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 .
DETAILED ACTION
Response to Arguments
The Amendment filed 17 February 2026 has been entered. Claims 1-20 are pending, of which claims 4-6, 8, 12, and 14-18 are withdrawn from consideration. Applicant's amendments have overcome each and every objection and rejection under 35 USC 112 previously set forth in the Non-Final Office Action mailed 20 November 2026, except for any objection(s) and/or rejection(s) under 35 USC 112 repeated below.
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. As illustrated in the present drawings, when the tube is interpreted as being separated into first and second portions as a result of a cutting operation, only one of the abutment members ‘304’ engages a first portion of the tube after a complete cutting operation as can be seen in Fig. 7. That is, in Fig. 7, one abutment member ‘304’ engages a left portion of the tube ‘120’ once the tube ‘120’ is cut along the cutting plane ‘292’, while another abutment member ‘304’ engages a right portion of the tube ‘120’. Therefore, to the extent that claim 13 requires that more than one abutment member engages a first portion of the tube after the complete cutting operation (this issue is discussed in more detail below in the Claim Rejections - 35 USC § 112 section), the feature of multiple abutment members engaging the same portion of the tube after the complete cutting operation as required by claim 13 must be shown or the feature(s) canceled from the claim(s). As can be seen in present Fig. 7, once the tubing is cut along the cutting plane “292” (noting that claim 13 requires holding “after a complete cutting operation”), only one of the abutment members is able to hold the cut tubing as shown in the annotated Fig. 7 below. No new matter should be entered.
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The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. As illustrated in the present drawings, an abutment member ‘304’ of a first spring ‘282’ may hold a tubing ‘120’ after a complete cut (see Fig. 7), but both of the shoulders ‘308’ and ‘312’ are unable to also hold the tubing ‘120’ after the complete cut. Indeed, since claim 19 recites that holding occurs “a tubing after a complete cut”, the tubing that is held is appears to be located on only a single side of a cutting plane “292” defined by the cutting blade. Since the entire tubing after a complete cut appears to be on a single side of cutting plane “282”, both shoulders are not able to hold a tubing after a complete cut. Furthermore, to the extent that claim 19 is only satisfied for a tubing having a non-constant diameter, no such tubing is illustrated in the present drawings. Therefore, to the extent that claim 19 requires that all of the abutment member of the first spring and both shoulders hold the tubing after the complete cut (this issue is discussed in more detail below in the Claim Rejections - 35 USC § 112 section), the feature of “wherein the abutment member of the first spring and the shoulders of the cutting blade are configured to hold a tubing after a complete cut” as required by claim 19 must be shown or the feature(s) canceled from the claim(s). As illustrated in Fig. 7, only the abutment member “304” holds the tubing. Neither shoulder “308” or “312” holds the tubing, and the shoulders “308” and “312” are spaced radially outward from the abutment member “304” such that the shoulders “308” and “312” are unable to hold a tubing having a constant diameter (which is the only type of tubing illustrated); see the annotated Fig. 7 below. No new matter should be entered.
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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
Claims 13 recites, “abutment members configured to engage a first portion of a tube after a complete cutting operation”. Claim 19 recites, “an abutment member”, where the abutment member and the shoulders of the cutting blade are “configured to hold a tubing after a complete cut”. Claim 20 also recites, “an abutment member” that is “configured to hold the tubing after a complete cut”. These recitations are not interpreted under 35 USC 112(f) despite including “member”, which is a generic placeholder for means, because each recitation includes the structural term “abutment”. Per merriam-webster.com, the definition of an ‘abutment’ includes the part of a structure (such as an arch or a bridge) that directly receives thrust or pressure . The term “abutment” thus provides sufficient structure for performing the recited functions, since an abutment is a structure that is able to directly receive thrust or pressure. A structure that receives thrust or pressure is able to engage a tube portion and hold a tube portion.
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.
