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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on November 21, 2023 and February 19, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
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, the “direction X” (as in claim 1), must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Therefore, the “knife” (as in 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 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) 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.
Such claim limitation(s) is/are: “a control element (16) designed to be actuated by a user…” in claim 1. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the control element” as being, “any gripping member capable of being rotated and/or translated by a user.” (see paragraph 42). Thus, in view of the specification, the limitation, “a control element”, is being interpreted as any gripping member capable of being rotated and/or translated by a user and/or equivalents thereof.
Such claim limitation(s) is/are: “a transmission member configured…” in claim 1. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the transmission member” as being a mechanism that translated the carriages in opposite directions (see paragraph 11). Thus, in view of the specification, the limitation, “a transmission member”, is being interpreted as a mechanism that translates the carriages in opposite directions and/or equivalents thereof.
Such claim limitation(s) is/are: “a module for adjusting the minimum distance…” in claim 3. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the module” as including stops and a positioning shaft (see paragraph 53). Thus, in view of the specification, the limitation, “a module for adjusting the minimum distance”, is being interpreted as stops and a positioning shaft and/or equivalents thereof.
Such claim limitation(s) is/are: “a module for adjusting its linear distance…” in claim 5. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the module for adjusting its linear distance” as including a fitting body (paragraph 63). Thus, in view of the specification, the limitation, “a module for adjusting its linear distance”, is being interpreted as stops and a fitting body and/or equivalents thereof.
Such claim limitation(s) is/are: “a module for adjusting its angular position…” in claim 7. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the module for adjusting its angular position” as including rotation blocking element (paragraph 68). Thus, in view of the specification, the limitation, “a module for adjusting its angular position”, is being interpreted as rotation blocking element and/or equivalents thereof.
Such claim limitation(s) is/are: “a module for adjusting the position of the knife…” in claim 11. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the module” as being anything that can “move the knife relative to the carriage in at least one direction parallel to direction X.” (paragraph 20). Thus, in view of the specification, the limitation, “a module for adjusting the position”, is being interpreted as anything that can move the knife relative to the carriage in at least one direction parallel to direction X and/or equivalents thereof.
Such claim limitation(s) is/are: “a module for adjusting the angular position of the control element (16) relative to the frame (12) about a direction Y orthogonal to the direction X.” in claims 14 and 15. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the module for adjusting the angular position of the control element (16)” as being an indexing wheel.” (paragraph 25). Thus, in view of the specification, the limitation, “a module for adjusting the angular position of the control element (16)”, is being interpreted an indexing wheel and/or equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing 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 1-18 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.
Claim 1 discloses, “a tool holder (130;140) to which a knife is fixed”. However, because the drawings fail to show the knife, it is unclear where the knife is fixed on the tool holder. Additionally, the applicant never describes the knife as being used for cutting but does describe it as opening a watch case (paragraph 8). Thus, it is also unclear if the knife in claim 1 is used for cutting the watch case or rather if it is merely a tool used for opening the watch case. In order to expedite prosecution, the examiner has interpreted the “knife” as being a tool for opening a watch case. However, further clarification is respectfully requested.
Claim 14 discloses, “a module for adjusting the angular position of the control element relative to the frame…”. However, it is unclear how the module for adjusting the angular position is actually connected to the control element. Even when interpreting the module under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, as indicated above, it is unclear how the module is actually connected to the control element. What is the connection between the module and the control element that allows it to adjust the angular position? Is it a pivotal connection? Does the connection require a cam (as in claim 15)? Further clarification is respectfully requested.
Claim 17 recites the limitation "the first carriage" in Line. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the second carriage" in Line. There is insufficient antecedent basis for this limitation in the claim.
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 1-3 and 5-7 are rejected As Best Understood under 35 U.S.C. 102(a)(1) as being anticipated by Foreign Reference (JP S5939674, translation included herewith).
