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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/29/2026 has been entered.
Election/Restrictions
Newly amended or submitted 25-26, 31 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claims 25, 26, 31 have been amended to depend on claim 36 that is directly to an embodiment (Figures 16-19, see “at least one hook for hooking to a hook contour of the guide rail” and “a hook element”. Examiner notes that claim 25 switches to depend claim 36, the mating form-fitting contour is not the one of the handle, thus, it is directed to the embodiment of Figures 16-19), these claims recites the embodiment (as seen in Figures 16-19 having a hook contour 130/150 for a guide rail 21) that is NOT insertable in the handle of the carrying device.
Similarly Claims 42-45 having features of the embodiment (as seen in Figures 16-19 having a hook contour 130/150) as discussed above.
The previously examined claims, for an example claim 1 recites a first embodiment (the guide rail 22) such that the carrying handle of the carrying device is insertable through the through-opening of the guide rail (22, as seen in Figures 1-6), have two-way distinction and a search burden compared to claims 25-26, 31, 42-45.
For an example: The system of claim 1 does require the carrying handle of the carrying device insertable through the through-opening of the guide rail without hook contours of claims 25-26, 31, 42-45, and conversely, the system of claims 25-26, 31, 42-45 does require to have hook contours and not require to have the carrying handle of the carrying device insertable through the through-opening of the guide rail of claim 1.
Since applicant has received an action on the merits for the originally presented and elected invention, claims 25-26, 31, 42-45 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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.
Claims 40-41 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.
Claims 40-41 “guide rail…a single piece” is new matter since the original specification does not support it. Looking at figures 1-3, there are many pieces put together form a rail, for an example, Figure 3 shows 2 rails 21-22 together. Figure 1 shows a rail 21 and 2 clamping devices 63-64, thus, the rail is NOT a single piece.
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 40-41 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.
Claims 40-41, line 1 “guide rail” is missing an article that is unclear what guide rail is referencing. Also, the language “a single piece” that is unclear since the original specification does not support it, therefore, it is unclear what scope to be give the language “a single piece”.
Claim Rejections - 35 USC § 103
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 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 1-3, 8-10, 14, 16-19, 22-23, 25-26, 31, 36-41 are rejected under 35 U.S.C. 103 as being unpatentable over Flanders (US 3983776) in view of Peter (EP 2020188A1 and Translation), Drew (US 2016/0100662) and Johnston (US 4895256).
Regarding claim 1, Flanders shows a system (Figures 1) comprising at least one guide rail (10), which is provided for guiding a hand-held power tool (Abstract “an existing power tool”. Please note that as it is written, the power tool is not positively claimed), has an elongate shape and extends along a longitudinal axis (Figure 1), wherein the guide rail has, on mutually opposite sides (top and bottom surfaces of the guide 10, Figure 1), a contact face for the guide rail to rest on a workpiece (the bottom surface) and a guide face in front of which a longitudinal guide face extending along the respective longitudinal axis for guiding the hand-held power tool protrudes parallel to the longitudinal axis (see Figures 1 and 2), and
wherein the guide rail has a through-opening (a rectangle opening, Figure 1), said through-opening extending between the two mutually opposite sides of the guide rail (Figure 1).
It is unclear how an operator protects the circular saw and carries the circular saw and the guide rail to a worksite.
Peter shows a carrying device or a tool box (Figures 1-2 and Translation, description “circular saws”) for a circular saw, a pivotal handle (12, Figures 1-2).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have had a carrying device, as taught by Peter to Flanders’s system, in order to allow the portable saw to be protected and easily carried.
With regards to “the guide rail, for a connection to the carrying device, has form-fitting contours which can be brought into engagement with mating form-fitting contours of the carrying device, so that the guide rail can be carried by an operator using the carrying handle… and wherein the carrying handle of the carrying device is insertable through the through-opening of the guide rail whereby the carrying handle protrudes through the through-opening for grasping by the operator ”, it is well-known in art and most people have been done, for examples,
Drew shows two luggage securely stacking together via a handle (305, Figures 13-14 and see parts 403 and 307/309 for matting), instead of carrying two individual luggages.
Johnston shows a carrying device (14, Figures 1-3) including a handle (15), trays 16, 18 respectively having openings 76, 78 for inserting into the handle for carrying (a user can carry all strays as one unit, instead of carrying three individual trays).
Therefore, based on the teachings of Drew and Johnson, it is well-known to have the guide rail inserted to the handle of the luggage or tool box (a carrying device) for conveniently carrying two tools in one carrying device.
Doing so, the modified system of Flanders shows a carrying body has a support face for the planar support of the guide rail (see the planar surface near Peter’s handle 12), the support face surrounding the carrying handle on opposite sides of the carrying handle along the longitudinal axis and on opposite sides of the carrying handle transversely to the longitudinal axis so that the guide rail rests substantially centrally on the carrying device (see Johnston’s Figures’ 1-3 how the trays are rest on each other).
Regarding claim 8, the modified system of Flanders shows that the carrying handle protrudes in front of the guide face or the contact face when the carrying device is connected to the guide rail (see the modification above, especially see Johnston’s Figures 1-3).
