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 .
Interview
On 10/22 and 10/23 Ex. Michalski called Kevin McGrath to request amendments to permit allowance of claims in the case. Mr. McGrath was not receptive to the overture and indicated the applicant preferred to receive an action on the merits for the pending claims. Ex. Michalski therefore withdrew any potential indication of allowable subject matter implicit in that communication. All the subject matter under examination is old and well known to those of ordinary skill, and should remain in the public domain, as the detailed rejections demonstrate infra.
Election/Restrictions
Claims 4-9, 11-15 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/22/2025.
Applicant alleges that the office failed to carry their burden in establishing the groups would represent an undue burden. With respect to some claims—this is accurate, as they are rejoined and examined below. With respect to those claims not rejoined, the argument of applicant lacks persuasive evidence, and the restriction thereto is therefore maintained and made FINAL.
Claims 2-8, 13- 15 and 20 are rejoined and examined herein---along with the elected group VIII claims 10 and 17-19.
Claims 1-8, 10, 13-20 are examined and rejected below.
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 1-8, 10, 13-20 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.
The scope of the term “power tool” and “configured to be coupled to a power tool” is not reasonably precise in this context.
The term “power tool” is not defined in the specification.
The only feature shown or disclosed that could be considered to be configured to couple to a power tool is a hexagonal shank. It is not apparent that applicant intended to be constrained by that, but otherwise, there is no constraint of what is and is not an ability to couple to a power tool consistent with the specification. It is not apparent from the specification what about a hexagonal shank is generic to all power tools, or whether this type of coupling is required by the claim. Is it a requirement to be a discrete mechanical element? Would electric connection be “configured to be coupled to a power tool?” The ambiguity here is such that the scope of the claims is unascertainable. The claim attempts to claim the invention not by what it is, but only by what it does (couple to a power tool)—and the nature of the coupling is left entirely to the imagination in the context of the language of the claim and the specification, which provide no objective limit.
We may not infer that it requires a hexagonal shank—this would be wholly importing only drawn components into the scope of the claim—
AS A result we are left with a pure “capable” of statement, which requires the utmost of breadth. If the claim is not indefinite, then it can only mean capable of being coupled to a power tool (of any nature—so long as it has power and is a ‘tool’) and the coupling can be of any nature as well—e.g. by glue or duct tape. The claim does not require power transfer from the tool to the device, nor that the coupling be of any specific nature or type.
Either the claim is indefinite (as set forth above—there is no reasonably ascertainable boundary to the claim, and the claim is clearly trying to infer something about the connection or relation to the power tool) or else the claim limitation is so broad as to encompass a preposterous scope inconsistent with the disclosure taken as a whole. In either case, the claim should be clarified as to the scope actually disclosed and invented by applicant – possibly limited to the only embodiment shown—a hexagonal shank.
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.
(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.
Claim(s) 1-8, 13-15 and 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Vail (US 3,093,023).
Regarding claim 1, Vail discloses A cable jacket cutting device (See title “cutting flexible conduit…”) comprising: a housing (18 figure 2, inter alia); a rotatable input shaft at least partially received in the housing (25 figure 2).
The clause “and configured to be coupled to a power tool;” is indefinite. Applicant has not restricted the claim scope to be what was actually disclosed, and the plain meaning as best understood includes being physically capable of being taped or glued to a wholly distinct tool, and the term “tool” and “power” are both wildly broad in themselves. Here examiner will assert that the motor 8 is per se a power tool, and the shaft 25 is configured to be coupled to that tool since it is shown so coupled, in functional relationship, no less.
Alternatively, the shaft 25 is capable of being coupled to the type of hand drill applicant envisions, by, for example, tying the handle 6 of Vail by a string to connect to the handle of such a power drill--- the claim clause is a statement of capability or intended use—and is met by a capability. Since shaft 25 is mounted within the whole device of Vail, and a string could clearly couple the whole device to a completely dissimilar device, the structure of Vail would meet the clause “input shaft … configured to be coupled to a power tool…” as claimed. See In re Schreiber 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) where a oil funnel was held capable of funneling popcorn even though there was no disclosure in the reference to popcorn, and the use as an oil funnel was wholly different to the alleged invention of popcorn dispensing. Here, the input shaft shown in Vail is capable of being connected to some arbitrary power tool by a string, tape, glue, or whatever else one can imagine—it is a structural property of the Vail device which meets the indefinite and/or extremely broad clause “input shaft
configured to be coupled to a power tool”, and not a modification of the device.
Vail further discloses a rotatable blade (24 figure 2) configured to be rotated upon rotation of the rotatable input shaft (As seen plainly in figure 4) ; and a jaw assembly coupled to the housing and including a first jaw (26, 27, 28, etc. as discussed at column 2 lines 10-26, and shown in figures 1 and 2 inter alia) and a second jaw (36 figure 1 inter alia) operable to grasp a cable (“Flexible conduit” col. 1 line 8-10), the jaw assembly operable to move the cable towards the rotatable blade allowing the rotatable blade to form a slit in an exterior jacket of the cable (Discussed at column 2 lines 52-65, especially 60-65; this is discussed as the pressure being applied to the cable by 36/37 pivoting down against a cable pressing it with the movable block 26 lowering down permitting the blade to extend up through a slit and slit and cut the cable).