In reference to claim 1, As Best Understood, Foreign Reference discloses a device (Figure 1) capable/for opening a watch case including a back fixed to a middle by interlocking (Figure 4), wherein the device comprises a fitting (4) fixed to a frame (1) and intended to hold a watch case (i.e. clock) in position (see following portion of translation disclosing, “If the clock side is laid in height adjustment stand 4…”), at least one carriage (i.e. at left 5 and/or at right 5, Figure 1) movable in translation relative to the frame (12) in a direction X (see following portion of translation disclosing, “That is, to frame 1, one Claw stand 5 is extracted in parallel with the X-axis, and is pushed, it is directly fixed to the end of operational aggressiveness stick 6 via connecting member 8, and Claw stand 5 of another side is fixed to differential link 7 via connecting member 9. And one end is engaged with pin 10 which was pushed on this link 7 and fixed in the middle of a stick, the other end of directional change link 12 supported pivotably by frame 1 by pin 11 in the center is engaged, and although aggressiveness stick 6 of this link 7 is parallel, it operates to an opposite direction”), the carriage including a tool holder (18) to which a knife/tool (i.e. 20) is fixed, the device further includes a control element (i.e. gripping member 21 which is capable of being rotated and/or translated by a user which meets the limitation of the control element, as previously interpreted under 35 U.S.C. 112(f), see section 6a above) designed to be actuated by a user, kinematically connected to the carriage with a transmission member (i.e. mechanism 6, 7 and 12, which meet the limitation of the transmission member because it is a mechanism that translates the carriages in opposite directions, as previously interpreted under 35 U.S.C. 112(f), see section 6b above) configured so that when the control element is actuated, the carriage is translated towards the fitting or in a direction opposite to the fitting (again see translation disclosing that, “That is, to frame 1, one Claw stand 5 is extracted in parallel with the X-axis, and is pushed, it is directly fixed to the end of operational aggressiveness stick 6 via connecting member 8, and Claw stand 5 of another side is fixed to differential link 7 via connecting member 9. And one end is engaged with pin 10 which was pushed on this link 7 and fixed in the middle of a stick, the other end of directional change link 12 supported pivotably by frame 1 by pin 11 in the center is engaged, and although aggressiveness stick 6 of this link 7 is parallel, it operates to an opposite direction”).
In reference to claim 2, Foreign Reference discloses two carriages (i.e. at left 5 and/or at right 5) movable in translation with respect to the frame in the direction X, on either side of the fitting, the transmission member being configured so that when the control element is actuated, the carriages are translated in opposite directions (see translation disclosing that, “That is, to frame 1, one Claw stand 5 is extracted in parallel with the X-axis, and is pushed, it is directly fixed to the end of operational aggressiveness stick 6 via connecting member 8, and Claw stand 5 of another side is fixed to differential link 7 via connecting member 9. And one end is engaged with pin 10 which was pushed on this link 7 and fixed in the middle of a stick, the other end of directional change link 12 supported pivotably by frame 1 by pin 11 in the center is engaged, and although aggressiveness stick 6 of this link 7 is parallel, it operates to an opposite direction”).
In reference to claim 3, Foreign Reference discloses a module (at 13 and/or at 16/19) for adjusting the minimum distance between the two tool holders, configured so as to be able to modify the amplitude of the stroke of each of the carriages (see translation disclosing that, “Sending screw 15 is pinched at the end, and is provided with 16, it becomes reverse in a right screw part and a left screw part, i.e., a symmetrical target, at the both sides of an intersection with the X-axis, and screw 17 is engraved. And on each Claw stand 5, it fits in slidably at guide rail 14, and it engages with screw 11 of Sending Si screw 15 to an intersection with the above-mentioned X-axis in a symmetrical position, and nail buck 18 is arranged. Therefore, To go around and nail buck 18 move knob 16 symmetrically to the intersection of the above-mentioned X-axis. In order to correct the imbalance (it is not symmetrical) of the original position of two nail bucks 18 (it is both engaging with one sending screw) to this intersection, adjustment screw 19 can be formed. It is for adjusting in this screw, i.e., sending screw 15, and the direction of the X-axis” ).
In reference to claim 5, Foreign Reference discloses that the fitting comprises a module (i.e. lower portion of 4 including threading on an outer part thereof in Figure 2) for adjusting its linear position configured to drive the fitting in translation in a direction Z (i.e. vertical direction corresponding to a height) orthogonal to the direction X (see translation disclosing that, “The structure of height adjustment stand 4 is arbitrary, and uses the thing of the screw type well by a diagram.”).
