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 Amendment
The Amendment filed 27 January 2026 has been entered. Claims 1-13 are pending
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's elections with traverse of Invention I and Species A in the reply filed on 27 January 2026 is acknowledged. The traversal is on the ground(s) that there is no serious burden. It is unclear whether the Applicant is traversing the restriction between Inventions I and II, between Species A and B, or both. Still, the Applicant’s argument is not found persuasive because the Applicant has provided no support for the assertion that there is no search burden. The Applicant merely asserts, without any underlying evidential or rationale support, that there is no serious burden. Since the Applicant’s argument is merely an unsupported assertion that there is no burden, the Applicant’s argument is not persuasive. Moreover, there is in fact a burden to examining all originally presented inventions and species. Invention II, reading on originally filed claims 16-20, is drawn to an invention that is separately classified from the elected Invention I. For example, Invention II necessitates a search of B23D 47/025 not necessitated by Invention I, and Invention II necessitates different keyword searching than Invention I for any common classification searches. Similarly, Species B necessitates different keyword queries than Species A due to the unique features of Species B. Species B, as present in originally filed claim 14, requires a reciprocating handle. Thus, a search of Species B necessitates a search of keywords such as “handle with (translat$8 or reciprocat$8)” not required by Species A. Since Invention II necessitates a different field of search than Invention I, and since Species B requires a different search strategy including different keyword searches than Species A, each of Invention II and Species B requires a search burden. As such, there would be a burden to examining Invention II and Species A. Further, all pending claims are being examined herein.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
The claims are objected to because of the following informalities:
Claim 1 at line 8 recites, “the rotation”. This recitation should read – a rotation – because no ‘rotation’ is explicitly introduced in claim 1 prior to this recitation. Alternatively, the examiner suggests use of ‘rotation’ as a verb, such that no article is required preceding ‘rotation’. E.g., the examiner suggests reciting that when the first locking mechanism is in the first state, the cutting mechanism is locked relative to the workpiece by the first locking mechanism such that rotation of the first locking mechanism about the first axis is prevented.
Claim 3 at line 3 recites, “the positioning block”. However, the claim previously introduces a plurality of positioning blocks. As such, the recitation of “the position block” at line 3 should read – one of the positioning blocks –.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claim limitations identified below are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a cutting mechanism” as recited in claim 1 (first, “mechanism” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “for completing a cutting operation”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “cutting” preceding the generic placeholder describes the function, not the structure, of the mechanism);
“a first locking mechanism” as recited in claim 1 (first, “mechanism” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language including locking and allowing rotation as described at lines 7-13 of claim 1; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – first, “locking” is a verb that describes a function; second, even though the locking mechanism includes the structure of the first operation member, the first operation member is insufficient structure for performing the recited functions);
“a first operation member” as recited in claim 1 (first, “member” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “for placing the first locking mechanism into a first state, a second state, and a third state”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “operation” preceding the generic placeholder describes the function, not the structure, of the member); and
“a biasing element” as recited in claim 4 (first, “element” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “used for resetting the positioning pin”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “biasing” preceding the generic placeholder describes the function, not the structure, of the element).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-13 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 1 at lines 11-13 recites, “when the first locking mechanism is in the third state, the first locking mechanism mates with the support base to position the rotation of the cutting mechanism about the first axis.” This recitation is indefinite because it is unclear whether the recitation includes a typographical error. The recitation “to position the rotation” does not make sense because a rotation does not have any particular position. The recitation not making sense suggests that a typographical error may be present. For example, does the Applicant intend the phrase “to position the rotation” to read – to permit the rotation –? To the extent that no typographical error is included in the claim, it is unclear what is required by the phrase “to position the rotation of the cutting mechanism about the first axis”. The claim at lines 3-4 already requires that the cutting mechanism is rotatable about the first axis, so it is unclear what feature structure is required for the rotation to be positioned about the first axis.
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) 1-5, 7-9 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. No. 10,882,123 B2 to Brewster et al.