Regarding claim 2, Vail further discloses the jaw assembly is movable between an open position (e.g. figure 2 which shows where the blade is exposed—thus it is ‘open’ to cutting) and a closed position (figure 1 where jaw 26/28 is raised thus blocking the blade from exposure—thus a ‘closed’ position) and is biased toward the closed position (See column 2 line 29+ “Only upon depression of the block against the bias of the springs 30, will the cutter teeth extend through slot 29 into cutting engagement…”).
Claim 13 is anticipated for the same reasons as claim 2, the discussion about open/closed being applicable to the language of claim 13 “exposed / covered.”
Regarding claim 3, Vail further discloses wherein the second jaw is coupled to the housing via a pivot point (both of 41 and 40 may be considered as the pivot point which connects jaw 37 to the housing18 as seen in Figure 1, 2, etc.).
Regarding claim 4, Vail further discloses wherein the first jaw is configured to move towards and away from the rotatable blade (See AS noted above-- Discussed at column 2 lines 52-65, especially 60-65; this is discussed as the pressure being applied to the cable by 36/37 pivoting down against a cable pressing it with the movable block 26 lowering down permitting the blade to extend up through a slit and slit and cut the cable) via a track engaged with a groove (as discussed, there are tracks 27 engaged within the housing grooves of 7 and shown in the figures 2, discussed as also including a switch element as part of the rails/tracks 27). Note too, the tracks and rails are not specifically defined and therefore carries their broadest reasonable meanings—here something akin to guide structure and guide structure… as best understood.
Regarding claim 5, Vail further discloses the first jaw and the second jaw are operable to move independently with respect to one another --they are shown in figure 2 mounted discretely on the same common housing, but they move independent of one another—even though they are meant for the jaw of 37 to push a cable into and transmit force to jaw 26, each jaw as shown is movable by itself.
Regarding claim 6, Above, the first jaw was assigned to be 26, 27, etc. while the second jaw assigned to be 37, etc… these selections are arbitrary, so with respect to claims 1 and 6, for the purpose of discussing claim 6, consider the jaw nomenclature reversed, and therefore that Vail discloses a lever (39) coupled to the housing (18, via 40) operable to move the first jaw (37) away from the rotatable blade (by pivoting around 40, as shown in figure 1).
Regarding claim 7, Vail discloses a biasing member (43) operable to bias the second jaw (37) towards the first jaw (26). See column 2 line 58+ which discloses “a spring 43 to bias the shoe 36 in a direction to readily engage over a conduit…” which means the biasing direction of the jaw towards engagement with conduit and the other jaw are the same.
Regarding claim 8 Vail discloses the biasing member comprises at least one of a compression spring (See 43, a helical spring as shown which is a compression spring), an extension spring, or a torsion spring.
Regarding claim 14, Vail discloses the housing includes a door (18 as discussed at column 1 , lines 67+, shows opening and giving access to the interior space of the housing) configured to be openable to replace the rotatable blade (Ibid).
Regarding claims 15 and 20 Vail discloses jaw assembly further includes a lock member (spikes 44, figure 1) configured to engage a groove (capable of) in a jacket of the cable when the jaw assembly is in a closed position (it can engage cable in either position as a property of the Lock). Each limitation of claim 20 may be seen as referenced in claim 1, etc. above.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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(s) 10 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Vail as set forth as applied to claim 1 above, and further in view of Agronin (US 2009/0013477).
Vail does not combine the slitter tool with a “bit holder” as set forth in claim 10, drivable by the same motor—etc. as the cutter.
Agronin discloses the use of a cutter tool on one end of a housing (60,62, figure 1) and a bit holder 80/84 figure 1, figure 7. This enables a combination of both mechanisms on the same device—as set forth in Agronin: “a motor assembly in the housing, the motor assembly including an output member having a bit holder arranged at the second end and wherein the output member rotates the bit holder upon activation of the motor assembly.”
It would have been obvious to improve the device of Vail in the same manner as Agronin, by adding a driven bit holder which can therefore drive hex bits in a known manner—for example to screw things in.
Claim 16 is clearly obvious in the same manner as claim 10. The details of claims 17-19 are discussed with respect to Vail above, and are therefore obvious on the present combination discussed with respect to claim 10, as adding a bit holder as taught by Agronin to fashion a combination tool.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M MICHALSKI whose telephone number is (571)272-6752. The examiner can normally be reached Typically M-F 6a-3:30p East Coast Time.
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, Adam Eiseman can be reached at (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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SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/Primary Examiner, Art Unit 3724