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 Arguments
Applicant's arguments filed 4/06/2026 have been fully considered but they are not persuasive.
The citation “Rem.” Herein refers to the Applicant remarks dated 4/6/2026.
Applicant alleges that “The office action cites exclusively to Fig. 3 of Peterson as teaching the cutting bit…having a thickness greater than the base.” (Rem p. 14 line 7-8). This is incorrect. Page 9 of the Non Final Rejection dated 01/06/2026 specifically highlights the teaching of Nishio, Kullman and Smith shows cutting tips with thicknesses that are greater than the base blade. This is plainly evident with even a cursory glance at those references. Peterson is relied on as the only citation showing the inner portion as essentially flush at the inside portion.
Applicant alleges that because Peterson is not to scale, any argument about what it shows is spurious. It is true that ‘measurement’ of a drawing is not highly probative, (Rem. P 14 line 14) the art of Peterson Nishio, Kullman and Smith are not discussing relative proportions or measurements—they are showing when two elements are the same or different sizes. Additionally, the shapes (broadly) and the implications are findings of fact—and it is for the office to make the case at this point what the facts imply to the determination of obviousness. This is not a case relying on “proportions” or measurements of the drawings—but a case where the idea of having an element bigger or about the same is being demonstrated to be obvious. The art of Peterson, Nishio, Kullman and Smith, taken together paints more than a prima facie case that bigger teeth than base blade is old and well known—and that the selection and adjustment of the sizes is within the level of ordinary art.
Applicant alleges that the application of Peterson, Smith, Nishio and Kullmann to the present question of the inventiveness of having a smaller inner section in a cutting tooth is hindsight. (Rem. 14-15). This is not persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).Here, the application of Peterson, Smith, Nishio and Kullmann is not a hindsight reconstruction—it is the demonstration of old principles known to those in the public domain how to achieve a nice mounting of a tip on a blade base, and the types of relative sizes the inner and outer portions thereof are known in the art to have.
Applicant alleges that changing the sizes is not obvious, because a specific ‘thin portion’ does not exist in the art (Rem. P.15). This is not persuasive, since Peterson shows the “thin portion” as the inner part of 7 is shown to be flush or essentially flush with the base of the blade—to effect a useful mounting of blade within base. Applicant alleges that Rose and Yount do not apply, because they are applied to making a known structure larger or smaller, and alleges that Peterson fails to demonstrate the structure here claimed is known. This is not persuasive because figure 3 of Peterson, to one of ordinary skill in the art at the time of filing, shows a flush mount of the inner part of the tip to the base of the blade. Applicant’s argument here is that because the drawing is not “to scale” we must ignore elements that are visible—such as the connection of the inner portion of the blade to the blade base, and the fact that they are shown to be flush must be ignored. Applicant alleges we must also ignore that figure 3 shows a taper in the tip end, which is visibly wider than the flush end—despite the background knowledge shown in the prior art Smith, Kullman and Nishio which all show tapers for blade teeth. That structure (flush inner tooth end) is shown to be known (Peterson). The additional ideas of largening or smallening the tip (within a reasonable range) along its radial extent is also shown not to be patentable, because of the ubiquity in the art of both selecting sizes (in gross) and the relative ratios (by ordinary experimentation, etc.).
Applicant alleges (Rem. P. 16) that there is no motivation to replace one blade fastening type with another known fastening type, and a person of ordinary skill would not replace a brazed configuration with a removable configuration. This is not persuasive. The very nature of the allegation demonstrates the prima facie obviousness for the switch. Different blade types as shown in the cited art as a whole demonstrate that sometimes blade designers like brazed fastening, and sometimes they like a mechanical type fastening—but both are known. It is clearly up to the designer to decide which is preferred in a specific environment, but both are known. The benefit of removability is the removability of the tip. The benefit of the brazed nature is the relative more permanence. This should be self-evident, and evident in the nature of the combination as previously presented.
Claim Objections
Claim 6 is objected to because of the following informalities: final line states “chip collusion” which is an apparent typo.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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, 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 1 requires the tip to be “fixably secured” which is indefinite. The term “fixably” does not appear in the specification. The nature of the “secure”-ment of the tip is not discussed or disclosed in the specification. The specification discloses only as follows: “the cutting tip 10 may be secured long with respect to the length in the rotational direction of the radially outer area of the cutting tip 10. Therefore, an area of the joint at the radially inner side of the cutting tip 10 to the tip-receiving seat 6 can be secured widely.” There is no discussion of “fixed” securing, and the term does not lend itself to plain construction in this case. It will be understood for examination to mean “positioned” or “mounted” as best understood. Claims 6, and 12 also include the indefinite recitation “fixably secured.”