Claim(s) 1-3, 13, and 19-20 is/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 13 recites, “wherein the carriage includes abutment members configured to engage a first portion of a tube after a complete cutting operation”. This recitation is indefinite in view of the present specification because it is unclear how to interpret the recitation in a manner that is consistent with the present specification – e.g., it is unclear how to interpret the recitation in a manner that does not raise an issue under 35 USC 112(a). The only structures referred to as “abutment members” in the present specification are members ‘304’. As can be seen in Fig. 7 of the present drawings, the disclosed abutment members ‘304’ are positioned on opposing side of a cutting plane ‘292’ along which a cutting wheel ‘198’ cuts a tube ‘120’. After a complete cutting operation, the tube is separated into two portions along the cutting plane ‘292’, such that a first portion of the tube is to the left of the cutting plane ‘292’ relative to Fig. 7 and a second portion of the tube is to the right of the cutting plane ‘292’ relative to Fig. 7. Due to the abutment members ‘304’ being positioned on opposing sides of the cutting plane ‘292’, only one of the abutment members ‘304’ engages a portion of the tube after a complete cutting operation as disclosed in the present specification. Yet claim 13 requires that plural abutment members engage a portion of the tube after a complete cutting operation. Thus, the requirements of claim 13 appear inconsistent with the disclosure of the present specification. Claim 13 is indefinite because it is unclear how to interpret the claim in a manner that is consistent with the present specification. Does claim 13 permit “a first portion” of the tube to include two sections of the tube that are separated from each other during a cutting operation? Or, does claim 13 permit the recited “abutment members” to encompass structures that are not explicitly referred to as ‘abutment members’ in the present specification, such as rollers ‘210’ and ‘214’? Or, does claim 13 include a typographical error, where the claim is intended to refer to one of the abutment members? Since it is unclear how to interpret claim 13 in a manner that is consistent with the present disclosure, claim 13 is indefinite. For examination purposes, the examiner considers the claim to be satisfied by any of the potential interpretations set forth in this paragraph.
Claim 19 recites, “wherein the abutment member of the first spring and the shoulders of the cutting blade are configured to hold a tubing after a complete cut.” This recitation is indefinite in view of the present specification because it is unclear how to interpret the recitation in a manner that is consistent with the present specification – e.g., it is unclear how to interpret the recitation in a manner that does not raise an issue under 35 USC 112(a). The present specification discloses an abutment member ‘304’ of a first spring ‘282’, as well as shoulders ‘308’ and ‘312’ of a cutting blade ‘198’. As can be seen in Fig. 7 of the present drawings, when the abutment member ‘304’ is positioned in contact with a tube ‘120’, the shoulders ‘308’ and ‘312’ are spaced from the tube ‘120’ such that the shoulders ‘308’ and ‘312’ are unable to hold the tube ‘120’. Further, while the cutting blade ‘198’ and its shoulders ‘308’ and ‘312’ are movable toward and away from the tube ‘120’ as can be understood in view of Fig. 10 (noting the presence of slots in body ‘206’ within which the cutting blade ‘198’ moves), the abutment members ‘304’ move along with the cutting blade ‘198’. As such, the relative positions of the abutment members ‘304’ and the shoulders ‘308’ and ‘312’ do not change even as the blade ‘198’ travels toward or away from the tube ‘120’ – the abutment members ‘304’ are always radially inward of the shoulders ‘308’ and ‘312’ with respect to the tube ‘120’. As such, claim 19 is indefinite because it is unclear how to interpret the requirement that the abutment member of the first spring and the shoulders are configured to hold the tubing after a complete cut. Should claim 19 be interpreted as requiring that the tubing is contacted and held by each of the abutment member, a first one of the shoulders, and a second one of the shoulders? If so, the features of claim 19 are not illustrated in the present drawings. Alternatively, should claim 19 be interpreted as requiring that at least one of the abutment member, a first one of the shoulders, and a second one of the shoulders holds the tubing? In this interpretation, the abutment member and shoulders are required to collectively hold the tube, even if all of the abutment member and the shoulders does not hold the tubing. In yet another interpretation, can claim 19 be considered as being satisfied only when the tubing has a non-constant diameter, such that the tubing has a greater diameter in a region held by the shoulders than in another region held by the abutment member? The problem with this interpretation is that there is nothing in the specification as originally filed to suggest this intent. For example, the drawings only illustrate a tubing having a constant diameter. Since it is unclear how to interpret claim 19 in a manner consistent with the present disclosure, claim 19 is indefinite. For examination purposes, the examiner interprets the claim as being satisfied even if only one of the abutment member of the first spring or one of the shoulders holds the tube, since such an interpretation appears consistent with the present disclosure (e.g., with Fig. 7). Alternatively, the examiner interprets the claim as being satisfied if the tubing has plurality of different diameters. Claims 1-3 and 20 depend from claim 19, and are therefore indefinite due to incorporating features of claim 19.
