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 accompanying the Request for Continued Examination filed 26 May 2026 has been entered. Claims 1-20 are pending. Prior to this action, claims 4-6, 8, 12, and 14-18 were withdrawn from consideration, with claims 4-6 being rejoined herein (see the Rejoinder section below). Applicant's amendments have overcome each and every objection and rejection under 35 USC 112 previously set forth in the Final Office Action mailed 6 March 2026.
Rejoinder
Claim 19 is allowable. Claims 4-6, previously withdrawn from consideration as a result of a restriction requirement, require all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement between with respect to claims 4-6 as set forth in the Office action mailed on 10 September 2025, is hereby withdrawn and claims 4-6 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01. All aspects of the restriction requirement as set forth in the Office action mailed on 10 September 2025 that have not been withdrawn remain in effect.
Drawings
The amendments to Fig. 7 as filed 26 May 2026 are objected to under 35 U.S.C. 132(a) because the amendments to Fig. 7 introduce new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: in Fig. 7 as amended 26 May 2026, the abutment members ‘304’ are illustrated as being located further from the tube ’120’ in a radial direction of the tube ‘120’ than the shoulders ‘308’ and ‘312’ (see the annotated Fig. 7 below, where the horizontal dashed line indicates a height of the abutment members ‘304’ and where the shoulders ‘308’ and ‘312’ extend below the dashed line, such that the shoulders ‘308’ and ‘312’ are radially nearer to the tube ‘120’ than the abutment members ‘304’). This relative arrangement of the abutment members and shoulders was not described in the present application as originally filed. As can be seen in Fig. 13 of the provisional application 63/518,002, the abutment members appear to be visible extending further radially inward than the shoulders of the blade relative to the tube. Thus, Fig. 7 as amended 26 May 2026 appears to illustrate a different geometry of the abutment members relative to the shoulders than that illustrated in the provisional application. Applicant is required to cancel the new matter in the reply to this Office Action. To resolve this rejection, the examiner suggests replacing Fig. 7 as filed 26 May 2026 with a black and white line drawing corresponding to Fig. 13 of the provisional application 63/518,002.
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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, “an abutment member 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 having a uniform outer diameter 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 Objections
The claims are objected to because of the following informalities:
Claim 20 at the final line recites, “a complete cut”. This cut is already introduced in claim 19 at the final line, such that claim 20 at the final line should read – the [[a]] complete cut –.
Appropriate correction is required.
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) 7 and 9-11 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 discloses a powered tubing cutter (see the embodiment of Figs. 14-21) comprising:
a housing 510 including a head portion 515 and a handle portion 520 (see Fig 14 and the annotated Fig. 15 below), the handle portion 520 extending from the head portion 515 (see Figs. 14-15);
a carriage 600 rotatably supported within the head portion 515 (see Figs. 14, 16, and 17 and paragraph 87) and having a cutting blade 605 thereon [i.e., on the carriage 600] (see Figs. 16 and 17); and
a motor 5301 for providing torque to the carriage 600 to cause the carriage 600 to rotate (see Fig. 15 and paragraphs 86-87 and 90), wherein a portion of the motor 530 is positioned within the head portion 515 of the housing 510 (see Figs. 14, 15, and 17 – e.g., an output shaft of the motor 530 is within the housing 510).
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Regarding claim 9, Thorson discloses a gear train (including gears 540, 545, and 550) located between the motor 530 and the carriage 600 (see Fig. 15), wherein the gear train is configured to transfer torque from the motor 530 to the carriage 600 to cause the carriage 600 to rotate (see paragraphs 86-87 and 90), and wherein the gear train is positioned within the head portion 515 of the housing 510 (see Fig. 15).
Regarding claim 10, Thorson discloses that the carriage 600 is rotatable about a first rotational axis (the first rotational axis extending into and out of the page relative to Fig. 15 – i.e., the first rotational axis is perpendicular to the plane of the head gear 555 in Fig. 15), wherein the motor 530 defines a second rotational axis that is parallel to the first rotational axis (see Figs. 14 and 15; the motor 530 has a second rotational axis that extends into and out of the page relative to Fig. 15, since the motor drives the pinion gear that meshes with drive gear 540), and wherein the first and second rotational axes extend transversely through the head portion 515 of the housing 510 (see Figs. 14 and 15).