Claims 6 require “box-shaped” which is indefinite. There is no boundary reasonably ascribed to what is and is not “box-shaped.” The plain meaning—having the shape of a box is not applicable to the present claims—since the elements do not have the shape typically understood to be a “box” which is something hollow, thin walled, having a lid—etc. The form shown and disclosed in the application does not reasonably put the public on notice as to what is meant by this term—which is indefinite as a result.
Claims 12 and 15-18 also specifically uses and do not adequately define “box-shaped.”
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 1-13, 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. Claims 1, 6, and 12 each require “fixably secured” which lacks disclosure in the specification. The nature of this limitation was not discussed as filed, and lacks written description in the specification. Claim 1 requires the tip to be “fixably secured” which is indefinite. The term “fixably” does not appear in the specification. The specification discloses only as follows: “the cutting tip 10 may be secured long with respect to the length in the rotational direction of the radially outer area of the cutting tip 10. Therefore, an area of the joint at the radially inner side of the cutting tip 10 to the tip-receiving seat 6 can be secured widely.” Claims 1-13, 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 as there is no discussion of “fixed” securing, and therefore the term and subject matter dealing with “fixed” securing is considered new matter.
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- 6 and 8-10, 12-13, and 15-20, are rejected under 35 U.S.C. 103 as being unpatentable over Spanholi et al (US 2022/0258260) in view of Peterson (US 2021/0046563) and Nishio (US 2015/0251259), Kullman, (US 8,695,470, and Smith (US 10,751,817) as set forth in the previous action dated 1/6/26 incorporated here by reference and further in view of Hartger (US 3,169,435).
As noted above in response to argument, applicant alleges that Peterson does not adequately support the conclusion that the interface between a tooth and the blade body may be selected to be flush. That is not persuasive, however, to foreclose that argument, additional art is presented in Hartger (US 3,169,435):
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Hartger discloses “ According to the invention, both the straight teeth 24 and the beveled teeth 26 are provided with bottom cut grinds or edges 40 at points preferably located about two- thirds of the way downwardly along the side of the teeth 24, 26, 28. The bottom cutting edges 40 are formed by undercutting the bottom portion of the tooth to the thickness of the saw blade to produce a shank portion and a wider head portion. This location of the undercut prevents cut steel chips from laterally penetrating the joint 33 and prying it apart.” (Col 2 line 27+).
Not only is this a good reason to provide the undercut, as applicant is claiming, it is the same reason applicant alleges is inventive—the prevention of chips interacting with the joint of a blade tip connected to a blade base.
It would have been obvious to one of ordinary skill to apply the shape and teaching of Hartger including a flush intersection of tooth to blade base—and thereby space the joint from the lower end of the lateral extending portion of the cutting tip in a Spanholi / Peterson/ Nishio/ Kullman device, since Hartger discloses this is a known, ordinary, useful way to prevent chips from entering and prying at the joint between a tip and the blade base of a circular saw blade.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Spanholi et al (US 2022/0258260) in view of Peterson (US 2021/0046563) and Nishio (US 2015/0251259), Kullman, (US 8,695,470, and Smith (US 10,751,817) further in view of Hartger (US 3,169,435) as applied to claim 10, inter alia, above, and further in view of Bird (US 2020/0139463) as set forth in the previous action dated 1/6/26 incorporated by reference.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Spanholi et al (US 2022/0258260) in view of Peterson (US 2021/0046563) and Nishio (US 2015/0251259), Kullman, (US 8,695,470, and Smith (US 10,751,817) further in view of Hartger (US 3,169,435) as applied to claim 6, inter alia, above, and further in view of Nakano (US 2024/0217010) OR in view of Hasegawa (US 2006/0225553) as set forth in the previous action dated 1/6/26 incorporated by reference.
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.
(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 3 is/are rejected under 35 U.S.C. 102(a)(1) AND (a)(2) as being clearly anticipated by Hartger (US 3,169,435).
Conclusion
16. 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
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