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.
Claim(s) 19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pub. No. 2010/0088898 A1 to Thorson et al.
Regarding claim 19, Thorson, in an embodiment illustrated in Fig. 1, discloses a powered tubing cutter (see Fig. 1 and the Title, where a pipe is a type of tubing) comprising:
a housing 105 including a head portion 110 and a handle portion 115 (see Fig. 1), the handle portion 115 extending from the head portion 110 (see Fig. 1);
a first carriage 175 rotatably supported by the head portion 110 (see Figs. 3 and 4; see also various rotationally spaced position of the carriage 175 in Figs. 5A-5D), the first carriage 175 including a first spring 225 (see Fig. 7A), the first spring 225 including an abutment member 310 (see Fig. 7A);
a second carriage 180 rotatably supported by the head portion 110 (see Figs. 3 and 4; see also various rotationally spaced position of the carriage 180 in Figs. 5A-5D); and
a cutting blade 170 supported by the first spring 225 (see Figs. 7A and 9A; see also paragraph 74), the cutting blade 170 including shoulders (see the annotated Fig. 10 below),
wherein the abutment member 310 of the first spring 225 and the shoulders of the cutting blade 170 are configured to hold a tubing after a complete cut (initially, this recitation is indefinite as discussed in the Claim Rejections - 35 USC § 112 section above, and for examination purposes this recitation encompasses one of the abutment member and the shoulders being configured to hold the tubing after a complete cut; as can be understood in view of Fig. 7B of Thorson, the abutment member 310 is configured to a hold a tubing after a complete cut by restricting the tubing from moving leftward relative to Fig. 7B out of the cutting area 185; note that ‘after a complete cut’ encompasses any time after a complete cut, including during removal of the tubing from the cutting area; see the Response to Arguments section below for additional discussion of this feature).
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Regarding claim 20, Thorson discloses a cutting plane defined by the cutting blade 170 (see Figs. 9A and 10, where the cutting plane is a plane in which lies an outer circumference of the cutting blade 170); and a second spring 226 on the first carriage 175 disposed on an opposite side of the cutting plane (see Fig. 9A; the second spring 226 is on an opposite side of the cutting plane from the first spring 225, although the claim encompasses the second spring being on the opposite side of the cutting plane relative to any structure because no particular structure relative to which the second spring is opposite is recited), the second spring 226 including an abutment member 310 (the abutment member of the second spring 226 is visible but not labeled with a reference character in Fig. 4), wherein the abutment member 310 of the second spring 226 is configured to hold the tubing after a complete cut (as can be understood in view of Figs. 4 and 7B of Thorson, the abutment member 310 of the second spring 226 is configured to a hold a tubing after a complete cut by restricting the tubing from moving leftward relative to Fig. 7B out of the cutting area 185; note that ‘after a complete cut’ encompasses any time after a complete cut, including during removal of the tubing from the cutting area).
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(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2010/0088898 A1 to Thorson et al. in view of US Pub. No. 2024/0208088 A1 to Suto et al. and JP H07266122 A to Kiyoshi, as evidenced by US Pub. No. 2019/0224823 A1 to Ruch et al., and with claim 3 optionally further rejected under 35 U.S.C. 103 as being unpatentable further in view of US Pub. No. 2013/0340257 A1 to Nasiell.
Regarding claim 1, Thorson discloses a motor 130 for providing torque to the first and second carriages 175 and 180 to cause the carriages 175 and 180 to rotate (via the drive assembly 140; see Figs. 2A and paragraph 59), wherein the first and second carriages 175 and 180 define a first rotational axis about which the first and second carriages are rotatable (an axis extending into and out of the page relative to Fig. 2A), and wherein the motor 130 defines a second rotational axis (see Fig. 3 and paragraph 40).
