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 .
Claim Objections
Claims 2-6 are objected to because of the following informalities:
Claims 2-6: As filed, they recite “A device according to claim (previous dependency)…” However as antecedence has been established in claim 1, subsequent claims reciting said “device” should be preceded by “the.” For examination purposes, the claims have been treated as such
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-6 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.
Regarding claim 2, the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). For examination purposes, claim 2 is interpreted as requiring the sharpening blades to be made of tungsten carbide, as it is the only material positively recited in the claim.
As claims 3-6 are dependent upon claim 2, they are similarly rejected.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu (US Patent No. 7229344).
In regards to claim 1, Wu discloses
a device (blade sharpening tool, fig. 1-7) for sharpening bladed tools comprising
a body (main body 20, fig. 1-7) defining an elongate handle portion (grip portion 21, fig. 1-7) adapted to be gripped in one hand by a user,
the body (main body 20, fig. 1-7) having a forwardly projecting support member (arc-shaped mating surface 24, fig. 1-7) curved or angled downwardly with respect to the handle portion (grip portion 21, fig. 1-7) and fitted with a sharpening element (sharp edge of first grinding unit 30, see fig. 1-5) at or near the end thereof,
wherein the support member (arc-shaped mating surface 24, fig. 1-7) comprises a pair of spaced support arms extending generally parallel to the longitudinal extent of the handle portion (see fig. 2 – ann. 1),
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the support arms being positioned to respective sides of the sharpening element and defining an aperture (see fig. 2 – ann. 2) therebetween
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adapted to accommodate a blade or anvil of a tool during sharpening of a counterpart tool blade (see fig. 5).
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In regards to claim 7, Wu discloses
a device (blade sharpening tool, fig. 1-7) for sharpening bladed tools comprising a body (main body 20, fig. 1-7) defining an elongate handle portion (grip portion 21, fig. 1-7) adapted to be gripped in one hand by a user,
the body (main body 20, fig. 1-7) having a forwardly projecting support member (arc-shaped mating surface 24, fig. 1-7) curved or angled downwardly with respect to the handle portion (grip portion 21, fig. 1-7),
the end of the support member (arc-shaped mating surface 24, fig. 1-7) being configured to engage with a sharpening element cartridge (first grinding unit 30, see fig. 1-5) having a sharpening element (sharp edge of first grinding unit 30, see fig. 1-5) held therein, wherein the support member (arc-shaped mating surface 24, fig. 1-7) comprises a pair of spaced support arms extending generally parallel to the longitudinal extent of the handle portion (see fig. 2 – ann. 1),
the support arms being positioned to respective sides of the sharpening element of the engaged cartridge (first grinding unit 30, see fig. 1-5) and defining an aperture therebetween adapted to accommodate a blade or anvil of a tool during sharpening of a counterpart tool blade (see fig. ann. 2 and fig. 5).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 2-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Byers (US PG Pub No. 20070266828).
In regards to claim 2, Wu discloses
the device according to claim 1, but fails to explicitly disclose the sharpening element (sharp edge of first grinding unit 30, see fig. 1-5) comprises one or more sharpening blades formed from tungsten carbide or the like.
However, Byers, which is a hand-held sharpening tool, discloses:
[0020] The sharpening/deburring/whetting inserts 16 may be rectangularly shaped flat members made of various known materials such as tungsten carbide, stone, ceramics or the like suitable for blade sharpening. As will be appreciated by those skilled in the art, each blade has a ground face to be employed in the sharpening/deburring process with the ground faces intersected and overlaid as shown to provide convergent sharpening/deburring working edges that define a V-shape notch.
Wu and Byers are considered to be analogous to the claimed invention because they are in the same field of hand-held grinding tools with replaceable sharpening elements.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to configure the body out of tungsten carbide since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07
In regards to claim 3, Wu as modified discloses
the device according to claim 1 or 2 wherein the sharpening element (sharp edge of first grinding unit 30, see fig. 1-5) is provided in a cartridge (first grinding unit 30, see fig. 1-5) that is removeably fitted to the end of the support member (arc-shaped mating surface 24, fig. 1-7).
In regards to claim 4, Wu as modified discloses
the device according to claim 3, but fails to explicitly disclose that the device (blade sharpening tool, fig. 1-7) is provided with “two or more cartridges” carrying sharpening blades configured for sharpening respective types of tool blade edges.
