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 .
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 3 July, 2024. These drawings are acceptable.
Claim Objections
Claims 4 and 5 objected to because of the following informalities: reference to “the grinding jig having the shape of a pair of tweezers” is redundant as only one grinding jig is claimed and there is no need to distinguish it from a jig having a different shape. Consider ––the grinding jig––. 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.
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.
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 14 and 15 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 14 recites the limitation “the support means”. There is insufficient antecedent basis for this limitation in the claim. Claim 15 depends from claim 14 and is likewise rejected as indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 covers “[a] grinding system comprising a grinding machine having a grinding means and a support means, the grinding system being configured for co-operation with the grinding jig of claim 1.” Claim 19 refers to claim 1 only in terms of an intended use, which means that it could be satisfied by a grinding system that is capable of use with the grinding jig of claim 1 but does not require the presence of the grinding jig. Because it does not require the presence of the grinding jig defined by the parent claim, it does not include all the limitations of the claim upon which it depends and is therefore rejected for improper dependent form. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of copending Application No. 18/838,528 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 of the reference application recites each of the structural elements of claims 1 and 20 of the present application. The only difference between claim 18 of the reference application and claims 1 and 20 of the present application are additional structures recited in claim 18 of the reference application, because claims 1 and 20 use an open-ended transitional phrase, the inclusion of additional elements in claim 18 of the reference application does not patentably distinguish that invention from the inventions of claims 1 and 20.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-7, 9-12, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jones (US 1339397).
1. Jones teaches a grinding jig for holding a blade of a tool in a grinding machine, wherein the grinding jig comprises:
a first and a second clamp portion (jaws 6, Jones fig. 1) that are movable with respect to one another to clamp the blade (jaws 6 may be displaced for blade insertion, see Jones 1:96-101); and an elongate support portion (stem 7, Jones fig. 1) capable of supporting the grinding jig on a grinding machine (Jones fig. 1), the elongate support portion comprising a first support leg carrying the first clamp portion and a second support leg carrying the second clamp portion (each jaw forms a portion of stem 7, Jones fig. 1 and 1:87-95), wherein the elongate support portion extends along a longitudinal center axis Y of the grinding jig (see Jones fig. 1) and comprises a radial abutment surface (at 8) capable of abutment against the grinding machine (round end of 8 is capable of being abutted against a portion of a grinding machine), and wherein the first and second support legs of the support portion are fixed to one another at the radial abutment surface (ends 7 are fixed to socket 8, Jones fig. 2 and 1:60-66).
2. Jones teaches the grinding jig of claim 1, wherein the first and second support legs are configured to be bent such that first and second clamp portions are movable with respect to one another (jaws 6 bent and are movable, Jones fig. 1 and 1:87-101).
3. Jones teaches the grinding jig of claim 1, wherein the grinding jig has the shape of a pair of tweezers (jaws 6 form tweezers, see Jones fig. 2).
4. Jones teaches the grinding jig of claim 3, wherein the first support leg carrying the first clamp portion forms a first lever of the grinding jig having the shape of a pair of tweezers and the second support leg carrying the second clamp portion forms a second lever of the grinding jig having the shape of a pair of tweezers (jaws 6 form tweezers, see Jones fig. 2).
5. Jones teaches the grinding jig of claim 3, wherein the radial abutment surface is positioned at the fulcrum of the grinding jig having the shape of a pair of tweezers (if the jig of Jones is used as a lever, the junction at 8 is capable of being used as a fulcrum, see Jones fig. 1).
6. Jones teaches the grinding jig of claim 1, wherein the first and second support legs are solid or comprise resilient sections that are solid (7 are solid, see Jones fig. 1).
7. Jones teaches the grinding jig of claim 1, wherein the first and second support legs are integral or are attached to one another at least at the radial abutment surface (7 are attached to each other at 8, see Jones fig. 2).
9. Jones teaches the grinding jig of claim 1, wherein the clamp portions are made from metal (jaws made from metal, Jones 1:87-88).
10. Jones teaches the grinding jig of claim 1, further comprising an actuating system (combination of slots 11 and clamping pin 12, see Jones fig. 1) arranged to releasably force the first and second clamp portions towards one another to clamp the blade (pin 12 moves in slots 11 to clamp or release blade, Jones 1:87-101.