In reference to claim 6, Foreign Reference discloses that the module for adjusting the linear position of the fitting is formed by a fitting body (i.e. lower body of 4) arranged so as to be movable in translation in a structure (i.e. hole of 1 that receives 4 therein, Figure 2) of the fitting, the fitting body including a threaded portion (i.e. outer lower threaded portion) cooperating with an operating member (i.e. inner threaded portion of 1) in a helical connection (i.e. because they are threads, Figure 2).
In reference to claim 7, Foreign Reference discloses that the fitting can be rotated about a direction Z orthogonal to the direction X and comprises a module (i.e. lower portion of 4 including threading on an outer part thereof in Figure 2) for adjusting its angular position (i.e. vertical position) configured so as to release the fitting in rotation about the direction Z or to immobilize the fitting in rotation.
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.
Claim 11, is rejected under 35 U.S.C. 103 as being unpatentable over Foreign Reference (JP S5939674, translation included herewith) in view of Piley (6640666) or Reference (FR 1570714, cited by applicant and hereafter referred to as Reference‘714).
In reference to claim 11, Foreign Reference discloses the limitations of the claims as previously discussed above, but lacks,
the carriage includes comprises a module for adjusting the position of the knife which it carries, said adjustment module being configured to move the knife relative to the carriage in at least one direction parallel to direction X.
However, Piley teaches that it is old and well known in the art at the time the invention was made to provide a carriage (22) that comprises a module (111) for adjusting the position of a tool (110, similar to the “knife” of claim 11) which it carries, said adjustment module being configured to move the tool relative to the carriage (by adjusting the threading) in at least one direction parallel to a direction X (i.e. horizontal direction in Figure 2a).
In addition, Reference‘714 also teaches that it is old and well known in the art at the time the invention was made to provide a carriage (23) that comprises a module (28 or 30) for adjusting the position of a tool (21 or 29) which it carries, said adjustment module being configured to move the tool relative to the carriage (by adjusting the threading) in at least one direction parallel to a direction X (i.e. horizontal direction in Figure 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the carriage, of Foreign Reference, with the known technique of providing a carriage having the adjustment module, as taught by Piley or Reference‘714, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that facilitates the press fit (Column 10, Lines 26-28) thereby allowing a user to more easily connect or remove the tool (Column 10, Lines 13-20).
Claim 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Foreign Reference (JP S5939674, translation included herewith) in view of Klimach (5172895).
In reference to claim 17, Foreign Reference discloses the limitations of the claims as previously discussed above, but lacks,
the frame includes comprises two flanges arranged on either side of the fitting, said flanges including openings through which extend translational guide rods included in one of the carriages, referred to as the "first carriage", the tool holder of the first carriage being integral in translation with the guide rods.
However, Klimach teaches that it is old and well known in the art at the time the invention was made to provide a frame (26 and 14, see Figure 3) including two flanges (82 and 84) arranged on either side of a fitting (formed as the space between 82 and 84 in Figure 3 or as surface 30), said flanges including openings (i.e. openings that receive 146 and 148, respectively) through which extend translational guide rods (146 and 148) included in one of the carriages, referred to as a "first carriage" (82), the tool holder of the first carriage being integral in translation with the guide rods (Figures 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the frame, of Foreign Reference, with the known technique of providing a frame includes comprising the two flanges including openings for the guide rods, as taught by Klimach, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively adjusts the position of the flanges relative to each other (See Abstract).
In reference to claim 18, Klimach also discloses that one of the carriages, referred to as a "second carriage" (84), is configured so as to be slidably guided by the guide rods (Figure 3).
Allowable Subject Matter
Claims 4, 8-10, 12, 13, 15 and 16 are 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 and if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dulaney (2261055) discloses a watch holder having two guide rods (9) for moving holders (6 and 7) be operation of a handle (11, Figure 1-6).
Chiappetti (4437654) teaches that it is known in the art to provide a vise or clamping tool with interchangeable jaw members (see Abstract and Figures 1-5).
Fischer (3899162) also shows that it is known to provide a clamping tool with a spring (50) biased guide (14/46, Figure 6).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723