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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6-18-2026 has been entered.
Claims 1, 7, 10, 19 and 20 were amended. Claims 1-20 are pending and examined in this action.
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.
Claims 1, 5-15, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0207398 to Nicolson in view of US 1,723,843 to Chapin and JP H08229732 A with evidence from US 2012/0000338 to Elliston and US 20070056427 to Males.
At the outset, the Examiner notes that the claim appears to require an external force in order to read on the claim. The Examiner notes that the claims are apparatus claims and not a method claims. Additionally, the magnitude of the force is not required by the claim. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In re Claim 1, Nicolson teaches a cutting blade (see Figs. 7 and 9) comprising:
a body defining a longitudinal axis (see Figs. 7 and 9, #10 has a longitudinal axis);
an attachment portion coupled to the body (see Fig. 9, #22), the attachment portion configured to be coupled to a power tool (see Para. 0030, the tang #22 is for connecting to a saw); and
a liner cutting portion extending along an edge of the body parallel to the longitudinal axis (see Figs. 7 and 9, #1 a cutting portion), the liner cutting portion including a plurality of cutting teeth (see Figs. 7 and 9, #1 are cutting teeth), each cutting tooth including a tip (see Figs. 7 and 9, #1 has a top) and a rake face (see Figs. 7 and 9, #1 has a rake face) extending from the tip, each cutting tooth also including a carbide insert that forms at least the tip of the cutting tooth (see Para. 0022, “Each tooth is molded from tungsten carbide material”);
Nicolson does not teach:
a cantilevered portion partially separated from the body and elastically deflectable relative to the body in response to contact with an object, the cantilevered portion having at least two of the plurality of cutting teeth of the linear cutting portion and configured to absorb a shock to the at least two cutting teeth generated by the object.
However, Chapin teaches that it is known in the at of blades, both circular and straight blades, to provide a slit between teeth (see Chapin, Fig.4 , #14 and Figs. 1-2, #10/12). It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add slits to the blade of Nicolson as taught by Chapin. Doing so prevents damage or cracking of the blade during use (see Chapin, Col. 1, ll. 30-37).
JP H08229732 A expands on the shape or style of the slots. JP H08229732 A teaches that it is known in the art of saw blades to provide a cantilevered portion partially separated from the body and deflectable relative to the body (see JP H08229732 A, Fig. 4, #4 and Fig. 6, #4; see also annotated Fig. 4 below), the cantilevered portion having at least two of the plurality of cutting teeth of the linear cutting portion (see each of the embodiments of JP H08229732 A, Fig. 4 and Fig. 6, each of the cantilevered portion has at least two cutting teeth).
PNG
media_image1.png
633
651
media_image1.png
Greyscale
In the same field of invention, cutting blades, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add the groove #4 of JP H08229732 A to the blade of Nicolson. Doing so prevents distortion of the blade during the cutting hear generated by the cut (see JP H08229732 A, Abstract).
Applicant’s disclosure states that “the cantilever portions 178 are configured to deform at least partially into the void formed by the apertures 130 to absorb a shock to the cutting teeth 126 generated by the nail.” See Para. 0053. In other words, the structure of Claim 1 that performs the function, or intended use recitation, is a void formed by a slot to absorb shock to the cutting teeth.
Ellison evidences that bending and twisting commonly occurs during cutting applications (see Ellison, Para. 0005). Additionally, Males evidences that a reciprocating saw bends during use (see Males, Para. 0007-0008).
During use reciprocating saw blades bend. Modified Nicolson, in re Claim 1, teaches the structure that Applicant claims performs the function and Ellison and Males evidences that during use a force capable of bending the blade routinely occurs. As such, modified Nicolson reads on a cantilevered portion partially separated from the body and elastically deflectable relative to the body in response to contact with an object, the cantilevered portion having at least two of the plurality of cutting teeth of the linear cutting portion and configured to absorb a shock to the at least two cutting teeth generated by the object.
