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 .
Election/Restrictions
Newly submitted claim 13 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claim 13 recites technical feature of a method of cutting the multi-layered material.
The previously examined claims, for an example claim 2 shows a technical feature of an inclination angle between 15-45 degrees, have two-way distinction and a search burden compared to new claim 13. For an example:
The device of claim 2 requires to have an inclination angle between 15-45 degrees for cutting a workpiece (that is not necessary to be a muti-layered material) and conversely, the method of claim 13 is directly to use the cutting apparatus (not need an inclination angle between 15-45 degrees) to cut a multi-layered material. Since applicant has received an action on the merits for the originally presented and elected invention, claim 13 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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 1-6 and 12 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, lines 6-7 “at least any one of the blade portions of the first tool and the blade portions of the second tool” is confusing whether the at least any one refers to at least any one of the blade portions of the 1st tool or at least any one of the blade portions of the 2nd tool or at least any one of the 1st tool and the 2nd tool (emphasis added).
The scope of claim 4 is unclear. The inclined portion and the protruding portion mentioning in claim 1 are for one of the blade portions (of either the first tool or the 2nd tool), however, as claim 4 is written, it is unclear how other of the first and second tools has only one inclined portion and one inclined portion or the same portions.
All claims dependent from claim 1 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from the rejected parent claim.
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.
Claims 1-2, 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Garner (US 2019/0364868 A1).
Regarding claim 1, as best understood, Garner shows a cutting apparatus (Figure 1) for cutting a multi-layered material sandwiched between a first tool (5, Figure 2) and a second tool (14), wherein the first tool and the second tool are configured to cut the multi-layered material (Para. 21 “the engagement between the first shear-cutting edge 8 and the second shear-cutting edge 15 about the upper prong-receiving indentation 18 is able to shear the nail head in a flat and level fashion with a minimum distance off from the hoof wall”),
the first tool and the second tool are disposed such that blade portions of the first tool and blade portions of the second tool face each other in a pressing direction (see Figure 1, there are many portions of the 1st shear- cutting edge 8 and many portions of the 2nd shear-cutting edge 15 face each other in a pressing direction or a closing direction),
the blade portion of the first tool includes: an inclined portion (see the zoom-in in Figure 3 below) including a tool inclined surface (Figures 1 and 5) that is inclined with respect to the pressing direction; and
a protruding portion (7, Figure 3) including a vertical wall surface (where the reference “18”, figure 3, is pointing to and Figure 5, please note that this a handheld tool capable of achieving an infinite number of orientations including orientations where the wall surface is vertical) and a pressing surface (where the reference “8” is in Figure 3) and protruding from the inclined portion in the pressing direction (Figure 3), the vertical wall surface extending from the tool inclined surface along the pressing direction (Figure 5),
the pressing surface (see Figure 3) being perpendicular to the vertical wall surface, and the inclined portion (of the 1st shear-cutting edge 8) overlaps a vertical wall portion of one of the blade portions of other of the first tool and second tool that faces the inclined portion as viewed in the pressing direction (see an inner wall portion of the second shear-cutting edge 15, Figure 2).
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Regarding claim 2, Garner shows that an inclination angle of the tool inclined surface with respect to the pressing direction is 15° to 45° (it is about 22 degrees as seen in Figure 3 above).
Regarding claim 5, Garner shows that a curvature radius of a corner portion at which the vertical wall surface and the pressing surface intersect with each other is 0.1 mm or less (as this is written, it is unclear whether the conner portion has a curvature radius or not since it is 0.1mm or less; zero is less than 0.1mm and if the curvature radius is zero, it is a point conner portion or no curvature radius, therefore, Tsutomu’s figure 3 above shows the conner portion and meets this limitation).
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.
Claims 3, 5, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Garner.
Regarding claim 5, this is an alternative rejection, Garner shows all of the limitations as stated above, however, it is unclear whether a curvature radius of a corner portion at which the vertical wall surface and the pressing surface intersect with each other is 0.1 mm or less.
Reading the Applicant’s specification, Applicant had not pointed out the criticality of why the curvature radius of a corner portion is 0.1 mm or less, therefore, it would have been obvious to one having ordinary skill in the art to have the curvature radius of a corner portion 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 depending on structural materials to be cut.
Regarding claims 3 and 12, Garner shows all of the limitations as stated above including a length of the vertical wall surface in the pressing direction, but it is 0.1 mm to 0.8 mm or not.
Reading the Applicant’s specification, Applicant had not pointed out the criticality of why a length of the vertical wall surface in the pressing direction is 0.1 mm to 0.8 mm, it would have been obvious to one having ordinary skill in the art to have the a length of the vertical wall surface in the pressing direction from 0.1 mm to 0.8 mm or 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. For examples, cut a thin material, a length of the vertical surface of a blade is small and if cut a thick material, a length vertical surface of a blade is larger. These are known discovering the optimum or workable ranges depending on thickness of materials to be cut.
Allowable Subject Matter
Claims 4, 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 4, 6 are free of prior art because the prior art does suggest any one of the blade portions of the first tool and anyone of the blade portions of the second tool includes the inclined portion and the protruding portion another word, a shape of the first tool and a shape of the second tool are symmetrical to each other.
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 reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. See the new art above.
With regards to the drawing objection, it is mooted since the curvature is too small or no curvature.
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
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 NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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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 3/20/2026