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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/27/2026 has been entered.
Claim Rejections - 35 USC § 112
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.
Claims 8 and 18 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.
Claim 8 introduces new matter with the language “at least one” in the phrase "the knife comprises at least one protrusion" in line 2, which is not support by the original specification. The original specification does disclose an upper limit, but the claim does not claim the upper limit. See MPEP 2163.05, Section III, and the “no upper limit” discussion. Thus, the language of "at least" is new matter.
Claim 18, the last sentence introduces new matter with the term of “wherein the dimension in the longitudinal direction is the same as the dimension in a height direction”, in which the original specification does not support. Examiner has reviewed the disclosure and drawings and cannot find any evidence that “the dimension of the projection in the longitudinal direction is the same as the dimension of the projection in a height direction”. See Figure 6; it appears that “the dimension in the longitudinal direction is longer than the dimension in a height direction”
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.
Claims 1-8, 10, 12-21 are rejected under 35 U.S.C. 103 as being unpatentable over Fleming (US 3439419) in view of Brown (US 2086210 A).
Regarding claim 1, Fleming shows a knife unit (Figures 1-3), the knife unit comprising:
a knife (12) comprising a strip-shaped body having two flat sides (two opposite lateral sides of the blade, Figure 1) facing away from one another;
a knife housing (16, 18, Figure 1) comprising a channel (14 for receiving the blade 12) in which the knife is movably arranged in a longitudinal direction between a rest position and an extended position (an exposed position, see the specification for extended and retracted positions of the blade 12),
wherein the knife extends from the knife housing in the extended position, and
wherein the knife housing comprises a plurality of projections (ribs 58, 40, 42, 60, 62, 64, 68, 70) in the channel on each of opposing surfaces (inner surfaces) of the channel facing the sides of the knife (Figures 2-3) for keeping the knife spaced from the opposing surfaces of the channel,
wherein the plurality of projections on each of the opposing surfaces are spaced apart from one another in the longitudinal direction along a common straight line (see Figures 2-3, all ribs are spaced apart along the longitudinal direction).
However, Fleming fails to discuss that individual ones of the plurality of projections are sized and configured to establish point contacts between the plurality of projections and the sides of the knife.
Brown shows a blade (12, Figures 1-10) slid in/out a channel of a housing (10), Brown shows many housing embodiments that include a housing having two parallel ribs (14, Figures 1-9) and a housing having two rows of a plurality of projections (rounded bumps 20, Figure 10) which are sized and configured to establish point contacts between the plurality of projections and a side of the blade.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the ribs or projections of Fleming to have a plurality of rounded bumps, as taught by Brown, since this is known alternative way for the same purpose (Col. 2, lines 26-30 of Brown “as equivalents of the ribs”).
Regarding claim 2, the modified knife unit of Fleming shows that the knife is entirely located inside the knife housing in the rest position (see Figures 2-3 of Fleming. Please notes that the blade has many sections that can be broken and removed if it is needed).
Regarding claim 3, the modified knife unit of Fleming shows that the knife (blade 12, Figure 1 of Flaming) has a lateral width between the two flat sides thereof; wherein a pair of projections of the plurality of projections on opposing surfaces of the channel face one another and have a lateral distance therebetween (see the modification in claim 1 above for protrusions), however, it is unclear whether a difference between the distance and the thickness or the lateral width of the knife is between 0.1mm to 1.0mm or not.
Since As the applicant had not pointed out the criticality of why the distance and the thickness of the knife is between 0.1mm to 1.0mm, therefore, it would have been obvious to one having ordinary skill in the art to have the “distance and the thickness of the knife is between 0.1mm to 1.0mm” of any reasonable range including the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. The claimed range would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. These are known discovering the optimum or workable ranges for guiding the blade and preventing loosening the blade during sliding in into handle and out from the handle.
Regarding claim 4, the modified knife unit of Fleming shows that the opposing surfaces of the channel comprise two planar surfaces (there are many planar surfaces in Figures 4-5 of Fleming) that face one another.
Regarding claim 5, the modified knife unit of Fleming shows that the knife (blade) is metal (based on MPEP 608.02, section IX, drawing symbols, the blade is made by metal and see Col. 4, line 11 of Fleming “the cutting blade 12 comprises an elongated strip of steel”).