In re Claim 5, modified Nicolson, in re Claim 1, teaches an aperture (see JP H08229732 A, Fig. 4 and Fig. 6, #4 in both figures is an aperture), formed in the body to allow the cantilevered portion to deflect relative to the body (the examiner notes that with enough force provided on the cantilevered portion in JP H08229732 A, Fig. 4 and Fig. 6 in view of Nicolson Figs. 7 and 9, will deflect relative to the body of the saw – further the examiner notes that the claims do not require a particular force).
In re Claim 6, modified Nicolson, in re Claim1, teaches wherein the aperture is elongated along the longitudinal axis (see JP H08229732 A, Fig. 4 and Fig. 6, #4, in view of Nicolson Figs. 7 and 9), wherein the aperture includes a first end (see JP H08229732 A, Fig. 4 and Fig. 6, #4, the end of #4 farthest from the cutting tip) and a second end (see JP H08229732 A, Fig. 4 and Fig. 6, #4, the end adjacent to the cutting tip) spaced from the first end along the longitudinal axis (see JP H08229732 A, Fig. 4 and Fig. 6, #4, in view of Nicolson Figs. 7 and 9), and wherein the second end opens to a gullet formed in the cutting portion (see JP H08229732 A, Fig. 4 and Fig. 6, #4, opens in a gullet formed in the cutting portion).
In re Claim 7, modified Nicolson, in re Claim1, teaches wherein the plurality of cutting teeth includes a first plurality of cutting teeth position the cantilevered portion (see JP H08229732 A, Fig. 4 and Fig. 6, #4, in view of Nicolson Figs. 7 and 9).
In re Claim 8, modified Nicolson, in re Claim 1, teaches wherein the first plurality of cutting teeth defines a first plane (see JP H08229732 A, Fig. 4 and Fig. 6, #4, the plane of the “paper”), and wherein the first plane is configured to be angled relative to the longitudinal axis while the cantilevered portion deflects relative to the body (an unclaimed force of significant magnitude in JP H08229732 A, Fig. 4 and Fig. 6, #4, either into our out of the “paper” will deflect the cutting portion relative to the body of the blade).
As best understood, a force is required to achieve this “wherein the first plane is configured to be angled relative to the longitudinal axis while the cantilevered portion deflects relative to the body.” The Examiner notes that the claim is an apparatus claim and not a method claim. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, modified Nelson, when exposed to routine bending and forces during cutting, as evidenced by Ellison and Males, is capable of performing the intended use and meets the claim.
In re Claim 9, modified Nicolson, in re Claim 1 teaches wherein the aperture is a first aperture; however, modified Nicolson, in re Claim 1, does not teach the cutting blade further comprising a plurality of apertures defining a plurality of cantilever portions offset from one another along the longitudinal axis.
However, JP H08229732 A teaches embodiments with multiple apertures (see JP H08229732 A, Fig. 1, or 7, or 8). It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add multiple apertures to the blade of Nicolson. It has been held that the mere duplication of the essential working parts for a multiplied effect is obvious unless there is a synergistic effect. See St. Regis Paper Co. v. Bemis CO., Inc., 193 USPQ 8, 11 (7th Cir. 1977). Here, adding additional apertures along the would simply further reduce the heat in the area of the apertures (see JP H08229732 A, abstract).
In re Claim 10, Nicolson teaches a cutting blade (see Figs. 7 and 9) comprising:
a body defining a longitudinal axis (see Figs. 7 and 9, #10 has a longitudinal axis);
an attachment portion coupled to the body (see Fig. 9, #22), the attachment portion configured to be coupled to a power tool (see Para. 0030, the tang #22 is for connecting to a saw);
a plurality of cutting teeth extending from a portion of the body (see Figs. 7, and (, #1), the plurality of cutting teeth defining a linear cutting edge of the cutting blade (see Fig. 1 and 9, the teeth form a linear cutting edge).
