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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/05/2026 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claims 1 and 9 limitation “a plurality of cutting elements configured to apply uniform cuts…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
First, "element" is a generic substitute for “means”; second, the "element" is modified by functional language including “configured to apply uniform cuts…”; and third, the "element" is not modified by sufficient structure to perform the recited function because "cutting" preceding element describes the function, not the structure of the element.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 1 and 9 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 9, 11, 13, 15, 16 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.
The amendment of claim 9 “wherein the engaging comprises securing the cutting device onto the thin- film specimen sheet using a cutting base…” is unclear since the cutting device is movable along the cutting base, therefore, the term “securing the cutting device onto the thin- film specimen sheet” is unclear. Is Applicant trying to claim “securing the cutting base onto the thin- film specimen sheet”, right?
For examination purposes, as best understood, Examiner is interpreting the “issues above” as below and all claims dependent from claim 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from the rejected parent claim
Claim Rejections - 35 USC § 102
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 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 1-4, 6-9,11, 13, 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kern (US 2684533 A).
Regarding claim 1, Kern shows an apparatus (Figures 1-2) for preparing thin-film specimens (23), the apparatus comprising:
a cutting device (two cutters 15, Figure 2) that is configured to cut thin-film specimens; and
a cutting base (22,Figure 2) that is configured for placement on top of a thin-film specimen sheet (23), wherein the cutting device comprises a plurality of cutting elements (2 cutters 15) configured to apply uniform, straight, and parallel cuts into the thin-film specimen sheet (Figures 2-3. Please notes that this apparatus is manual operation, it can be used to cut many parallel cuts to the sheet) as the cutting device is moved over the thin-film specimen sheet (see Col. 2, lines 13-18 “An angle iron straight edge 22 is then placed in position adjacent the edge of the linoleum 23 to be cut and with the guide 18 sliding on the upstanding edge of the straight edge to accurately guide the cutter”) and
wherein the cutting base (22) is configured such that the plurality of cutting elements extends beyond a bottom surface of the cutting base by a distance corresponding to a depth of cutting (see Figure 2).
Regarding claim 2, Kern shows that the cutting base is configured to maintain the thin-film specimen sheet as the cutting device is moved to apply the cuts (see Figures 2-3 and Col. 2, lines 13-18 “An angle iron straight edge 22 is then placed in position adjacent the edge of the linoleum 23 to be cut and with the guide 18 sliding on the upstanding edge of the straight edge to accurately guide the cutter”).
Regarding claim 3, Kern shows that the cutting base comprises a track (see a vertical portion of the L bracket or the angle iron 22 for the guide 18 is slid thereon, Figure 2) that is configured to support movement of the cutting device during the applying of the cuts.
Regarding claim 4, Kern shows that the cutting base and the cutting device are separate components (see Figure 2).
Regarding claim 6, Kern shows that the cutting device comprises a handle (6, Figure 2) for moving the cutting device when applying the cuts.
Regarding claim 7, Kern shows that the plurality of cutting elements comprise rotating blades (see Figures 4-5).
Regarding claim 8, Kern shows that the plurality of cutting elements are evenly spaced (as this is written, it is unclear what the “evenly spaced” relates to, therefore, two cutters are positioned or spaced evenly to the longitudinal axis of the handle and meets the claimed invention).
Regarding claim 9, Kern teaches an method for preparing thin-film specimens (as the claim is written, it is unclear what thin-film specimens is, therefore, see the apparatus of claim 1 above for cutting linoleum and meets this preamble), the method comprising:
engaging a thin-film specimen sheet and a cutting device (see Figures 2-3 and the discussion in claim 1 above),
wherein the cutting device comprises a plurality of cutting elements (15) configured to apply uniform, straight, and parallel cuts into the thin-film specimen sheet as the cutting device is moved over the thin-film specimen sheet (see the discussion in claim 1 above),
wherein the engaging comprises securing the cutting device onto the thin- film specimen sheet (as this written, it is unclear how to secure the cutting device onto the thin- film specimen sheet as discussed the issue above), using a cutting base that is configured for placement on top of the thin-film specimen sheet (see Figures 2-3, the base or L-bracket 22 on the sheet 23 and hold down the sheet 23), and
wherein the cutting base is configured such that the plurality of cutting elements extends beyond a bottom surface of the cutting base by a distance corresponding to a depth of cutting (see Figures 1-2); and
operating the cutting device to create a plurality of thin-film specimen strips from the thin-film specimen (see Figure 5, at least 3 strips as left, middle, and right strips).
Regarding claim 11, Kern teaches that the cutting base is configured to maintain the thin-film specimen sheet as the cutting device is moved to apply the cuts (see the discussion in claim 2 above).
Regarding claim 13, Kern teaches that the cutting base and the cutting device are separate components (see Figures 2-3), and further comprising engaging the cutting base and the cutting device after placing of the cutting base on top of the thin-film specimen sheet (see Figure 2, after the bracket 23 and the cutting device 18, 15 is on the sheet, the bracket and the cutting device engage the sheet)
Regarding claim 15, Kern teaches that the cutting device comprises a handle (6, Figure 2) for moving the cutting device when applying the cuts, and wherein operating the cutting device comprises using the handle to move the cutting device over the thin-film specimen sheet.
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.
Claims 1, 9, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kern.
Regarding claims 1, 9, 16, Kern teaches all of the limitations as stated above (if one argues that the cuts of claims 1 and 9 above are not uniform) or the cuts are NOT evenly spaced.
See the cutting device as stated in claims 1 and 9 above; a plurality of even strips or cuts from the sheet can be cut by using this cutting device (because it is a manual cutting device) if the operator needs or desires the plurality of even strips.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the method of Kern to have a plurality of even cuts or strips from the sheet, in order to have even strips if the operator needs them and allow to save some strips for later.
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 new art above.
Claim 3 has been amended, the previous issue is mooted.
However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
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.
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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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 5/13/2026
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