Regarding claim 2, Thorson discloses a gear train 140 located between the motor 130 and the first and second carriages 175 and 180 (see Fig. 2A), wherein the gear train 140 is configured to transfer torque from the motor 130 to the carriages 175 and 180 to cause the carriages 175 and 180 to rotate (see Fig. 2A and paragraph 40).
Thorson fails to disclose that the motor is a brushless direct current motor and that the second rotational axis of the motor is parallel to the first rotational axis as required by claim 1. Thorson also fails to disclose that the motor is located within the head portion of the housing as required by claim 3.
First, Suto teaches a powered cutter 10 that is able to cut tubing (see Fig. 5; the cutter 10 is able to cut tubing that is sized to be received between blades 111), where the powered cutter 10 comprises a brushless direct current motor 400 to drive a cutting action (see paragraph 41). [Claim 1] Providing a motor in the form of a brushless motor is known to be advantageous in the art of powered hand-held tools because brushless motors are very low maintenance and are wear-free (see Ruch at paragraph 30).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the present invention to configure the motor of Thorson as a brushless direct current motor as taught by Suto. This modification is advantageous to reduce the amount of maintenance required, in view of brushless motors being very low maintenance and wear-free.
Second, Kiyoshi, in general, teaches a powered tubing cutter (see Fig. 1 and the Title, where a pipe is a type of tubing) comprising a housing (including handle 1 and frame 3), where the housing includes a handle portion 1 and a head portion 3. Kiyoshi further teaches a carriage 14 rotatably supported by the housing (in particular, by the head portion 3 of the housing; see Figs. 1 and 4 and the paragraph beginning ‘As shown in FIGS. 1 to 4, a disk-shaped head 14 is rotatably provided on a frame 3 …’ at paragraph 4 of the English translation of Kiyoshi). Turning to claimed features, Kiyoshi teaches a first rotational axis about which the carriage 14 is rotatable (the first rotational axis extending in a left-right direction along the plane of the page relative to Fig. 4; the first rotational axis is also illustrated in annotated Fig. 1 provided below), and Kiyoshi further teaches a motor 5 defining a second rotational axis that is parallel to the first rotational axis (see Fig. 4, where the second rotational axis extends in a left-right direction along the plane of the page through the output shaft 10 of the motor 5; see also the second rotational axis in annotated Fig. 1 provided below, where the second rotational axis is defined by the output shaft 10 of the motor 5). [Claim 1] Kiyoshi further teaches that the motor 5 is located within the head portion 3 of the housing (see Fig. 4, where the output shaft 10 of the motor 5 is located within the head portion 3; the recitation that “the motor is located within the head portion” merely requires that some portion of the motor is located within the head portion of the housing, such that the recitation does not does not require that an entirety of the motor is within the head portion of the housing). [Claim 3]
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It would have been obvious to one of ordinary skill in the art to re-position the motor of Thorson by moving the motor from a position within the handle portion of the housing, where the second rotational axis of the motor is non-parallel to the first rotational axis of the first and second carriages, as disclosed by Thorson in Fig. 1 to a position within the head portion of the housing, where the second rotational axis of the motor is parallel to the first rotational axis of the first and second carriages, in view of the teachings of Kiyoshi. This modification is advantageous because it allows the powered tubing cutter to have a more compact length, which in turn is advantageous to fit the powered tubing cutter into certain tight spaces as well as for storage purposes. To elaborate, the location of the motor at the head portion of the housing as taught by Kiyoshi provides a tool with a more compact length compared to the location of the motor in Thorson in the embodiment of Fig. 1, where the motor is positioned within the handle portion. In Thorson in Fig. 1, the length of the handle is extended beyond switch assembly 125 to accommodate the motor. However, by moving the motor to the head portion, the length of the handle portion in Fig. 2A of Thorson can be reduced by eliminating the space for the motor between the switch assembly and the head portion. As such, this modification is advantageous to provide the powered tubing cutter with a more compact length, thus allowing the cutter to fit more easily into tight spaces and be contained for storage. As further evidence of the obviousness of this modification, Thorson at Fig. 14 contemplates an alternative embodiment where the motor is positioned in a similar manner as taught by Kiyoshi, such that Thorson teaches that the two motor locations of Figs. 1 and 14 are equivalents. Moreover, this modification is obvious because it is merely a rearrangement of parts, and similar to In re Japikse (181 F.2d 1019, 86 USPQ 70 (CCPA 1950), shifting the position of the motor from the handle portion to the head portion does not modify the operation of the powered tubing cutting.
