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 .
Response to Amendment
Applicant’s 3-5-2026 Amendment was received. Claims 1-10, 16-17, and 21-31 were cancelled. Claims 11, 18-19 were amended. Clams 11-15 and 18-20 are pending and examined in this action.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “a bottom surface of the battery pack defines a clearance with the workpiece contact surface of 0.25 inches or less,” of claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 19 is 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.
In re Claim 19, “wherein the bottom surface of the battery pack is approximately co-planar with the top surface of the base when the battery pack is received by the battery receptacle,” in view of Claim 1, “a bottom surface of the battery pack defines a clearance with the workpiece contact surface of 0.25 inches or less,” is indefinite. It is unclear “how planar” the surfaces of the base and the bottom of the battery pack need to be. This is because something is either “planer” or not. In other words, something is in the same plane or it is not in the same plane. Applicant’s specification does not provide a standard as to what is or is not “approximately co-planar.” Claim 1 allows for an offset of the planes of up to 0.25 and also requires a “clearance” which, as best understood, requires a gap between the surfaces. As such, the range of Claim 1 does not include the surfaces as being co-planer. It is unclear how Claim 19 changes the claim. The claims were examined as best understood.
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.
Claims 11 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0107536 to Buck in view of US 2007/0266841 to Robinson and US 5,184,597 to Chiuminatta.
In re Claim 11, Buck teaches a circular saw comprising:
a housing(see Figs. 1-3, housing of the saw)
a battery receptacle defined by the housing for receiving a battery pack (see Fig 3, #54/54, et al.);
a motor disposed within the housing (see Fig. 1B, “M”), the motor defining a motor outer diameter (see Fig. 1B, #139 and Para. 0039);
a base (see Figs. 1-3, #122)upon which the housing is supported, the base defining a workpiece contact surface along which a workpiece is slidable in a sliding direction (see Fig. 1-3, the bottom of #122 contacts the workpiece), a top surface opposite the workpiece contact surface (The top surface of #122 is opposite the surface that contacts the workpiece), a front end perpendicular to the sliding direction, and an opposite rear end perpendicular to the sliding direction (see Fig 1A, #122 has a front and rear end), the base defining a length between the front end and the rear end (see Fig. 1A, #122 showing a distance between the front and rear end of #122);
a spindle operable to be rotated by the motor;
a saw blade supported by the spindle for co-rotation therewith about a rotational axis (see Fig. 3, #118),
a pivot joint (see Fig. 1A, “X” and Para. 0037) proximate the rear end of the base, the pivot joint pivotably coupling the housing to the base about a pivot axis that is parallel with the rotational axis (see Fig. 1A, “X” which is parallel to the rotation axis of the saw blade #118 in Figs. 1-4), permitting the saw blade to plunge into the workpiece in response to the housing being pivoted about the pivot axis toward the base (see Fig. 3, showing the saw blade #118 able to be pivoted about the pivot axis toward the base),
wherein when the battery pack is received in the battery receptacle (see Fig. 2, showing battery #116 inserted in to battery receptacle), a bottom surface of the battery pack defines a clearance with the workpiece contact surface(see Fig. 1a showing the bottom of the battery pack #16 defining a clearance between the top surface of base #121).
Buck fails to teach:
the saw blade including a hub portion located at a center of the saw blade and a blade portion extending therefrom, the hub portion being offset from the blade portion to define a pocket between the blade portion and the hub portion;
wherein an outer diameter of the saw blade is 6 inches or less, and
a clearance with the workpiece contact surface of 0.25 inches or less.
Robinson teaches a saw blade (see Robinson, Figs. 1-2) including a hub portion located at a center of the saw blade (see Robinson, Fig. 2, central mounting portion #50/12) and a blade portion extending therefrom (see Robinson Fig. 1-2, surfaces of the blade #40/30/20), the hub portion being offset from the blade portion to define a pocket between the blade portion and the hub portion (see Fig. 2, showing a pocket “above” #50).
In the same field of invention, circular saw blades, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to use the saw blade of Robinson with the saw of Buck. Doings so allows the user to cut right or left arcs in a planar material as the outer portion of the blade rotates through the material and flexes as the blade is directed in a leftward or rightward arc (see Robinson, Para. 0013).
Additionally, Chiuminatta teaches that it is known in the art of circular saw blade to make a saw blade between 3 and 6 inches (see Chiuminatta, Col. 4, ll. 15-27, teaching that it is advantageous to have a blade between 3-6 inches). In the same field of invention, circular saw blades used in circular saws, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to use a saw blade of less than 6 inches. Doing so allows the user to adjust the size of the motor of the saw (see Chiuminatta, Col. 4, ll. 15-28, teaching if larger blades are used, then larger motors and other equipment are required). In other words, one of ordinary skill in the art adjusts the size of the saw/size of the motor based on use. If small blades are used, then smaller motors can be used, thus making the device lighter/smaller and easy to handle. If a large cut is required than a larger saw/larger motor is used but this trade off is that the saw is larger and heavier, but can cut a deeper/larger cut. One of ordinary skill in the art is aware of these tradeoffs.
Buck teaches a clearance between the bottom of the battery and the workpiece contact surface, but is silent as to the measurement of this clearance. As such, Buck is silent as to a clearance with the workpiece contact surface of 0.25 inches or less.
The Examiner notes that Applicant’s disclosure states that the clearance can be 0.25 inches or less or greater than 0.25 inches (see Applicant’s Para. 0027). As such, Applicant does not provide criticality of a clearance of 0.25 inches or less.