Nicolson does not teach:
an aperture extending in a direction principally parallel to the longitudinal axis, the aperture including a first end adjacent a first cutting tooth and a second end adjacent a second cutting tooth axially offset from the first cutting tooth, the second end being closer than the first end to the attachment portion; and
a cantilever portion formed between the aperture and the linear cutting edge, extending between the first end and the second end of the aperture, and supporting at least two of the plurality of cutting teeth, the cantilever portion being elastically deflectable in a direction transverse relative to the longitudinal axis in response to contact with an object and configured to absorb a shock to the at least two cutting teeth generated by the object.
However, Chapin teaches that it is known in the art of blades, both circular and straight blades, to provide a slit between teeth (see Chapin, Fig.4 , #14 and Figs. 1-2, #10/12). It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add slits to the blade of Nicolson as taught by Chapin. Doing so prevents damage or cracking of the blade during use(see Chapin, Col. 1, ll. 30-37).
JP H08229732 A expands on the shape or style of the slots. JP H08229732 A teaches that it is known in the art of saw blades to provide an aperture (see JP H08229732 A, Fig. 4, #4 and Fig. 6, #4), the aperture including a first end adjacent a first cutting tooth and a second end adjacent a second cutting tooth axially offset from the first cutting tooth (see JP H08229732 A, Fig. 4, #4 and Fig. 6, #4, one end of #4 is adjacent the cutting tool and one end is axially offset from the cutting tooth), and a cantilever portion formed between the aperture and the linear cutting edge (see annotated Fig. 4, above), extending between the first end and the second end of the aperture, and supporting at least two some of the plurality of cutting teeth (see annotated Fig. 4, above), the cantilever portion being deflectable in a direction transverse relative to the longitudinal axis (the examiner notes that with enough force provided on the cantilevered portion in JP H08229732 A, Fig. 4 and Fig. 6 in view of Nicolson Figs. 7 and 9, will deflect relative to the body of the saw – further the examiner notes that the claims do not required a particular force).
In the same field of invention, cutting blades, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add the groove #4 of JP H08229732 A to the blade of Nicolson. Doing so prevents distortion of the blade during the cutting hear generated by the cut (see JP H08229732 A, Abstract).
The combination of the aperture of JP H08229732 A and Nicolson would provide for a saw blade wherein the aperture is extending in a direction principally parallel to the longitudinal axis; and the second end is closer than the first end to the attachment portion.
Applicant’s disclosure states that “the cantilever portions 178 are configured to deform at least partially into the void formed by the apertures 130 to absorb a shock to the cutting teeth 126 generated by the nail.” See Para. 0053. In other words, the structure of Claim 10 that performs the function, or intended use recitation, is a void formed by a slot to absorb shock to the cutting teeth.
Ellison evidences that bending and twisting commonly occurs during cutting applications (see Ellison, Para. 0005). Additionally, Males evidences that a reciprocating saw bends during use (see Males, Para. 0007-0008).
During use reciprocating saw blades bend. Modified Nicolson, in re Claim 1, teaches the structure that Applicant claims performs the function and Ellison and Males evidences that during use a force capable of bending the blade routinely occurs. As such, modified Nicolson reads on a cantilevered portion partially separated from the body and elastically deflectable relative to the body in response to contact with an object, the cantilevered portion having at least two of the plurality of cutting teeth of the linear cutting portion and configured to absorb a shock to the at least two cutting teeth generated by the object.
In re Claim 11, modified Nicolson, in re Claim 10, teaches wherein a part of the cantilever portion adjacent the second end of the aperture is configured to deflect by a greater amount than a part of the cantilever portion adjacent the first end of the aperture is (the structure of modified Nicolson, includes a part of the cantilever portion adjacent the second end of the aperture is configured to deflect by a greater amount than a part of the cantilever portion adjacent the first end of the aperture is, as best understood).
In re Claim 12, modified Nicolson, in re Claim 10, teaches wherein the aperture has a thickness configured to be reduced as the cantilever portion is deflected (when a force is applied the thickness of the aperture is configured to be reduced, see e.g., annotated Fig. 4, below).