Optionally, to the extent that Thorson, as modified, is determined to fail to disclose that the motor is “within the head portion of the housing” as required by claim 3, despite Thorson, as modified, including a portion of the motor being within the head portion of the housing, Nasiell teaches a powered tubing cutter where an entirety of a motor 511 is positioned within a head portion of a housing (see Fig. 12 and paragraph 83, where the head portion of the housing extends upward from base plate 515). As can be seen in Fig. 12 of Nasiell, positioning the entirety of the motor within the head portion of the housing is advantageous to afford protection for the motor from external elements, such as dust, debris, and water, as well as to protect an operator from contact with the motor (which may generate heat during operation).
Therefore, it would have been obvious to one of ordinary skill in the art to enclose the entirety of the motor of Thorson, as modified, within the head portion of the housing in view of the teachings of Nasiell. This modification is advantageous to improve protection for the motor, including protecting the motor from external elements such as dust, debris, or water. Moreover, this modification is further advantageous to protect a human operator from inadvertent contact with the motor, which may become hot during use.
Claim(s) 7 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP H07266122 A to Kiyoshi in view of US Pub. No. 2024/0208088 A1 to Suto et al. and US Pub. No. 2013/0340257 A1 to Nasiell, as evidenced by US Pub. No. 2019/0224823 A1 to Ruch et al.
Regarding claim 7, Kiyoshi discloses a powered tubing cutter (see Fig. 1 and the Title, where a pipe is a type of tubing) comprising:
a housing (including handle 1 and frame 3) including a head portion 3 and a handle portion 1, the handle portion 1 extending from the head portion (see Fig. 1);
a carriage 14 rotatably supported by the head portion 3 (see Figs. 1 and 4 and the paragraph beginning ‘As shown in FIGS. 1 to 4, a disk-shaped head 14 is rotatably provided on a frame 3 …’ at paragraph 4 of the English translation of Kiyoshi) and having a cutting blade 19 thereon [i.e., on the carriage 14] (see Fig. 4); and
a direct current motor 5 (note that the motor 5 includes output shaft 10; see the paragraph beginning ‘As shown in FIGS. 1 to 4, a disk-shaped head 14 is rotatably provided on a frame 3 …’ at paragraph 4 of the English translation of Kiyoshi) for providing torque to the carriage 14 to cause the carriage 14 to rotate (see Fig. 1, where the motor 5 provides torque to the carriage 14 via gears 11, 12, and 13, and the paragraph reading ‘The DC motor 5 with reducer 4 provided on the frame’ at paragraph 4 of the English translation of Kiyoshi), wherein a portion of the motor 5 is positioned within the head portion 3 of the housing (see Fig. 4, where the output shaft 10 of the motor 5 is located within the head portion 3).
Regarding claim 9, Kiyoshi discloses a gear train located between the motor 5 and the carriage 14 (see Figs. 1 and 4, where the gear train includes gears 12), wherein the gear train is configured to transfer torque from the motor 5 to the carriage 14 to cause the carriage to rotate (see Figs. 1 and 4), and wherein the gear train is positioned within the head portion 3 of the housing (see Figs. 1 and 4).
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Regarding claim 10, Kiyoshi discloses that the carriage 14 is rotatable about a first rotational axis (the first rotational axis extending in a left-right direction along the plane of the page relative to Fig. 4; the first rotational axis is also illustrated in annotated Fig. 1 provided above), wherein the motor 5 defines a second rotational axis that is parallel to the first rotational axis (see Fig. 4, where the second rotational axis extends in a left-right direction along the plane of the page through the output shaft 10 of the motor 5; see also the second rotational axis in annotated Fig. 1 provided above, where the second rotational axis is defined by the output shaft 10 of the motor 5), and wherein the first and second rotational axes extend transversely through the head portion 3 of the housing (see Fig. 1).