One of ordinary skill in the art understands that the space in which the battery is located needs to be larger than the battery in order to prevent the bottom of the battery from scraping the plate which can cause damage to bottom of the battery. Additionally, providing too large of a gap would increase the battery which would increase the height of the center of gravity (see Buck, Para. 0009/Fig. 1B, “CB”). As such, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to provide a gap that is large enough to prevent scraping to the batter without significantly changing the center of gravity of the tool, including providing a gap that is 1/8 of an inch or ¼ of an inch.
In re Claim 14, modified Buck, in re Claim 11, does not teach wherein a ratio between the saw blade outer diameter and the motor outer diameter is between 1.5 and 2. However, Chiuminatta teaches that the size of the motor depends on the size of the blade (see Chiuminatta, Col. 4, ll. 15-27, stating: If larger blades are used, then larger motors and other equipment are required). Chiuminatta teaches that larger blades require lager motors and smaller blades require smaller motors. As such, the blade size to motor size is a result effective variable.
It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to make the ratio of 1.5-2 between the diameter of the blade and the motor diameter, since it has been held that discovering an optimum result of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Doing so would provide a saw with the appropriate size motor (see Chiuminatta, Col. 4, ll. 15-27).
In re Claim 15, modified Buck, in re Claim 11, does not teach wherein the saw blade outer diameter is 4.5 inches, and wherein the motor outer diameter is 2.5 inches.
Chiuminatta teaches that it is known in the art of circular saw blade to make a saw blade between 3 and 6 inches (see Chiuminatta, Col. 4, ll. 15-27, teaching that it is advantageous to have a blade between 3-6 inches). Additionally, Chiuminatta teaches that the size of the motor depends on the size of the blade (see Chiuminatta, Col. 4, ll. 15-27, stating: If larger blades are used, then larger motors and other equipment are required). Chiuminatta teaches that larger blades require lager motors and smaller blades require smaller motors. As such, the blade size to motor size is a result effective variable.
It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to make the blade 4.5 inches and the diameter of the motor 2.5 inches, since it has been held that discovering an optimum result of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Doing so would provide a saw with the appropriate size motor (see Chiuminatta, Col. 4, ll. 15-27).
In re Claim 19, modified Buck, in re Claim 11, teaches wherein the battery pack includes a bottom that is approximately co-planar with the top surface of the base when the battery pack is received by the battery receptacle (as best understood, Buck in Fig. 1 teaches the bottom surface of the battery that is approximately co-planar).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0107536 to Buck in view of US 2007/0266841 to Robinson and US 5,184,597 to Chiuminatta, and further in view of Amazon.com, “DEWALT OEM N499341 Circular Saw Shoe Assembly” (herein after “DeWalt replacement shoe”)
In re Claim 12, modified Buck, in re Claim 11, does not teach wherein a ratio of the length of the base to the saw blade outer diameter is between 1.2 and 1.75.
However, “DeWalt replacement shoe” teaches a length of 12.55 inches for a circular saw with a 7.25 inch blade. The ratio of the length of the blade (12.55 inches) to the saw blade diameter (7.25 inches) is 1.73, which falls within the rage of 1.2 and 1.75.
It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to proportionally reduce the size of the shoe depending on the size of the blade. Doing so is the use of known size proportions for a circular saw to provide a balance between the stability and easy of sliding (see MPEP 2143, I, B). A large base is more stable but causes more friction on the workpiece, and slides harder, whereas a smaller base is less stable but easier to slide on the workpieces. One of ordinary skill in the art understands the balance between these two factors. Utilizing known proportions which balance these two factors would have been within the level of ordinary skill in the art, at the earliest effective filing date.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0107536 to Buck in view of US 2007/0266841 to Robinson and US 5,184,597 to Chiuminatta, in view of Amazon.com, “DEWALT OEM N499341 Circular Saw Shoe Assembly” (herein after “DeWalt replacement shoe”), and further in view of US 2,693,832 to Richards.
In re Claim 13, modified Buck, in re Claim 12, teaches wherein the saw blade outer diameter is 4.5 inches (see above, Chiuminatta teaches using a saw blade with a diameter of 3-6 inches. However, modified Buck, in re Claim 12, does not teach wherein the length of the base is 6.5 inches.
Richards teaches that it is known in the art of circular saws to provide a shortened base (see Figs. 1-3, #2; see also Col. 1, ll. 35-38; Col. 1, ll. 70 – Col. 2, ll. 11; and Col. 2, ll. 60-75, teaching the desirability of a compact saw). As such, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to make the footprint of the saw small, including a length of 6.5 inches for the base with a 4.5 inch saw blade since it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also In re Yount (36 C.C.P.A. (Patents) 775, 171 F.2d 317, 80 USPQ 141.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0107536 to Buck in view of US 2007/0266841 to Robinson and US 5,184,597 to Chiuminatta and further in view of US 4,353,165 to Albery.
In re Claim 20, modified Buck, in re Claim 11, does not teach wherein a spring biases the housing away from the base. However, Albery teaches wherein a spring (see Albery, Fig. 1, spring #21) biases the housing away from the base (see Albery, Fig. 21).
In the same field of invention, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add a spring that biases the housing asway from the base, as taught by Abery. Doing so provides when the operator lifts the saw from the workpiece the body of the saw separates automatically from base plate 15 with the help of compression spring 21 thus ensuring that blade 2 is fully and safely retracted into its housing (see Col. 5, ll. 31-38).
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/JONATHAN G RILEY/Primary Examiner, Art Unit 3724
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