Regarding claim 1, Brewster discloses a miter saw (see the miter saw of Fig. 1, including the locking mechanism 825 of the embodiment of Figs. 19-24; per col. 10, lines 60-57, the locking mechanism 825 of the embodiment of Figs. 19-24 is usable in place of mechanism 425 shown in Fig. 1), comprising:
a workbench 105 for placing a workpiece (see Fig. 1 and col. 3, lines 35-43);
a cutting mechanism 110 and 130 used for completing a cutting operation on the workpiece (the cutting mechanism 110 and 130 is ‘used for completing a cutting operation’ due to including saw blade 175) and rotating relative to the workbench 105 about a first axis 160 (see col. 3, lines 52-54);
a support base 165 connected to the cutting mechanism 110 and 130 and the workbench 105 (see Fig. 1); and
a first locking mechanism 825 comprising a first operation member (the left of the two elements 830 relative to Fig. 21 – the other of the elements 830 is a second operation member, noting that the preamble of the claim is ‘comprising’; hereinafter ‘first operation portion 830’ for brevity) for placing the first locking mechanism 825 into a first state, a second state, and a third state (see col. 11, lines 37-41 and Figs. 22, 23, and 24, where the figures illustrate the first, second, and third states, respectively) wherein, when the first locking mechanism 825 is in the first state (see Fig. 22), the rotation of the cutting mechanism 110 and 130 relative to the workbench 105 about the first axis 105 is locked by the first locking mechanism 825 (see Fig. 22 and col. 11, lines 38-39; the locking is due to positioning pin 905 engaging the support base 165), when the first locking mechanism 825 is in the second state (see Fig. 23), the rotation of the cutting mechanism 110 and 130 relative to the workbench 105 about the first axis 105 is allowed by the first locking mechanism 825 (see Fig. 23, col. 11, lines 39-40, and col. 11, lines 49-63), and, when the first locking mechanism 825 is in the third state (the third state being a state where the positioning pin 905 engages a different aperture 950 than that illustrated in Fig. 22; i.e., as shown in Fig. 21, the first locking mechanism 825 has different states depending on the rotational position of the locking mechanism 825 relative to the support base), the first locking mechanism 825 mates with the support base 165 to position the rotation of the cutting mechanism 110 and 130 about the first axis 160 (this feature is evident from Figs. 21 and 22, noting that ‘the rotation’ of the cutting mechanism 110 and 130 is always positioned at the first axis 160, so this feature is satisfied in the third state).
Regarding claim 2, Brewster disclose that the first locking mechanism 825 further comprises a positioning pin 905 (note that the positioning pin 905 can be interpreted as including element 915, since elements 905 and 915 are fixed to one another per Fig. 21 and col. 11, lines 15-16) moving between a positioning position (corresponding to a left-ward position of the pin 905 illustrated in Fig. 22; the positioning position is relative to arm 130) and a non-positioning position (corresponding to a more right-ward position of the pin 905 illustrated in Fig. 23) and, when the first locking mechanism 825 is in the third state, the positioning pin 905 is at the positioning position (the locking mechanism 825 in the third state includes the positioning pin 905 engaging one of the apertures 950, such that the positioning pin is at the positioning position corresponding to the position shown in Fig. 22).
Regarding claim 3, Brewster discloses that a plurality of positioning blocks are disposed on the support base 165 (see Fig. 21; a positioning block is disposed on each side of the aperture 950 engaged by the pin 905 as illustrated in Fig. 21 – i.e., the positioning blocks of Brewster are the solid portions extending between two adjacent apertures 950; note that the broadest reasonable interpretation of ‘block’ includes a compact usually solid piece of substantially material especially when worked or altered to serve a particular purpose, and the blocks of Brewster are solid pieces of material altered by formed apertures for receiving the positioning pin 905 in order to hold a position of the positioning pin 905), and, when the positioning pin 905 is at the positioning position, the positioning pin 905 is limited by the positioning block (see Figs. 21 and 22; the positioning pin 905 is limited by the positioning block because the positioning block inhibits rotation of the positioning pin 905 about axis 160).
Regarding claim 4, Brewster discloses that the first locking mechanism 825 further comprises: a transmission wheel (890 and 895; see Fig. 21) comprising a first transmission portion 890 that protrudes (see Figs. 21 and 22); and a biasing element 930 used for resetting the positioning pin 905 from the non-positioning position to the positioning position (see col. 11, lines 44-57), the positioning pin 905 comprises a driven portion 915 (as noted above, elements 905 and 915 are fixed to one another, such that portion 915 is properly considered as a part of the pin) corresponding to a shape of the first transmission portion 890 (see Figs. 21 and 22), and the first transmission portion 890 acts on the driven portion 915 so that the positioning pin 905 arrives at the non-positioning position (see Fig. 23).
Regarding claim 5, Brewster discloses that the first operation member 830 is operated to move among a first position (see Fig. 22), a second position (see Fig. 23), and a third position (see Fig. 22, where the first operation member 830 is rotated in the third position relative to a position of the first operation member 830 in the first position such that the pin 905 engages a different one of the apertures 950), when the first operation member 830 is at the first position, the first locking mechanism 825 is in the first state (see Fig. 22), when the first operation member 830 is at the second position, the first locking mechanism 825 is in the second state (see Fig. 23), and when the first operation member is at the third position, the first locking mechanism 825 is in the third state (see the explanation of the third position and third state above).