Regarding claim 11, Kiyoshi discloses that the handle portion 1 is oriented perpendicular to the second rotational axis (see Fig. 1, where the longest direction of extent of the handle portion is radial, or parallel to radial, with respect to the second rotational axis, such that the handle portion 1 is perpendicular to the second rotational axis).
Kiyoshi, however, fails to disclose that the direct current motor is a brushless direct current motor and that an entirety of the motor is positioned within the head portion as required by claim 7.
First, Suto teaches a powered cutter 10 that is able to cut tubing (see Fig. 5; the cutter 10 is able to cut tubing that is sized to be received between blades 111), where the powered cutter 10 comprises a brushless direct current motor 400 to drive a cutting action (see paragraph 41). Providing a motor in the form of a brushless motor is known to be advantageous in the art of powered hand-held tools because brushless motors are very low maintenance and are wear-free (see Ruch at paragraph 30).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the present invention to configure the direct current motor of Kiyoshi as a brushless direct current motor as taught by Suto. This modification is advantageous to reduce the amount of maintenance required, in view of brushless motors being very low maintenance and wear-free.
Second, Nasiell teaches a powered tubing cutter where an entirety of a motor 511 is positioned within a head portion of a housing (see Fig. 12 and paragraph 83, where the head portion of the housing extends upward from base plate 515). As can be seen in Fig. 12 of Nasiell, positioning the entirety of the motor within the head portion of the housing is advantageous to afford protection for the motor from external elements, such as dust, debris, and water, as well as to protect an operator from contact with the motor (which may generate heat during operation).
Therefore, it would have been obvious to one of ordinary skill in the art to enclose the entirety of the motor of Kiyoshi within the head portion of the housing in view of the teachings of Nasiell. This modification is advantageous to improve protection for the motor, including protecting the motor from external elements such as dust, debris, or water. Moreover, this modification is further advantageous to protect a human operator from inadvertent contact with the motor, which may become hot during use.
Claim(s) 7 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2010/0088898 A1 to Thorson et al. in view of US Pub. No. 2024/0208088 A1 to Suto et al. and US Pub. No. 2013/0340257 A1 to Nasiell, as evidenced by US Pub. No. 2019/0224823 A1 to Ruch et al.
Regarding claim 7, Thorson, in an embodiment illustrated in Fig. 1, discloses a powered tubing cutter (see Fig. 1 and the Title, where a pipe is a type of tubing) comprising:
a housing 105 including a head portion 110 and a handle portion 115, the handle portion 115 extending from the head portion 110 (see Fig. 1);
a carriage 175 rotatably supported by the head portion 110 (see Figs. 3 and 4; see also various rotationally spaced position of the carriage 175 in Figs. 5A-5D) and having a cutting blade 170 thereon [i.e., on the carriage 175] (see Fig. 4); and
a motor 130 for providing torque to the carriage 175 to cause the carriage 175 to rotate (see Fig. 2A and paragraph 40, where the cutting head assembly 145 includes the carriage 175 as seen in Fig. 5A).
Regarding claim 13, Thorson discloses that the carriage 175 includes abutment members 310 configured to engage a first portion of a tube 302 after a complete cutting operation (see Figs. 7A and 7B – the abutment members 310 engage cut portions of the tube 302 after cutting when the portions of the cut portions of the tube 302 are pulled out of the cutting area 185 in a direction from the position of the tube 302 in Fig. 7C toward the position of the tube 302 in Fig. 7A; the recitation “after a complete cutting operation” includes all times after a complete cutting operation, inclusive of during a removal operation of the tube following the cutting operation).
Thorson fails to disclose that the motor is a brushless direct current motor and, at least in the embodiment of Fig. 1, that an entirety of the motor is positioned within the head portion of the housing, both as required by claim 7.