However, pursuant of MPEP 2144.04(VI)(B), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to duplicate parts, where in the instant case, to have a two more cartridges only a slight variation therefrom and would not produce an unexpected outcome and would have therefore constituted an obvious mechanical choice expedient at the time of applicants' invention, as a plurality of cartridges allows for greater variety and decreases the number of times cartridges may need to be restocked for storage, further increasing the tools versatility. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Pursuant of MPEP 2115, claim analysis is understood as highly fact-dependent, thus is only limited by positively recited elements. Therefore, the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Otto, 312 F.2d 937, 136 USPQ 458, 459; see also In re Young, 75 F.2d 996, 25 USPQ 69. As such, while Wu doesn’t disclose sharpening different or “respective” tool blade edges, it discloses a body with an elongate handle portion, forwardly projecting member, sharpening element cartridges with sharpening elements, a storage area, and the cartridges have the structure to be interchanged with each other, it’s considered capable of being used for sharpening different tool blade edges. A skilled artisan may determine which element they desire to use with the workpiece as they see fit.
Further, the limitation is an intended use limitation. A skilled artisan would recognize the tool of Wu as modified would be capable of being used for sharpening tool edges.
In regards to claim 5, Wu as modified discloses
the device according to claim 4 wherein the device body (main body 20, fig. 1-7) includes a compartment (receiving chamber 22, fig. 1-7) therein capable of storing one or more cartridges (plurality of first grinding units 30, fig. 1-5).
In regards to claim 6, Wu as modified discloses
the device according to claim 5 including a carriage member (see fig. 2 ann. 3) adapted to receive one or more cartridges (plurality of first grinding units 30, fig. 1-5) and to engage with the device body (main body 20, fig. 1-7) wherein to hold the one or more cartridges in the compartment (receiving chamber 22, fig. 1-7).
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Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Friel (US Patent No. 5868611).
In regards to claim 8, Wu discloses
a device (blade sharpening tool, fig. 1-7) for sharpening bladed tools comprising a body (main body 20, fig. 1-7) defining an elongate handle portion (grip portion 21, fig. 1-7) adapted to be gripped in one hand by a user,
the body (main body 20, fig. 1-7) having a forwardly projecting support member (arc-shaped mating surface 24, fig. 1-7) curved or angled downwardly with respect to the handle portion (grip portion 21, fig. 1-7),
the end of the support member (arc-shaped mating surface 24, fig. 1-7) being configured to engage a first sharpening element cartridge (first grinding unit 30, see fig. 1-5) having a first sharpening element configuration for operative tool sharpening use (see fig. 4 and 5), the device further comprising a storage receptacle (receiving chamber 22, fig. 1-7) formed in the body (main body 20, fig. 1-7)
Wu fails to explicitly disclose that the storage receptable is “configured to engage a second sharpening element cartridge having a second sharpening element configuration for storage, and wherein the first and second sharpening element cartridges are selectively interchangeable by the user for operative sharpening use on different types of tool blades.”
Wu and Friel are considered to be analogous to the claimed invention because they are in the same field of hand tools with sharpening elements that can be placed in an operable position, as well as a storage portion. Friel teaches:
Col. 3 lines 45-50: Ideally the ultra honing pad 20 would be used following the primary honing process in Stage 2 (FIG. 1) where the interdigitating pads are commonly set at a total angle of 45.degree. to 50.degree.. The ultrahoning pad 20 would be removed from compartment 5 and would be inserted into recess 8, with coarse pad 12A being stored in compartment 5.
Col. 4 lines 9-14: The storage compartment 5 built into the sharpener is very convenient for the secure and clean storage of sharpening pads 12, 12A, 20 when not in use. Thus, compartment 5 can conveniently store various types of sharpening pads, such as a honing pad, an intermediate grid fishhook pad and a coarse pad.
Friel discloses using a storage compartment to house a plurality of different sharpening pads when not being used, and allowing for them to be exchanged with each other depending on the situation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wu and incorporate the teachings of Friel, and use the receiving chamber (22) disclosed by Wu in order to store a plurality of a variety grinding elements, which would increase the tools versality.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees.
A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 7 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-22 and 25-37 of U.S. Patent No. 12415245.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8, 9, 15, 18 of patent no. 12415245 recites all the limitations of claims 1, 7 and 8 of the instant application.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Terminal Disclaimer
A terminal disclaimer may be effective to overcome a nonstatutory double patenting rejection over a reference patent (37 CFR 1.321(b) and (c)). A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional, the reply must be complete. MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/PatentForms. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/TerminalDisclaimer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON KHALIL HAWKINS whose telephone number is (571)272-5446. The examiner can normally be reached M-F; 8-5PM.
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/JASON KHALIL HAWKINS/Examiner, Art Unit 3723