Regarding claim 7, Brewster discloses that the first operation member 830 is drivingly connected to the transmission wheel (see Figs. 21-24, showing that rotation of the first operation member 830 drives rotation of the transmission wheel), and the positioning pin 905 is at the non-positioning position when the first operation member 830 is at the second position (see Fig. 23).
Regarding claim 8, Brewster discloses that the transmission wheel further comprises a second transmission portion 895 that protrudes (see Fig. 21), and the second transmission portion 895 and the first transmission portion 890 are disposed at different positions on the transmission wheel (see Figs. 21 and 22).
Regarding claim 9, Brewster discloses that the first transmission portion 890 and the second transmission portion 895 protrude in different directions (see Fig. 22; e.g., the sections of the portions 890 and 895 that receive the lead lines for reference characters “890” and “895”, respectively, protrude in different directions).
Regarding claim 13, Brewster discloses that an amount of the first operation member 830 is one (see Fig. 21; the first locking mechanism 825 includes exactly one first operation member 830 and also includes exactly one second operation member 830).
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) 13 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 10,882,123 B2 to Brewster et al. in view of US Pub. No. 2010/0269662 A1 to Lawlor.
As explained above in the rejection of claim 13 under 35 USC 102, the broadest reasonable interpretation of claim 13 permits the miter saw to include a second operation member in addition to including only one first operation member. However, in the event that claim 13 is interpreted as excluding the miter saw from including any operation member beyond the exactly one first operation member, this alternative rejection is provided.
For the purposes of this alternative rejection only, Brewster is considered as failing to disclose that an amount of the first operation member is one as required by claim 13.
Still, Lawlor teaches a miter saw 100 (see Fig. 3) that is provided with an amount of a first operation member 160 that is one (see Fig. 4). The first operation member of Lawlor, just like each of the first operation members of Brewster, is operable to lock and unlock a pivoting operation of a cutting mechanism of a miter saw.
It would have been obvious to one of ordinary skill in the art to provide the miter saw of Brewster with exactly one first operation member in view of the teachings of Lawlor. This modification is advantageous because it reduces manufacturing expenses, since less material is required and because a redundant operation member need not be provided. This operation is further advantageous because it simplifies operation of the miter saw. A user may be confused as to the purpose of two operation members in the miter saw of Brewster. For example, the user may question whether both operation members must be actuated, or whether the operation members perform different functions. By providing only a single operation member, the concerns of a user of alleviated since the opportunity for confusion is reduced.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Each of the following references discloses a miter saw having a relevant locking mechanism:
US Pub. No. 2021/0039177 A1 to Yamamura
US Pub. No. 2019/0291193 A1 to Chang
US Pub. No. 2018/0178296 A1 to Marinov
US Pub. No. 2016/0318108 A1 to Gonzalez
US Pub. No. 2010/0269661 A1 to Cox et al.
US Pub. No. 2004/0112190 A1 to Hollis et al.
US Pub. No. 2004/0074362 A1 to Svetlik et al.
US Pub. No. 2003/0150311 A1 to Carroll et al.
Claims Not Subject to Prior Art Rejection
Claims 6 and 10-12 are not subject to any prior art rejection. However, no determination of allowability can be made in view of the issues raised above under 35 USC 112.
Claim 6 requires that the third position is between the first position and the second position, and the second position is an initial position. As disclosed by Brewster, the third position is not between the first and second positions, at least in the interpretation of Brewster relied upon above. In the interpretation of Brewster relied upon above, the third position differs rotationally from the first position along the first axis ‘160’, but the first and third positions are at the same location along the first axis ‘160’. Moreover, to the extent that the position of the first locking mechanism of Brewster shown in Fig. 24 can be considered as a ‘third state’, even in this interpretation the second position of the first operation member of Brewster is between the first and third positions.
Claim 10 requires that when the locking mechanism is in the first state, the transmission wheel presses the first locking portion toward the support base. While Brewster discloses that the first locking mechanism 825 comprises a first locking portion 925, Brewster fails to disclose that the transmission wheel presses the first locking portion toward the support base when the locking mechanism is in the first state. As can be seen in Fig. 22 of Brewster, when the locking mechanism is in the first state, the transmission wheel does not press the first locking portion.
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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/EVAN H MACFARLANE/Examiner, Art Unit 3724