PNG
media_image2.png
633
584
media_image2.png
Greyscale
As best understood, a force is required to achieve this “the aperture has a thickness configured to be reduced as the cantilever portion is deflected.” The Examiner notes that the claim is an apparatus claim and not a method claim. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, the prior art structure is capable of performing the intended use and meets the claim.
In re Claim 13, modified Nicolson, in re Claim 10, teaches wherein at least part of the aperture is curved (see JP H08229732 A, Fig. 4 and Fig. 6, #4, in view of Nicolson Figs. 7 and 9).
In re Claim 14, modified Nicolson, in re Claim 10, does not teach comprising a plurality of the apertures and a plurality of the cantilever portions, the plurality of the cantilever portions offset relative one another along the longitudinal axis.
However, JP H08229732 A teaches embodiments with multiple apertures (see JP H08229732 A, Fig. 1, or 7, or 8). It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add multiple apertures to the blade of Nicolson. It has been held that the mere duplication of the essential working parts for a multiplied effect is obvious unless there is a synergistic effect. See St. Regis Paper Co. v. Bemis CO., Inc., 193 USPQ 8, 11 (7th Cir. 1977). Here, adding additional apertures along the would simply further reduce the heat in the area of the apertures (see JP H08229732 A, abstract).
In re Claim 15, modified Nicolson, in re Claim 14, teaches wherein the plurality of the cantilever portions are each separated from adjacent cantilever portions by one or more cutting teeth (see JP H08229732 A, Fig. 4 and Fig. 6, #4, in view of Nicolson Figs. 7 and 9, in view of JP H08229732 A, Fig. 1, or 7, or 8, would provide for separated cantilever portions).
In re Claim 19, Nicolson teaches a cutting blade (see Figs.7 and 9) comprising:
a body defining a longitudinal axis (see Figs. 7 and 9, #10 has a longitudinal axis);
an attachment portion coupled to the body (see Fig. 9, #22), the attachment portion configured to be coupled to a power tool (see Para. 0030, the tang #22 is for connecting to a saw);
a linear cutting portion extending along an edge of the body (see Figs. 7 and 9, the cutting portions are in a linear line), the cutting portion including a first plurality of cutting teeth defining a first plane extending parallel to the longitudinal axis (see Figs. 7 and 9, the cutting portions include a first plurality of cutting teeth).
Nicolson does not teach:
a second plurality of cutting teeth axially offset from the first plurality of cutting teeth and defining a second plane,
the second plurality of cutting teeth supported on a cantilever portion and configured to elastically deflect relative to the first plurality of cutting teeth in response to contact with an object, during which the first plane and the second plane are misaligned,
wherein the cantilever portion has a base end and a free end, and wherein the base end is closer than the free end to the attachment portion; and
an aperture formed in the body and separating the cantilever portion from a remainder of the body, the second plurality of cutting teeth being supported on the cantilever portion and the first plurality of cutting teeth being supported on the remainder of the body, wherein the cantilever portion is configured to absorb a shock to the second plurality of cutting teeth generated by the object.
However, Chapin teaches that it is known in the art of blades, both circular and straight blades, to provide a slit between teeth (see Chapin, Fig.4 , #14 and Figs. 1-2, #10/12). It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add slits to the blade of Nicolson as taught by Chapin. Doing so prevents damage or cracking of the blade during use(see Chapin, Col. 1, ll. 30-37).
