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 .
Response to Amendment
On 10-27-23, a set of replacement drawings was received. However, this submission is not proper with regards to CFR 1.121(d). None of the drawings feature the phrase “Replacement Sheet” as required by CFR 1.121(d) and have not been entered. Drawings in the proper amended format must be re-submitted in a future response.
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:
An outer ring gear fixed to the blade, of claim 3,
An internal pinion gear fixed to the roller, of claim 3,
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.
Specification
The disclosure is objected to because of the following informalities:
The specification incorporates the same issues with the roller, the outer pinion gear, and the compliant mechanism being separate structures as claimed. The specification needs to be amended to disclose the roller includes the outer pinion gear and the compliant mechanism. The specification needs to delete the transmission mechanism and the gear mechanism disclosures as they do not actually exist.
Appropriate correction is required.
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 1-20 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.
With regards to claims 1 and 2, the transmission mechanism disclosure is unclear. As written, the transmission mechanism is in addition to the roller which does not appear to be true as the roller incorporates outer ring gear 82. There does not appear to be a structure that represents a transmission mechanism as a portion of the mechanism is made up by the roller 16. Also, gear 84 and gear 82 are not connected to each other in a way that defines a mechanism. Gears 82 and 84 merely cooperate together to act as a transmission mechanism. Claim 1 needs to discloses that roller includes a first transmission element, the blade includes a second transmission element, and the transmission elements engage to drivingly interconnect the blade and the roller such that the blade rotates faster than the roller. Claim 2’s disclosure of a gear mechanism has the same issue as the transmission mechanism. Claim 3 would need to further define the first transmission element is an outer ring gear and the second transmission element is an internal pinion gear.
With regards to claim 1, the transmission mechanism disclosure is unclear because as written, there is a roller, a blade, and a separate transmission mechanism connecting the blade and roller which is not shown in the Figures. As written, there is a 3-piece set up (roller, blade, transmission mechanism) which is confusing since the roller defines part of what is disclosed as the transmission mechanism. Using Figure 3, there is only a 2-piece set up since the ring gear is a sub-structure of the roller and the pinion gear is fixedly connected to the blade and, therefore, a sub-structure of the blade. As discussed above, the transmission mechanism does not exist as it is partially defined by the roller. The proposed language above overcomes this issue as well.
With regards to claim 1 lines 9-11, the disclosure of the compressive shear force and the tangential shear force is unclear in light of line 6 of claim 1. Line 6 discloses the engagement points are spaced. It is unclear how the points are spaced with the positive disclosure of the compressive shear force and the tangential shear and the blade being pressed into the material. Line 6 needs further definition explaining the points are spaced when at a rest position and lines 9-11 need to explain that in the pressed condition the points are not spaced.
With regards to claim 1, it is unclear what defines the compressive shear force and the tangential shear force. What allows for the shear force to be considered “compressive”? What is the shear force “tangential” in relation too? If the work piece is what is being compressed, is there a compressive force if the work piece does not compress? If the work piece is not flat, if the force still tangential? The forces need to be further defined so it is clear what forces are being claimed.
With regards to claim 3, it is unclear what structure allows for the outer ring gear to be fixed relative to the blade and for the pinion gear to be fixed relative to the roller. The specification does not appear to provide any details on this alternate setup. It is unclear how the functions of claim 7 take place if the outer ring gear is on the blade.
With regards to claim 3, as written, the ring and pinion gears are not disclosed as being engaged with one another. If these gears do not engage, it is unclear how the blade and roller can be interconnected in claim 1.
With regards to claim 4, claims 1 and 3 disclose the ring gear as a separate structure in relation to the roller. It is unclear how the roller can comprise the ring gear when they are originally separate. Claim 1 needs to broadly disclose this relationship (see proposed language above).
With regards to claim 5, what structure allows for the selective positioning to take place. As written, a portion of the roller is not involved which is not supported.
With regards to claim 5, it is unclear if the “driving interengagement” represents the same or different structural arrangement as the “drivingly interconnect” of claim 1. As written, the blade and roller are drivingly interconnected and the gears are driving interengaged which is not supported. The claim 5 limitation needs to further limit the claim 1 limitation.
With regards to claims 6 and 7, it is unclear what structure represents the compliant mechanism. As written, the compliant mechanism is in addition to the roller which is not supported by the Figures. The compliant mechanism appears to be a portion of roller and not in addition to the roller just like the outer ring gear is a part of the roller. Claims 6 and 7 need include that the roller includes the compliant mechanism.
With regards to claims 6 and 7-11, it is unclear what structure allows for the functions of claims 7-11 to take place. As written, in claim 6, the compliant mechanism is not part of the roller and not engaged with the outer ring gear which is not supported by the Figures. There does not appear to be a time where the compliant mechanism does not engage the outer ring gear and claim 6 needs to acknowledge the relationship.
With regards to claim 7, it is unclear how the engagements points of claim 1 remained spaced when the deflection configuration is achieved. Claim 7 needs to acknowledge the engagement points in the neutral and deflected configurations.
With regards to claims 12 and 13, claim 6 discloses the compliant mechanism as a separate structure in relation to the roller. It is unclear how the roller can comprise the compliant mechanism when they are originally unrelated structures. Claim 6 needs to broadly disclose this relationship between the roller and the compliant mechanism.
Claim 19 recites the limitation "said pinion gear" on line 3. There is insufficient antecedent basis for this limitation in the claim. Claim 19 should depend from claim 3.
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 1-5 are rejected, as best understood, under 35 U.S.C. 102(a)(1) as being anticipated by Webb (5,569,285).
With regards to claims 1-5, Webb discloses the same invention including a roller cutter (Fig. 8) having a rotatable roller including an outer rim configured to engage a material at a roller engagement point (45), a rotatable blade including a cutting edge configured to cut the material at a blade engagement point (49), the blade engagement point is spaced from the roller engagement point (Fig. 8, where 45 engages the material would be spaced from where 49 engages the material), a rotation transmission mechanism (51, 52, 53, 48) configured to drivingly interconnect the blade and the roller (Fig. 8) such that the blade rotates faster than the roller (column 4 lines 67 – column 5 line 1), the cutting edge is capable of applying both a compressive shear force and a tangential shear force to the material at the blade engagement point as the blade is pressed into the material ands the blade and roller rotate (Fig. 8), the transmission mechanism comprises a gear mechanism (51, 53), the gear mechanism including an outer ring gear fixed to the roller to rotate therewith (51), an internal pinion gear fixed relative to the blade to rotate therewith (53), the roller integrally defining the ring gear (Fig. 8), the pinion gear being discrete from and fixed to the blade (Fig. 8), and the gears being selectively positioned in driving interengagement (Fig. 8).
Claims
It is to be noted that claims 6-20 have not been rejected over prior art. It may or may not be readable over the prior art but allowability cannot be determined at this time in view of the issues under 35 USC § 112. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON DANIEL PRONE whose telephone number is (571)272-4513. The examiner can normally be reached on Monday-Friday: 7:30 am-3:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam J Eiseman can be reached on (571)270-3818. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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10 September 2025
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724