Regarding claim 9, the modified system of Flanders shows that the carrying handle is mounted at the carrying body for pivoting between an operative position, in which the carrying handle protrudes in front of the carrying body, and an inoperative position, in which the carrying handle is moved closer towards the carrying body than in the operative position (see Peter’s Figures 1-2).
Regarding claim 10, the modified system of Flanders shows that the guide rail holds the carrying handle in the operative position when the guide rail and the carrying device are connected to each other (this is inherent limitation since the trays or rail are hooked on the handle as seen in the modification above).
Regarding claim 14, the modified system of Flanders shows that the carrying handle protrudes in front of the contact face or the guide face approximately at right angles when the guide rail is connected to the carrying device (see the modification above since the guide rail inserted to the handle of the carrier or tool box).
Regarding claim 16, the modified system of Flanders shows that there is a reach-through opening is formed between a handle portion of the carrying handle and the guide rail when the carrying handle is inserted through the through-opening and/or the guide rail is connected to the carrying device, the reach-through opening being configured for grasping the handle portion with a hand of an operator (see the teachings of Drew and Johnson above).
Regarding claim 17, the modified system of Flanders shows that the carrying handle is insertable through the through-opening along an insertion axis extending at an angle to the longitudinal axis of the guide rail (see Drew and Johnson’s references).
Regarding claim 18, the modified system of Flanders shows that the through-opening has an elongate shape and a length of the through-opening between its longitudinal ends is dimensioned such that the carrying handle is pivotable about a pivot axis extending at an angle to the longitudinal axis in order to bring the carrying handle into or out of engagement with the through-opening (see the discussion above and see guide rail opening relative to a pivot axis extending at an angle to the longitudinal axis and see Johnson’s reference, the opening is just enough for the handle 15).
Regarding claim 19, the modified system of Flanders shows that the carrying device and the guide rail can be connected to each other by means of the form-fitting contours and the mating form-fitting contours in such a way that the carrying handle cannot be pivoted and/or displaced with respect to the guide face when the carrying device and the guide rail are connected to each other (see the discussion of Drew and Johnston above; the contours of parts are fitly inserted to the contours of the handle).
Regarding claims 22-23, the modified system of Flanders shows that the carrying body comprises a transport container (see the tool box above) with a location space for objects, the carrying handle being provided and designed for carrying the transport container (see discussion of the tool box of Peter) and the carrying handle is located on a top side, of the transport container (see Peter’s art).
Regarding claims 2-3, 36-37, 38, the modified system of Flanders shows “a carrying device and a hand-held power tool (a circular saw of Flanders) contained within the carrying device (a tool box having a circular saw of Peter” as discussed in the modification in claim 1 above; and the guide rail supported on the carrying device (see claim 1 above), the guide rail having an elongate shape and extending along a longitudinal axis for guiding the hand-held power tool (see the rail of Flanders),
“wherein the guide rail has, on mutually opposite sides, a contact face for the guide rail to rest on a workpiece and a guide face in front of which a longitudinal guide face extending along the respective longitudinal axis for guiding the hand-held power tool protrudes parallel to the longitudinal axis, and
wherein the carrying device has a carrying body and a carrying handle located on the carrying body to be grasped by an operator, and
wherein the guide rail, for a connection to the carrying device, has form-fitting contours which can be brought into engagement with mating form-fitting contours of the carrying device (see all sides of the tray opening 76 of Johnston that contact the six sides of the handle 15, Figure 1 of Johnston), and wherein the contact face of the guide rail rests on the carrying body when the guide rail is connected to the carrying device in a transport position (see the modification above and see the all trays inserted into the handle 15 of Johnston) and is removed from the carrying body when used with the hand-held power tool (this is inherent performance of the user), and
wherein the carrying body has a support face for the planar support of the guide rail, the support face surrounding the carrying handle on opposite sides of the carrying handle along the longitudinal axis and on opposite sides of the carrying handle transversely to the longitudinal axis so that the guide rail rests substantially centrally on the carrying device (see Peter’s Figures 1-2, there is a planar surface around the handle and Johnston’s trays 16-18 have central openings, such that the trays or rail can be rests substantially centrally on the carrying device as seen in the modification).
Regarding claims 39, the modified system of Flanders shows that the support face is located on a top side of the carrying body (see Peter’s tool box. Please note that the tool box can be in many positions that include the claim position).
Regarding claims 40-41, as best understood, the modified system of Flanders shows that the longitudinal sides of the guide rail extend parallel to the longitudinal axis and have a constant distance from each other in a direction transverse to the longitudinal axis, and wherein a through-opening is located substantially in the center of the contact face and/or the guide face of the guide rail (see both parallel frames 12, 18 of the rail 10 are fitly mounted on members 14-15 having a constant distance therebetween, Figure 1 of Flanders, after adjusting or during use).
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. See the new art above.
However, it should be easily to amend the claims to distinguish over the art above, perhaps, a latching contour 125 on the handle of the tool box for latching the guide rail in place to prevent the pivot handle and the guide rail movements relative to each other. Applicant should feel free to call the Examiner any time to float ideas on how to amend the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 2/27/2026