However, JP H08229732 A teaches that it is known in the art to provide
a second plurality of cutting teeth axially offset from the first plurality of cutting teeth and defining a second plane (see JP H08229732 A, Fig. 4, #4 and Fig. 6, #4, teaching a plurality of cutting teeth after #4 and a second plurality of cutting teeth before #4), the second plurality of cutting teeth supported on a cantilever portion (see annotated Fig. 4, under Claim 1, above) and configured to deflect relative to the first plurality of cutting teeth, (when a force is placed on the cantilever portion is a direction coming in or out of the page of paper, the second set of teeth are configured to deflect relative to the first set of teeth) during which the first plane and the second plane are misaligned (the Examiner notes that in that configuration, a force placed on the cantilevered portion in the direction in / out of the paper, the second plurality of cutting teeth are axially offset from the first plurality of cutting teeth), wherein the cantilever portion has a base end and a free end (see JP H08229732 A, Fig. 4, #4 and Fig. 6, #4, the end of the cantilever near the aperture at the cutting edge is the free end and the opposite is the base end);
an aperture formed in the body and separating the cantilever portion from a remainder of the body(see JP H08229732 A, Fig. 4, #4 and Fig. 6, #4), the second plurality of cutting teeth being supported on the cantilever portion and the first plurality of cutting teeth being supported on the remainder of the body (see JP H08229732 A, Fig. 4, #4 and Fig. 6, #4), wherein the cantilever portion is configured to absorb a shock to the second plurality of cutting teeth generated by the object (when a force is placed on the cantilever portion is a direction coming in or out of the page of paper, the second set of teeth are configured to deflect relative to the first set of teeth).
In the same field of invention, cutting blades, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add the groove #4 of JP H08229732 A to the blade of Nicolson. Doing so prevents distortion of the blade during the cutting hear generated by the cut (see JP H08229732 A, Abstract).
The combination of the aperture of JP H08229732 A and Nicolson would provide for wherein the base end is closer than the free end to the attachment portion (see JP H08229732 A, Fig. 4 and Fig. 6, #4, in view of Nicolson Figs. 7 and 9).
Applicant’s disclosure states that “the cantilever portions 178 are configured to deform at least partially into the void formed by the apertures 130 to absorb a shock to the cutting teeth 126 generated by the nail.” See Para. 0053. In other words, the structure of Claim 19 that performs the function, or intended use recitation, is a void formed by a slot to absorb shock to the cutting teeth.
Ellison evidences that bending and twisting commonly occurs during cutting applications (see Ellison, Para. 0005). Additionally, Males evidences that a reciprocating saw bends during use (see Males, Para. 0007-0008).
During use reciprocating saw blades bend. Modified Nicolson, in re Claim 1, teaches the structure that Applicant claims performs the function and Ellison and Males evidences that during use a force capable of bending the blade routinely occurs. As such, modified Nicolson reads on a cantilevered portion partially separated from the body and elastically deflectable relative to the body in response to contact with an object, the cantilevered portion having at least two of the plurality of cutting teeth of the linear cutting portion and configured to absorb a shock to the at least two cutting teeth generated by the object.
In re Claim 20, modified Nicolson, in re Claim 19, teaches wherein each cutting tooth of the first plurality of cutting teeth and the second plurality of cutting teeth includes a carbide insert forming tip (see Nicolson Fig. 1, #1).
Claims 2-4 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0207398 to Nicolson in view of US 1,723,843 to Chapin and JP H08229732 A with evidence from US 2012/0000338 to Elliston and US 20070056427 to Males, and further in view of US 2017/0120357 to Trautner.
In re Claim 2, modified Nicolson, in re Claim 1, does not teach wherein the cutting blade is a reciprocating saw blade. However, Trautner teaches wherein the cutting blade is a reciprocating saw blade (see Trautner, Para. 0002, 0033, and 0051).
In the same field of invention, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to make a reciprocating saw blade from the saw blade of modified Nicolson. Doing so allows the user to utilize the blade in a known saw type.
In re Claim 3, modified Nicolson, in re Claim 1, does not teach the cutting blade is an oscillating multi tool saw blade. However, Trautner teaches wherein the cutting blade is an oscillating multi tool saw blade (see Trautner, Para. 0051).
In the same field of invention, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to make a reciprocating saw blade from the saw blade of modified Nicolson. Doing so allows the user to utilize the blade in a known saw type.