First, regarding the motor being a brushless direct current motor, Suto teaches a powered cutter 10 that is able to cut tubing (see Fig. 5; the cutter 10 is able to cut tubing that is sized to be received between blades 111), where the powered cutter 10 comprises a brushless direct current motor 400 to drive a cutting action (see paragraph 41). Providing a motor in the form of a brushless motor is known to be advantageous in the art of powered tools because brushless motors are very low maintenance and are wear-free (see Ruch at paragraph 30).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the present invention to configure the motor of Thorson as a brushless direct current motor as taught by Suto. This modification is advantageous to reduce the amount of maintenance required, in view of brushless motors being very low maintenance and wear-free.
Second, regarding the location of the motor, Thorson in another embodiment as shown in Fig. 14 discloses a motor 530 that is positioned at a head portion 515 of a housing 510 (see Fig. 14). The location of the motor at the head portion of the housing in the embodiment of Fig. 14 of Thorson provides a tool with a more compact length compared to the embodiment of Fig. 1, where the motor is positioned within the handle portion. That is, considering the embodiment of Fig. 1, the motor being positioned within the handle portion results in an elongated handle portion (see Fig. 2A), increasing the length of the tool compared to the embodiment of Fig. 14.
Therefore, since Thorson teaches that a motor can be provided at either of the head portion and the handle portion, it would have been obvious to one of ordinary skill in the art to modify the tubing cutter of the embodiment of Fig. 1 of Thorson to include the motor being positioned at the head portion of the housing instead of within the handle portion of the housing in view of the embodiment of Fig. 14 of Thorson. This modification is advantageous because providing the motor at the head portion allows for a more compact length for the tubing cutter, which in turn is advantageous to fit the powered tubing cutter into certain tight spaces as well as for storage purposes. Moreover, this modification is obvious because it is merely a rearrangement of parts, and similar to In re Japikse (181 F.2d 1019, 86 USPQ 70 (CCPA 1950), shifting the position of the motor from the handle portion to the head portion does not modify the operation of the powered tubing cutting.
Still, Thorson in the embodiment of Fig. 14 does not explicitly disclose that the motor in the embodiment of Fig. 14 of Thorson is positioned within the head portion of the housing (in one interpretation of Fig. 14 of Thorson, the motor instead projects out of the head portion of the housing). Therefore, for purposes of this rejection, Thorson, as modified above as applied to claim 7, is considered as failing to disclose that an entirety of the motor is positioned within the head portion of the housing, both as required by claim 7.
Nasiell teaches a powered tubing cutter where an entirety of a motor 511 is positioned within a head portion of a housing (see Fig. 12 and paragraph 83, where the head portion of the housing extends upward from base plate 515). As can be seen in Fig. 12 of Nasiell, positioning the entirety of the motor within the head portion of the housing is advantageous to afford protection for the motor from external elements, such as dust, debris, and water, as well as to protect an operator from contact with the motor (which may generate heat during operation).
Therefore, it would have been obvious to one of ordinary skill in the art to enclose the entirety of the motor of Thorson, as modified, within the head portion of the housing in view of the teachings of Nasiell. This modification is advantageous to improve protection for the motor, including protecting the motor from external elements such as dust, debris, or water. Moreover, this modification is further advantageous to protect a human operator from inadvertent contact with the motor, which may become hot during use.
Response to Arguments
Prior to addressing the Applicant’s arguments, the examiner indicates his willingness to discuss this application in an interview with Applicant’s representative. The examiner believes the Applicant may be able to more thoroughly explain the Applicant’s position regarding Fig. 7 of the present drawings illustrating features of claims 13 and 19, which may aid in interpreting claims 13 and 19 in a manner intended by the Applicant.
Applicant's arguments filed 17 February 2025 have been fully considered but they are not persuasive.
