursue and achieve band saws with the claimed features. The change to Diener is minor—a mere reversal of one angle, and the change can plainly be implemented with no undue experimentation or unexpected results, and will largely function the same as it does in Diener.
Regarding claim 2, Diener further discloses a machine base (26, inter alia) configured to be able to turn in a horizontal direction ( axis 25 shown in figure 1) and to which the guide post is provided(28, 27, figure 1), wherein a turning center of the cutting head exists at an intersection between the fixing vise reference and a travel line of the band saw blade. See Diener Column 4 line 21+ :
“The spindle 22 defines a vertical swivel axis 25 that lies in a plane that also includes the workpiece contact surface of the stationary clamping jaw 13.” And further see figure 4.
Regarding claim 4, as noted above, the Diener wheels are opposite to the claimed arrangement where the lower end of the driving wheel is located above a lower end of the driven wheel—but as modified above, the art as a whole demonstrates the obnviousness of having the wheels be even in height, OR having the motor wheel lower OR having the motor wheel higher. In light of that, claim 4 here is clearly rendered obvious.
Regarding claim 5, Diener further discloses the driving wheel (33 right, proximal to 28 motor figure 3) is located closer to a side of the fixing vice jaw (as shown in figure 3—closer to 13) with respect to the workpiece; and the driven wheel is located closer to a side of the movable vice jaw (14 figure 1, closer to left wheel 33 in figure 1) with respect to the workpiece (See figure 1).
Claim(s) 1-2, and 4-5 is rejected under 35 U.S.C. 103 as being unpatentable over Sakai Norihisa (JP-2009-119576) (Cited by applicant) in view of JP 10-156624 (Takahashi) as set forth in the action of 7/30/2025 and incorporated here by reference.
The current claims are newly indefinite—but to the extent they are understood the previous combination still reads on and renders obvious the claimed subject matter here.
Response to Arguments
Applicant's arguments filed 9/24/2025 have been fully considered but they are not persuasive.
Applicant alleges (Rem of 9/24/25 p. 4) that the amendment obviates the 112(b) rejection of record. This is persuasive, but the amendments introduce new indefiniteness, which results in a new 112(b) rejection being applied, above.
Applicant alleges (Rem. P. 5) that the change of having the driven wheel be higher than the follower wheel is “critical” to achieving the effect of having the cut progress from left to right, which provides unspecified “unexpected advantages.” This is not persuasive of the allowability of the claims—and as noted above, with respect to different art, now the most pertinent for discussion, the concepts and all the technological details of applicant’s claims are known in the art, showing the obviousness of all pending claims.
Applicant alleges (Rem. P. 6) that Takahashi and Norihisa do not render obvious the pending claims because the mere reversal of parts is not cosmetic. That is not an objection which supports a conclusion of non-obviousness. It is not relevant to the question of whether the reversal would have been prima facie obvious. No evidence has been presented by applicant that the adjustment would have been outside the level of technical ability, or that there was insufficient reasons to adopt the change in position, or that the change would have required undue experimentation or caused unexpected results. The rejection of the claims over Takahashi and Norihisa is maintained and clearly applies for the same reasons as in the rejection of 7/30/2025, despite the change in wording of the present claims.
Alternatively, and additionally, the newly cited art shows with perhaps more detail why applicant is incorrect in asserting that the claims are patentable, given the overall state of the sawing arts.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M MICHALSKI whose telephone number is (571)272-6752. The examiner can normally be reached Typically M-F 6a-3:30p East Coast Time.
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, Boyer Ashley can be reached at (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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SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/Primary Examiner, Art Unit 3724