Regarding claims 6-7, the modified knife unit of Fleming shows that the cutting edge is formed on an end of the knife (the cutting edge of the blade extends until the tip) and wherein the cutting edge is arranged transverse to the longitudinal direction (see ended edge of the blade, Fleming’s Figure 6 since as the claim is written, it is unclear whether the cutting edge is a sharpen edge or not. The ended edge of the blade can be used to cut a soft material).
Regarding claim 8, the modified knife unit of Fleming shows that the knife comprises at least one protrusion (84, Figure 6) that extends outwardly from the channel in a height direction transverse to the longitudinal direction for connection to a driving device (80/82, Flaming’s Figures 6-8).
Regarding claims 10, 12, the modified knife unit of Fleming shows that the plurality of projections are rounded elevations or nubs on the opposing surfaces (see Brown’s Figure 10).
Regarding claim 13, the modified knife unit of Fleming shows all of the limitations as stated above including a distance between two nubs arranged opposite from one another is larger than a thickness of the knife measured between the sides of the knife (see the modification in claim 1 above and this is inherently limitation because the nubs are on each side of the knife), however, it is unclear whether a difference between the distance and the thickness of the knife is between 0.1mm to 1.0mm or not.
Since As the applicant had not pointed out the criticality of why the distance and the thickness of the knife is between 0.1mm to 1.0mm, therefore, it would have been obvious to one having ordinary skill in the art to have the “distance and the thickness of the knife is between 0.1mm to 1.0mm” of any reasonable range including the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. The claimed range would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. These are known discovering the optimum or workable ranges for guiding the blade and preventing loosening the blade during sliding in into handle and out from the handle.
Regarding claim 14, the modified knife unit of Fleming shows that the common straight line is oriented parallel to the longitudinal direction (Fleming’s Figures 2-3 and Brown’s Figure 10).
Regarding claim 15, the modified knife unit of Fleming shows that the knife housing is part of an exchangeable cartridge (as it is written, it is unclear what a part of the cartridge is, therefore, the housing 16,18 is part of an exchangeable cartridge).
Regarding claim 16, the modified knife unit of Fleming shows one or more of the two flat sides of the knife and one or more of the plurality of projections directly contact one another such that the one or more of the plurality of projections guide the knife within the channel (see brown’s Figure 10).
Regarding claim 17, the modified knife unit of Fleming shows that the individual ones of the plurality of projections have an arcuate profile in the longitudinal direction and in a height direction perpendicular to the longitudinal direction (see Brown’s Figure 10).
Regarding claims 18-19, the modified knife unit of Fleming shows that individual ones of the plurality of projections have a dimension in the longitudinal direction and a dimension in a height direction perpendicular to the longitudinal direction, wherein the dimension in the longitudinal direction is generally the same as the dimension in a height direction (see Brown’s Figure 10), wherein individual ones of the plurality of projections transition without a step into the respective surface of the channel (see Brown’s Figure 10).
Regarding claim 20, the modified knife unit of Fleming shows that the knife housing has a u-shaped profile perpendicular to the longitudinal direction (as this is written, it is unclear what portion of the housing being a “U-shaped” profile, therefore, see Flaming’s figure 4, a cross-section of the housing including a bottom connecting two sides and an opening top for the member 72 is a “U-shaped” profile).
Regarding claim 21 the modified knife unit of Fleming shows that individual ones of the plurality of projections have a dimension in a height direction perpendicular to the longitudinal direction that is equal to or smaller than a dimension in the longitudinal direction (see Brown’s Figure 10).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fleming in view of Brown and Dovel (US 11642801).
Regarding claims 6-7, this is an alternative rejection if one argues that Fleming’s blade does not have a transverse cutting edge, Fleming shows all of the limitations as stated above including the cutting edge is formed on an end of the knife (the cutting edge of the blade extends until the tip), however, the cutting edge is NOT arranged transverse to the longitudinal direction.
Dovel shows a sliding blade (Figure 8) into a handle and out from the handle (Figures 7A, 7C) having a transverse cutting edge (see the 1st and 3rd blades in Figure 8).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have substituted the blade of Fleming for a blade having a transverse cutting edge, as taught by Dovel to achieve the predictable result and allow the blade to be used different orientations and cutting purposes. Accordingly, one of ordinary skill would find it obvious to simple substitution of one known element for another to obtain predictable result, as per MPEP 2143, section I, and the KSR decision, exemplary rationale B.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any matter specifically challenged in the argument. See new ground rejections above.
However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5217150 and US 3381807 show frictionless features of a knife housing.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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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/NHAT CHIEU Q DO/ Primary Examiner, Art Unit 3724 9/15/2026
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