DETAILED ACTION1
CLAIM OBJECTIONS
Claims 1-16 are objected to because of an informality. Claim 1 recites a backset jig having three primary elements separated by semi-colons, namely a frame, an abutment, and a hole saw guide. Grammatically, the word ‘and’ is required following the second semi-colon. Claims 2-10 are objected to based on their dependence. Claim 11 recites the expose portion of the guide bit. The word expose should be ‘exposed.’ Claims 12-16 are objected to based on their dependence. Appropriate correction is required.
REJECTIONS UNDER 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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.
Claims 1-10 are rejected under 35 U.S.C. 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1 recites a backset jig for guiding a hole saw for forming holes in a door panel having first and second sides and an edge extending between the first and second sides for installation of a door lock comprising. It is unclear if the claim is reciting that the jig or the door has first and second sides and an edge. Both interpretations are possible. Based on claim 11, which appears to require that it is the door panel having the sides and edge, claim 1 has been examined accordingly. Claims 2-10 are rejected based on their dependence.
REJECTIONS UNDER 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-13, & 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2016/0325361 to Trettin.
Claim 1 recites a backset jig for guiding a hole saw for forming holes in a door panel. Trettin relates to such a jig (25). See Trettin [0002]-[0003] and Fig. 1. Trettin teaches the backset jig (25) has a frame (30) including a first leg (60) to be positioned adjacent the first side of the door panel in which a lock hole is to be formed… an abutment (45) for abutting the edge of the door panel; [and] a hole saw guide insert (40) having a hole saw guide aperture (120) defining a guide aperture center. See Trettin Fig. 4.
Claim 1 further recites that the frame has a first alignment tab slot, a second alignment tab slot, and a third alignment tab slot and that the insert has a first alignment tab and a second alignment tab that are spaced by 90 degrees. Figure 4 of Trettin shows the frame (30) has the second and third slots (105) and that the insert has a corresponding second tab (130). Trettin also teaches a first slot that can be seen in figure 3 and is defined to be the hollow interior space on the far-left side of the insert (40). The first tab is the defined to be the left-side region of the insert itself, specifically the region starting to the left of the indented top to the terminal left face. The two tabs are spaced 90 degrees apart because one extends from the left side and the other extends from the top side.
Finally, claim 1 recites that the hole saw guide insert [is] mountable to the first leg (60) in a first position with the second alignment tab inserted into the second alignment tab slot positioning the guide aperture center a first distance from the abutment and in a second position with the second alignment tab inserted into the third alignment tab slot positioning the guide aperture center a second distance from the abutment. See Trettin Figs. 3 & 6.
Regarding claim 2, figures 3 & 6 further show that the first alignment tab is inserted into the first alignment tab slot in both the first and second positions. Likewise, figures 3 & 6 show that the first alignment tab cannot be inserted into the second and third alignment tab slots or the second alignment tab cannot be inserted into the first alignment tab slot as recited in claim 3.
Regarding claim 4, figure 3 of Trettin shows that the first alignment tab slot has a second width substantially equal to the first width [of the first alignment tab]. Figures 3-4 show that the second alignment tab has a third width and the second and third alignment tab slots have a fourth width substantially equal to the third width. Finally, figures 3-4 also show that the first width is greater than the fourth width preventing improper insertion as recited.
Claims 6-8 recite that there are two sets of each tab group, on opposing sides. Figure 3 of Trettin shows tabs (135, 145) on both the top and bottom and shows identical side tabs on the left and right, likewise there are slots on both the bottom and right of the frame. Both sets of tabs are inserted into slots during use, as recited. Regarding claim 9, figure 4 of Trettin shows that the first leg (60) has an insert receiving aperture (65) in which the hole saw guide insert (40) is mounted in both the first and second positions. Regarding claim 10, figures 3-4 of Trettin show that the opposing first alignment slots are on oppos[ing] sides of the insert receiving aperture and defin[e] a first axis therebetween, namely the horizontal axis at the aperture center. Figures 3-4 also show each opposing set of second alignment slots and third alignment slots are also on opposed sides of the…aperture and define two parallel vertical axes as recited.