Regarding objections to the drawings for failing to illustrate claimed features and also regarding rejections under 35 USC 112, the Applicant merely asserts that paragraphs 33 and Fig. 7 of the present application clearly describe that the abutment members and the shoulders hold the tubing upon a complete cut. The Applicant’s argument is not persuasive. First, the written description at paragraph 33 is not a drawing, and therefore cannot be relied upon to illustrate claimed features (although paragraph 33 may provide written descriptive support under 35 USC 112(a). Second, Fig. 7 does not illustrate the shoulders contacting the workpiece. Instead, as indicated in the annotated Fig. 7 provided below in this Response to Arguments section, the shoulders are illustrated as being spaced from the tubing and thus incapable of contacting the tubing. The Applicant’s argument further demonstrates the indefiniteness of features of claims 13 and 19. Does Fig. 7 simply fail to illustrate the claimed invention, and claims 13 and 19 must be interpreted to read on a different version of the tubing cutter than that illustrated? Or, should features of claims 13 and 19 be interpreted in some manner that is consistent with Fig. 7? The claims are indefinite in large part because, when interpreted in view of Fig. 7, it is unclear what is required of the abutment members to be able to engage a portion of a tube after a complete cutting operation as required by claim 13 (in Fig. 7, only one abutment member can engage a portion of the tubing once the tubing is cut because the portion of the tubing is limited to extending to the cut line ‘292’) and because it is unclear what is required for the abutment member and the should to be configured to hold the tubing after a complete cut as required by claim 19 (in Fig. 7, the shoulders are always radially outward of the abutment members, so the shoulders do not participate in the holding of the tube). The Applicant’s arguments fail to address these aspects of the objections and rejections, and are therefore unpersuasive.
Next, Applicant’s arguments with respect to the rejections of claim 7 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. In particular, the rejections of claim 7 under 35 USC 103 set forth herein rely on US Pub. No. 2013/0340257 A1 to Nasiell for teaching an entirety of a motor positioned with a head portion of a housing.
Finally, Applicant’s arguments with to the rejection of claim 19 under 35 USC 102 have been considered but are not persuasive. The Applicant relies on a declaration to assert that the shoulders of the cutting wheel of Thorson are incapable of holding the tubing after the cut. However, the declaration under 37 CFR 1.132 filed 17 December 2026 is insufficient to overcome the rejection of claims 19 and 20 under 35 USC 102 as set forth in the last Office action. In particular, paragraph 6 of the declaration asserts “as shown in FIG. 13 of Thorson below, the alleged shoulders of the cutting wheel 170 do not extend past other components of the upper carriage 175 and therefore cannot hold a tubing after a complete cut”. Thus, the declaration asserts that the shoulders of the cutting wheel 170 of Thorson are incapable of holding the tubing after a cut.
The argument set forth in the declaration is not persuasive for two reasons. The first reason that this argument is not persuasive is the argument assumes that the tubing has a constant diameter. However, the claim makes no requirement that the tubing has a constant diameter. The shoulders of the cutting blade of Thorson are configured to hold a tubing that has a non-constant diameter. The examiner provides an annotated figure below for explanatory purposes, where the figure includes a line indicating a potential profile of a top portion of a tubing having a non-constant diameter. For example, a tubing may have a non-constant diameter along a portion where two sections of tubing are welded together. Alternatively, a tubing may be constructed by connecting two tube sections with a connector, where the connector has a larger diameter than each of the two tube sections. The shoulders of Thorson are configured to engage a tubing having an enlarged diameter portion, where the enlarged diameter portion has a width less than a distance between the outer edges of the two shoulders.
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The second reason that the argument in the declaration is insufficient to overcome the rejections of claims 19 and 20 as being anticipated by Thorson is that the argument is contradictory to the Applicant’s own disclosure. The argument asserts that Thorson’s shoulders are incapable of holding a tubing after a cut because “the alleged shoulders of the cutting wheel 170 do not extend past other components of the upper carriage 175”. However, the shoulders of the cutting blade as disclosed in the present application also do not extend past other components of the carriage as can be seen in Fig. 7 of the present drawings. As shown in the annotated Fig. 7 of the present drawings below, the shoulders do not extend past the abutment members. If shoulders not extending past other components is fatal to the ability of the shoulders to hold a tubing after a cutting operation, then the Applicant’s shoulders are likewise incapable of holding a tubing after a cutting operation. The argument in the declaration takes a position that is contradicted by the Applicant’s own disclosure, such that the argument is not persuasive.
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Therefore, the declaration is insufficient to overcome the rejection of claim 19 under 35 USC 102, and the rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EVAN H MACFARLANE whose telephone number is (303)297-4242. The examiner can normally be reached Monday-Friday, 7:30AM to 4:00PM MT.
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/EVAN H MACFARLANE/Examiner, Art Unit 3724