DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to remarks
Applicant alleges that the claim changes to claim 15 renders the rejections under 112(b) and 112(a) moot. This is not persuasive, since applicant has substituted other indefinite material in the same manner—here “ a chain 214 that is movably coupled around a geartrain and the guide bar 225 (e.g., via an outer track 101). The rail 201 of the..”
The outer track is not shown in the figures.
The nature of the movable coupling (now claimed in claim 15 as “the chain is movably coupled to an outer perimeter of the guide bar…” is not shown apart from the idea of coupling. No actual reduction to practice or demonstrative possession of the scope of this claim limitation is present in the whole disclosure.
Similarly—the claim 17 now recites that the second slot width is greater than the “thickness” of the “perimeter of the guide bar.” The perimeter of the guide bar would be like 50 inches—and the perimeter does not really have a “thickness.” This limitation is unclear—if it meant the thickness of the guide bar, or the thickness of the bar at the rim or edge, that could have been stated. The clause “greater than a thickness of the outer perimeter of the guidebar” is unnecessarily confusing. It will be interpreted to mean “thickness of the guide bar.”
Applicant’s remarks address the art by indicating the amendment to the claims incorporating a new limitation as to the different sizing of the slots—and clarifying the nature of the device as having both an interior hollow and through slots in the wall. This necessitated further discussion of the relevant art and additional references, showing the non-patentability of the claims now newly presented.
Claim Rejections - 35 USC § 112(b)
2. 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.
3. Claims 15-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 requires “chain is movably coupled to an outer perimeter of the guide bar” which is indefinite.
The drawings show the “rail” as 201, which does not depict any capability of mounting – it shows only a guide bar with a vague chain 214—not depicted as a real chain, but as a box implying the chain is there. The nature of the coupling is not disclosed—the shape, etc. is not concretely discussed.
In the art (US 2022/0258375) the term “rails” is used as lateral supports to a groove around the guide bar of a chainsaw (11 figure 4)—which is believed to be what applicant might have meant—however the presence of a single rail is insufficient to perform the function as discussed by applicant of supporting ‘chain’ (see immediately infra).
Applicant’s [022] notes “The rail 201 of the guide bar 225 can be configured to support the chain 214.”
Applicant’s [0020] notes “The recessed slot [of the scrench] can be configured such that a rail for the power tool can pass therethrough.”
Here, a rail is typically a single blade/ shaft projection; which would comport with the idea that the slot in the scrench would permit the rail to ‘pass’ through it. However, this is contrary to the vast majority of chainsaws, which use a guide bar having two rails and a slot around the perimeter—where the chain rides in a slot on the bar. The failure here to accurately depict the details of the chain/bar interaction are not minor details—they relate to the claimed inventive feature of permitting an interaction between the scrench and “a rail” and the rail is not depicted in a realistic or detailed style and its nature appears to be contrary to the known nature of chain bars in the art. The failure to depict the rail accurately, therefore, means the claim language is indefinite, since the nature of the rail and the interaction with the scrench are undefined. Essentially, it cannot be discerned whether the slot of the scrench is intended to correspond in size to the width of the guide bar—or if there is a different ‘rail’ feature with some thickness—because the application as a whole fails to show the rail or its thickness with the detail necessary to analyze that interaction.
Applicant has made no comment on the disclosure as to the interactions intended or how they were disclosed at filing—this remains indefinite, and as below, lacking in written description.
Claim Rejections - 35 USC § 112(a)
4. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
5. Claims 15-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claim clause “outer perimeter of the guide bar comprises a rail configured to support a chain” lacks written description of what the rail is and how it interacts with the chain—and the chain detail and rail detail are not depicted in the whole of the application. It is not apparent as a result that applicant has possession of the claimed invention. The rail itself is not disclosed in sufficient detail that the interaction with a chain and/or slot in a scrench tool was in applicant’s possession. They are disclosed as ideas without a reduction to actual practice, and are not shown to be in applicant’s possession.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1,3, 5-7, 10, 11, and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bihlmaier (US 7,900,304) in view of Nardi (US 3,086,414) as set forth previously in the action dated 12/15/2025 and incorporated herein by reference, and further in view of Makovsky (US 5,697,268).
As previously discussed the addition of slots to the lateral rim of a socket permits additional engagement options, as shown by Nardi. Nardi does not show the slots of different widths.
Using a wrench end / socket end type with different width slots is known in the art to provide a useful set of slots for torquing and rotating an eyelet hook or the like—as seen in Makovsky (US 5,697,268) which shows an end slot driver analogous to the wrench of Bihlmaier and Nardi, but further shows two slots—220a and 222a in figure 7. They are both of different size and are in the same rough position as the slots as applicant’s slots (and the same as Nardi’s). It would have been obvious in light of Makovsky US 5,697,268 to add different width slots rather than the same width slots of Nardi or the ‘no-slot’ arrangement of the end of the Bihlmaier wrench.