Claim 11 recites a backset jig kit for guiding a hole saw for forming holes in a door panel. Trettin relates to such a kit. See Trettin [0004]. Claim 11 recites substantively identical features to claim 1 and is rejected for the same reasons. Claim 11 then further recites a hole saw having a cylindrical body having teeth at an end thereof and a central guide bit positioned radially inward of the teeth. Trettin teaches its jig is intended to be used with such a hole saw. See Trettin [0023]. One of ordinary skill would infer the presence of the teeth…and a central guide bit and an exposed portion in such a hole saw as this is the standard form of such a hole saw. Claim 11 then recites that the kit has a hole saw guide insert having a hole saw guide aperture. Trettin teaches such an insert (35) with an aperture (155). See Trettin [0023] and Fig. 4. Claim 11 also recites the hole saw guide aperture ha[s] a hole saw teeth clearance region…and a hole saw guide region having a [smaller] diameter and that the smaller diameter guide region is outermost from the door. Figure 3 of Trettin shows that the narrow inner diameter bore (155) does not extend all the way through to the door; rather other wide elements can be seen extending axially inward in the figure. This can also be seen in figure 4 because bore (120) extend axially iward beyond slot (125), which mates with tab (165) at the termal axial end of the outer bore. As such, a wider diameter clearance region (120) exists between bore (155) and the abutment formed by the inner surface of insert (40).
Claim 11 then recites the hole saw teeth clearance region ha[s] a depth measured from the abutment surface being equal to or greater than the first distance such that the teeth of the hole saw are fully received in the hole saw teeth clearance region when the tip of the central guide bit is aligned with the abutment surface. This would also be inferred to be the case because otherwise, the saw teeth would still be inside the guide bore (155) at the beginning of cutting and would damage the guide.
Claim 12 recites that the hole saw teeth clearance region has a radially inwardly facing surface that radially faces the hole saw central axis and which defines the first diameter. This is the inner facing wall of the portion extending beyond the bore, shown in figure 3. This portion is inward facing and is substantially cylindrical. Since it has no apparent taper, it is defined to have a taper of zero degrees which is no more than 8 degrees. (This is consistent with figure 19A of applicant’s specification which shows a clearance region that appears to have no taper as well. Regarding claim 13, figure 3 of Trettin also shows a radial step is formed between the hole saw guide region and the hole saw teeth clearance region as the inner bore just ends creating the larger diameter region beyond. Regarding claim 15, the hole saw guide region is inferred to be sized to receive the teeth of the hole saw axially therethrough as this is its function. Finally, regarding claim 16, Trettin teaches the frame [has]…a spacer (40) removably attachable to the first leg (60), [that] provid[es] the abutment surface when mounted to the leg. Claim 16 then recites that the depth (i.e. the clearance region depth) is greater than the first distance independent of the spacer. The guide insert (35) defines the depth with a flush spacer, thus the guide creates the depth independent of the spacer.
REJECTIONS UNDER 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 obvious2 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 5 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2016/0325361 to Trettin.
Claim 5 recites the hole saw guide insert is 180 degrees rotation symmetric about the guide aperture center. Figure 4 of Trettin shows that the insert (40) is mirror symmetric but not 180° rotation symmetric. Specifically, the top and bottom tabs (135, 145) are both on the same side of the aperture. Yet it would have been an obvious matter of design choice to modify Trettin to have the lower tab on the other side of the aperture (with the corresponding insertion slots on the frame bottom also moved), since applicant has not disclosed that having 180° rotation symmetry solves any stated problem or is for any particular purpose and it appears that the device would perform equally well with either design. This modification would make the insert (40) rotationally symmetric. Furthermore, absent a teaching as to criticality of this symmetry, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975).
ALLOWABLE SUBJECT MATTER
Claim 14 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 14 recites that the guide region is metal and that the clearance region is plastic attached to the metal component. Trettin does not teach whether insert (40) or guide (35) are plastic or metal. The deformable tabs (165) suggest that if anything the guide region is plastic. Even if it were metal, it would be unlikely for the inner insert (40) to be softer plastic because a metallic, deformable tab would likely damage a plastic inner bore. As such, this feature is not taught or obvious based on the prior art.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”