In re Claim 4, modified Nicolson, in re Claim 1, does not teach the cutting blade is a jigsaw blade. However, Trautner teaches wherein the cutting blade is a jigsaw blade (see Trautner, Para. 0051).
In the same field of invention, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to make a reciprocating saw blade from the saw blade of modified Nicolson. Doing so allows the user to utilize the blade in a known saw type.
In re Claim 16, modified Nicolson, in re Claim 10 teaches wherein each cutting tooth includes a tip (see Nicolson, Fig. 7, #1 includes a tip), a rake face extending from the tip at a rake angle (see Nicolson, Fig. 7, #1 includes a rack face at a rake angle), and wherein the at least two of the plurality of cutting teeth supported by the cantilever portion are deflectable away from the cutting edge at the rake angle. Modified Nicholson does not teach a rake face extending from the tip at a rake angle, a heel face opposite the rake face, and a relief surface extending between the tip and the heel face.
However, Trautner teaches a cutting tooth includes a tip (see Trautner, Fig. 2, #34), a rake face extending from the tip at a rake angle (see Trautner, Fig. 2, #38), a heel face opposite the rake face (see Trautner, Fig. 2, #86/82), and a relief surface extending between the tip and the heel face (see Trautner, Fig. 2, #42).
In the same field of invention, saw blades, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to utilize the saw type of Trautner in the blade of modified Nicolson. Doing so is the substation of one known cutting tip type for another known cutting tip type to achieve the result of cutting the workpiece (see MPEP 2143, I, B). Such a geometry prevents breaking or damage when cutting hard materials (see Trautner, Para. 0033).
In re Claim 17, modified Nicolson, in re Claim 16, teaches wherein at least some of the cutting teeth include a carbide insert that forms the tip (see Trautner, Para. 0002 and 0025).
In re Claim 18, modified Nicolson, in re Claim 16, teaches wherein adjacent cutting teeth are separated by a gullet (see Trautner, Fig. 1-2, #78), and wherein the first end of the aperture is open to the gullet between the adjacent cutting teeth (see JP H08229732 A, Fig. 4 and Fig. 6, #4, in view of Nicolson Figs. 7 and 9).
Claim 3 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0207398 to Nicolson in view of US 1,723,843 to Chapin and JP H08229732 A with evidence from US 2012/0000338 to Elliston and US 20070056427 to Males, and further in view of US 2014/0230626 to Puzio.
In re Claim 3, if it is argued that modified Nicolson does not teach wherein the cutting blade is an oscillating multi tool saw blade, claim 3 is further rejected in view of Puzio. Puzio teaches that it is known in the saw art to provide saw teeth on oscillating saws. It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to make an oscillated blade as taught by Puzio, with the saw blade construction of modified Nicolson. Doing so allows the user to cut workpieces when he or she has an oscillating tool as opposed to a reciprocating saw or a jig saw.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that during use, the body of the blade is elastically deflectable relative to the body in response to contact with an object and configured to absorb a shock to the at least two cutting teeth generated by the object.
Applicant argues that because the slots in JP H08229732 A are for cooling, they cannot be deflected. The Examiner disagrees. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Additionally, as discussed above, US 2012/0000338 to Elliston and US 20070056427 to Males provide evidence that during use bending and deflection naturally occur in a reciprocating blade. Applicant’s specification states that “the cantilever portions 178 are configured to deform at least partially into the void formed by the apertures 130 to absorb a shock to the cutting teeth 126 generated by the nail.” See Para. 0053. In other words, the structure of Claim 19 that performs the function, or intended use recitation, is a void formed by a slot to absorb shock to the cutting teeth. In other words, it is this void formed by the cantilever that performs this function, in Applicant’s disclosure. This same void is found in JP H08229732 A. As such, modified Nicolson reads on the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN RILEY whose telephone number is (571)270-7786. The examiner can normally be reached Monday - Friday, 8:30 AM - 5:00 PM.
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.
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.
/JONATHAN G RILEY/Primary Examiner, Art Unit 3724
Prosecution Insights