Claim(s) 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Bihlmaier in view of Nardi in view of Makovsky (US 5,697,268) as applied to claims 1,3, 5-7, 10, 11, and 13-14 above, and further in view of Launay (US 3,175,593) and Vickio (US 4,434,687) and Wood (US 1,797,390).
Regarding claim 8, Bihlmaier in view of Nardi and Makovsky (US 5,697,268) discloses the scrench tool of claim 1 (above), but does not disclose wherein the screwdriver head comprises a protrusion extending away from the screwdriver head (See 16 figure 1 in Bihlmaier).
In the field of screwdriver heads, it is old and well known to include protrusions in the same manner as applicant, as evidenced below:
Launay (US 3,175,593) discloses the screwdriver head (30/18/20 figure 10) comprises a protrusion (40/18 figure 10) extending away from the screwdriver head (as seen in the figures). Column 3 lines 5+ indicate the protrusion makes it easier to insert the screwdriver into a corresponding slot.
And Vickio (US 4,434,687) discloses the screwdriver head (40 figure 1) which comprises a protrusion (55 figure 1) extending away from the screwdriver head (figure 1 of figure 4)
And Wood (US 1,797,390) discloses the screwdriver head (figure 1, see title) comprises a protrusion (D figure 2) extending away from the screwdriver head (figure 2)
In light of the fact that the claimed feature of a protrusion at the tip of a screwdriver is not just known, but is ubiquitously known, it would have been obvious to one of ordinary skill in the art to include a projection on the tip of a screwdriver of Bihlmaier in order to provide for ease in use of the screwdriver entering a corresponding slot (taught by Launay) or to include a projection such as Vickio 55 to permit removal of a damaged screw head, or as taught by Wood, to include a projection as a keying feature, to make sure the blade of the screwdriver is seated properly or more securely than a normal flathead—and preventing lateral shifting shown in Wood.
Regarding claim 9, Bihlmaier in view of Nardi in view of Makovsky (US 5,697,268) and further in view of Launay (US 3,175,593) and Vickio (US 4,434,687) and Wood (US 1,797,390) disclose the scrench tool of claim 8, and further, examiner notes that in each of Launay (US 3,175,593) and Vickio (US 4,434,687) and Wood (US 1,797,390) the protrusion extends from a middle location along a tip of the screwdriver head (See the same citations to the projections provided for claim 8, above).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bihlmaier in view of Nardi in view of (US 5,697,268) as applied to claims 1, 3, 5-7, 10, 11, 13-14 above, and further in view of Rowe (US 5,285,543).
Regarding claim 12, Bihlmaier does not disclose wherein the first shaft is hollow from the first end to the second end—Bihlmaier uses a blind hole for each socket as shown in the figures.
However, it is old and well known to use a through hole in a socket such as Bihlmaier, as evidenced below:
Rowe discloses a scrench tool (figure 6, 7, etc. with socket wrench portions at 13 and 14 and screwdriver portion at 24/21). Rowe discloses that the socket wrench with two sockets has a through-hole in that portion of the device, as seen in the cutaway of figure 6 and 7. It would have been obvious to one of ordinary skill in the art at the time the application was made to replace the blind or incomplete holes of Bihlmaier with complete or through holes as taught by Rowe—since doing so would make the tool lighter (removal of material) or because it provides the opportunity to use the inside of the shaft as a storage access position as taught by Rowe to be a benefit for storing a file.
Claim(s) 15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bihlmaier in view of Nardi in view of Makovsky (US 5,697,268) and Launay (US 3,175,593) and Vickio (US 4,434,687) and Wood (US 1,797,390) as applied to claim 8-9 above, and further in view of Nitschmann (US 6,128,997).
Regarding claim 15, Bihlmaier discloses a chainsaw (54).
Bihlmaier in view of Nardi and Launay (US 3,175,593) and Vickio (US 4,434,687) and Wood (US 1,797,390) discloses a scrench tool comprising: a first shaft extending from a first end to a second end, wherein the first end comprises a recessed slot having an opening at the first end; and a second shaft extending away from the first shaft to a screwdriver head, wherein the second shaft comprises a protrusion extending away from the screwdriver head, as set forth in the rejection of claims 1-4, 8 inter alia, above.
Bihlmaier in view of Nardi does not disclose a chainsaw system comprising: a chainsaw comprising a housing and a guide bar extending away from the housing,
wherein an outer perimeter of the guide bar comprises a rail configured to support a chain.
These are standard features of chainsaws, and are not unique in any way. It is noted here that applicant does not disclose with reasonable specificity what is the nature of the claimed rail—leading to indefiniteness and written description rejections provided above.
Bihlmaier discloses that the scrench device is intended to be used with a chainsaw (see title), but does not explicitly invite the combination of the tool with a chainsaw.