Regarding claim 11, Thorson discloses that the handle portion 520 is oriented perpendicular to the second rotational axis (see Fig. 15 – the handle portion extends along the plane of the page whereas the second rotational axis extends into and out of the page).
Thorson, however, fails to disclose that the 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 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, 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 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) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thorson as modified by Suto and Nasiell as applied to claim 7 above, and further in view of view of US Pat. No. 5,515,609 to Sperti.
Thorson, as modified, (which relies on the embodiment of Figs. 14-21 of Thorson) fails to disclose that the carriage includes an abutment member configured to engage a first portion of a tube after a complete cutting operation as required by claim 13.
Sperti, though, teaches a tubing cutter (see the cutting of tubing T in Figs. 1-3) where a carriage 24 includes two abutment members 55 and 56 configured to engage first and second portions of a tube T after a complete cutting operation (see Fig. 7 and col. 6, lines 4-11). [Claim 13] Sperti teaches that the abutment members are advantageous to prevent the cut pieces of the tube from falling away from the tube cutter (see col. 6, lines 4-11).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the carriage of Thorson, as modified, with two abutment members that engage first and second portions of a tube after a complete cutting operation as taught by Sperti in order to prevent the pieces of tube from falling away from the tube cutter. This modification simplifies operation because a user need not operation the tubing cutter while holding both sides of the tubing during a cutting operation, since the abutment members will prevent the tubing portions from falling. This modification is further advantageous to enhance safety, since falling tubing portions are a risk (e.g., a user may have a tubing portion fall of his foot). This modification further enhances cut quality by aiding in maintaining the alignment of the tubing near the end of the cut (e.g., once only a very thin piece of tubing remains uncut, the tubing is regardless prevented from tilting under its own weight by the abutment members).
Allowable Subject Matter
Claim 19 and its dependent claims 1-6 and 20 are allowed (although claim 20 must be amended to overcome the objection set forth herein). The following is an examiner’s statement of reasons for allowance: Claim 19 requires, “the cutting blade including shoulders” and “wherein the abutment member of the first spring and the shoulders of the cutting blade are configured to hold a tubing having a uniform outer diameter after a complete cut”. As disclosed by US Pub. No. 2010/0088898 A1 to Thorson et al., in the embodiment including Fig. 10, a first spring 226 includes an abutment member (defining surface 305), and also a blade 170 includes shoulders. However, carriage body 200 extends further toward the tubing than the shoulders of the blade 170. As such, the shoulders of the blade 170 of Thorson, in the embodiment of Fig. 10, do not appear able to hold a tubing having a uniform outer diameter along with the abutment member. Thus, even though the abutment member of Thorson may hold the tubing, the shoulders of the blade 170 do not appear able to hold the blade. Since claim 19 requires both the should and the abutment member to hold the tubing having the uniform outer diameter, claim 19 distinguishes over Thorson.
Claim 19 also distinguishes over other relevant art. US Pat. No. 5,515,609 to Sperti teaches abutment members 55 and 56 that hold a tubing having a uniform outer diameter after a complete cut. However, the abutment members are defined by a blade-carrying carriage rather than by one or more springs, whereas claim 19 requires that a first spring includes the abutment member that holds the tubing along with the shoulders of the cutting blade. As such, claim 19 distinguishes over Sperti.
US Pat. No. 6,393,700 B1 to Babb discloses a tubing cutter (see Fig. 1) having a first spring 20 and a cutting blade 16. However, Babb fails to disclose that an abutment member of the first spring 20 and shoulders of the cutting blade 16 are configured to hold a tubing having a uniform outer diameter after a complete cut as required by claim 19. For example, in Fig. 5 of Babb, it is not apparent that an abutment member of the spring 20 and shoulders of the cutting blade 16 are able to hold the tubing T after a complete cut.
US Pub. No. 2006/0092674 A1 to Belton et al. discloses a tubing cutter (see Fig. 1) having a first spring 44a and a cutting blade 32. However, Belton fails to disclose that an abutment member of the first spring 44a and shoulders of the cutting blade 32 are configured to hold a tubing having a uniform outer diameter after a complete cut as required by claim 19. For example, in Figs. 5-6 of Belton, it is not apparent that an abutment member of the spring 44a and shoulders of the cutting blade 32 are able to hold a tubing after a complete cut.
US Pub. No. 2025/0065524 A1 to Yang et al. discloses a tubing cutter (see in particular Figs. 9 and 10) having a first spring 141 and a cutting blade 143. However, Yang fails to disclose that an abutment member of the first spring 141 and shoulders of the cutting blade 143 are configured to hold a tubing having a uniform outer diameter after a complete cut as required by claim 19. For example, in Figs. 9-10 of Yang, it is not apparent that an abutment member of the spring 141 and shoulders of the cutting blade 143 are able to hold a tubing after a complete cut.
US Pub. No. 2024/0278339 A1 to Kaye, Jr. et al. teaches at Fig. 30A teaches a relevant tube cutter. However, Kaye fails to disclose at least that a first spring includes an abutment member that is configured to hold a tube along with shoulders of a cutting blade as required by claim 19. For example, a spring of Kaye does not include blade carriage 824, since blade carriage 824 is a distinct structure from each of the springs 834 and 836. Thus, claim 19 is distinguishable over Kaye.
US Pat. No. 6,666,062 B2 to Dole et al. teaches members 38 and 28 that may engage a tubing after a complete cut. However, Dole fails to disclose at least a first spring that includes an abutment member, where the abutment member and the shoulders of the cutting blade are configured to hold a tube having a uniform outer diameter as required by claim 19.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 26 May 2026 have been fully considered but they are not entirely persuasive.
The Applicant asserts that the amendments to Fig. 7 have support in other figures of the drawings as originally filed. This argument is not persuasive because other figures as originally filed do not clearly illustrate the positional relationship between the abutment members and the shoulders. Moreover, the Applicant has previously taken the position that Fig. 7 requires no amendment to illustrate the features of claim 19 (see, e.g., the Remarks of 17 February 2026 at page 6). It is unclear how changes to Fig. 7 can be clear in view of the other figures, when the Applicant previously asserted that no changes were required to Fig. 7. Still, the examiner recommends replacing Fig. 7 of the present drawings with a black and white line drawing of Fig. 13 of the provisional application 63/518,002. Fig. 13 of the provision application, unlike Fig. 7 of the present drawings, illustrates the abutment members and shoulders engaging the tube. Thus, rather than amend Fig.7 – especially since the Applicant has previously asserted that no amendment to Fig. 7 is required – the examiner instead recommends replacing Fig. 7 with Fig. 13 from the provisional application 63/518,002 (in black and white form, as required by 37 CFR 1.84).
Next, Applicant’s arguments with respect to the rejection of claim 7 under 35 USC 103 as set forth in the Final Office Action mailed 6 March 2026 have been considered but are not persuasive. Thorson is relied on for teaching a carriage rotatably supported within the head portion, and Nasiell provides a motivation to modify Thorson to enclose the motor within the head portion. Applicant’s arguments at page 15 of the Remarks are against the references individually, rather than against Thorson, as modified.
Finally, Applicant’s arguments with to the rejection of claim 19 under 35 USC 103 have been considered and are persuasive. The examiner agrees, as noted above, that Thorson fails to disclose “the first spring includes an abutment member” in combination with the feature of “wherein the abutment member of the first spring and the shoulders of the cutting blade are configured to hold a tubing having a uniform outer diameter after a complete cut”. Thus, claim 19 is allowed.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EVAN H MACFARLANE/Examiner, Art Unit 3724
1 Note that the motor 530 in Fig. 15 of Thorson is mislabeled with reference character ‘130’. Reference character ‘130’ indicates the motor in an earlier embodiment shown in Fig. 2A of Thorson. One of ordinary skill in the art, in view of other figures (such as Fig. 14 and Fig. 16) properly using reference character ‘530’ to indicate the motor of Thorson, understands this typographical error in Fig. 15.
Prosecution Insights