Nitschmann (US 6,128,997) discloses a chainsaw system comprising: a chainsaw (figure 1) comprising a housing (18) and a guide bar (9 figure 1) extending away from the housing (shown in figure 1)
wherein an outer perimeter of the guide bar comprises a rail (see indefiniteness supra; as best understood, Nitschmann discloses “a guide groove 11 arranged at its outer periphery in which the projections of centrally arranged drive members 13 of a saw chain 10 are engaged.” Which is understood to be a rail per se surrounding and adjacent to the groove disclosed) which is configured to support a chain (as shown in Nitschmann figure 1, and as noted ibid).
It would have been obvious to combine Nitschmann with Bihlmaier in view of Nardi, since Nitschmann is a chainsaw—and has bolts, screws etc. which demand adjustment, and Bihlmaier suggests and is intended to be used with a chainsaw. It is not inventive to make a ‘system’ or combination of a known chainsaw and a known chainsaw tool which is designed to have tool elements convenient for servicing a chainsaw. This is the combination of old well known elements to achieve a predictable result. Here, the predictable result of putting a chainsaw tool with a chainsaw is that the chainsaw can be adjusted by using the chainsaw tool adapted to work with the chainsaw.
Regarding claim 17, as noted above, “a thickness of the rail” is indefinite and lacks written description in the present application. However, the nature of the claim appears to be that a width of the recessed slot is greater than a thickness of the rail, which is a question of sizing. Here, the rail of Nitschmann is shown as some size—and the scrench of Bihlmaier in view of Nardi has some size slot therein—in order for it to correspond with different nut sizes or types – e.g. hex, square, castellated, wingnut, or the like as discussed above. The question of the size of the two elements here is believed be prima facie obvious, since the designer could select rails smaller than the scrench, or scrench slot to be many sizes, from near or below the rail size to much larger, in order to accommodate the nuts that are intended. Further, it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also In re Yount (36 C.C.P.A. (Patents) 775, 171 F.2d 317, 80 USPQ 141.
Regarding claim 18, Nitschmann further discloses the old known feature of chainsaw comprises a lubricant system (“a lubricant is introduced into the guide groove 11 via an oil bore 20, whereby preferably a biologically degradable oil is used.”).
Regarding claim 19, Nitschmann discloses the lubricant system comprises an outlet port (20 is ‘bore’ which is per se a ‘port’ as claimed).
Regarding claim 20, the clause “the protrusion is smaller than the outlet port” relates to the sizing of the protrusion on the tip of the screwdriver. As seen in Launay (US 3,175,593) and Vickio (US 4,434,687) and Wood (US 1,797,390) the size and arrangement of protrusions on screwdriver portions is known to be determined by their desired interaction with the screws they are meant to correspond to—either to key or to ease into engagement, or to engage with broken screws. IN that context, the selection of the size is within the level of ordinary skill, and it appears they would all be much smaller than the port of Nitschmann. Further, it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also In re Yount (36 C.C.P.A. (Patents) 775, 171 F.2d 317, 80 USPQ 141.
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Bihlmaier in view of Nardi in view of Makovsky (US 5,697,268) and Launay (US 3,175,593) and Vickio (US 4,434,687) and Wood (US 1,797,390) as applied to claim 8-9 above, and further in view of Nitschmann (US 6,128,997) as applied to claims 15, 17-20 above, and further in view of Paquin (US 6,389,700).
Regarding claim 16, neither Bihlmaier nor Nitschmann specifically or emphatically discuss the mounting of a scrench to the housing such that “ the scrench tool is configured to be selectively stored on the chainsaw.”
Storing a scrench on either a chainsaw as disclosed in Bihlmaier, or on one similar to the chainsaw details shown and discussed with respect to Nitschmann would be prima facie obvious, since it provides the benefit of storing the chainsaw tool needed for a chainsaw with the chainsaw it is needed to be used with. Bihlmaier shows the tool (scrench) to be for chainsaw use—and specifically the reason for this is that chainsaws are used off in the field, and not in a shop with all the possible tools at hand—in that context the storage with the tool is desirable. This is a known desirable function for a chainsaw to have, as discussed in Paquin, which shows a scrench (noted as “sparkplug tool” 70) with a mounting structure (figure 4) in order to permit mounting the tool with the chainsaw for use when needed (as shown in figure 4).
“By way of further exemplification, a sparkplug tool 70 is shown removably attached to the sleeve 30 by a snap bracket 72 and an eye 73 fixed to said elongated sleeve 30.” (Paquin column 7 line 13+).
It would have been obvious to one of ordinary skill in the art at the time the application was made to add to Nitschmann a mounting structure to permit a scrench tool to be mounted thereon—since doing so provides the chainsaw tool in convenient combination with the chainsaw it is adapted to be used for—whether as in Paquin as a ‘spark plug tool’ or otherwise—as a combination of screwdriver, wrench, and slot etc. which features are known to be convenient for providing their respective functions at hand in a convenient multi-tool.
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 SEAN M MICHALSKI whose telephone number is (571)272-6752. The examiner can normally be reached Typically M-F 6a-3:30p East Coast Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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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SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/Primary Examiner, Art Unit 3724