11. Jones teaches the grinding jig of claim 10, wherein the actuating system is configured to engage the first and second clamp portions (pin 12 engages with jaws 6 via slot 11, see Jones fig. 1).
12. Jones teaches the grinding jig of claim 10, wherein the actuating system comprises a joining actuator (pin 12, Jones figs. 1-2).
18. Jones teaches the grinding jig of claim 1, wherein the length of the support legs and the clamp portions along the longitudinal center axis Y corresponds to at least 70 percent of the length of the grinding jig.
The claim requires a correspondence between lengths, i.e., that the clamp and support leg lengths have some relation to the total length rather than that the clamp and support leg lengths combine to equal at least 70 percent of the total length. Because the total length of the grinding jig is a function of the length of the support legs and clamp portions as well as any additional elements, the lengths of any constituent elements will inherently correspond to the total length of the jig as well as any subdivision thereof. Consequently, Jones anticipates the claim.
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.
Claims 8, 14-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jones as applied to claims 1 and 10 above, and further in view of Persson (US PGPub 2020/0316748).
8. Jones teaches the grinding jig of claim 1, but does not teach that the first and second support legs are made from plastic material.
However, Persson teaches a grinding jig (100) having two halves (101,102, wherein the halves comprise clamping portions (110,120) and support legs (161, 162), and wherein the halves are made of metal or plastic (Persson [0029]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the grinding jig of Jones according to the teachings of Persson regarding suitable materials such that the first and second support legs were made from plastic material, as doing so represents the simple substitution of one art-recognized suitable material for another, the results of such a substitution being predictable to one of ordinary skill.
14. Jones teaches the grinding jig of claim 1, but does not teach that the elongate support portion comprises a rear radial abutment surface and a front radial abutment surface, wherein the rear and front radial abutment surfaces are spaced apart such that the grinding jig may be moved back and forth relative to the support means in the direction of the longitudinal center axis Y of the grinding jig.
However, Persson teaches a grinding jig (100) having two halves (101,102, wherein the halves comprise clamping portions (110,120) and support legs (161, 162), and the legs comprise a rear radial abutment surface (180) and a front radial abutment surface (170), wherein the rear and front radial abutment surfaces are spaced apart such that the grinding jig may be moved back and forth relative to the support means in the direction of the longitudinal center axis Y of the grinding jig (see Persson figs. 2a and 4 and [0036]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the grinding jig of Jones according to the teachings of Persson regarding plural abutment surfaces, such that the elongate support portion comprises a rear radial abutment surface and a front radial abutment surface, wherein the rear and front radial abutment surfaces are spaced apart such that the grinding jig may be moved back and forth relative to the support means in the direction of the longitudinal center axis Y of the grinding jig, as doing so would assist an operator in achieving convex edge bevels (Persson [0041]).
15. Jones as modified teaches the grinding jig of claim 14, wherein the front radial abutment surface comprises a first front radial abutment surface and a second front radial surface formed on the first and second support leg, respectively (surfaces 163 and 164 are formed on separate legs, see Persson fig. 3).
Regarding claims 16 and 17, Jones teaches the grinding jig according to claim 1, but does not teach that the first clamp portion, the second clamp portion and the elongate support portion are separate parts that are attachable to one another, or that the first clamp portion is configured to be attached to the first support leg and the second clamp portion is configured to be attached to the second support leg.
However, Persson teaches a grinding jig (100) having two halves (101,102, wherein the halves comprise clamping portions (110,120) and support legs (161, 162), wherein the first clamp portion, the second clamp portion and the elongate support portion are separate parts that are attachable to one another (Persson [0029]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the grinding jig of Jones according to the teachings of Persson regarding the manufacture of the clamp and support portions such that the first clamp portion, the second clamp portion and the legs defining the elongate support portion were separate parts attachable to one another, as doing so represents the simple substitution of one method of making a jig for another, the results of such a substitution being predictable to one of ordinary skill.
20. Jones teaches the grinding jig of claim 1, but does not explicitly teach a grinding system comprising a grinding machine and the grinding jig of claim 1.
However, However, Persson teaches a grinding system comprising a grinding machine (300) and a grinding jig grinding jig (100, Persson fig. 2a) having two halves (101,102, wherein the halves comprise clamping portions (110,120) and support legs (161, 162).
It would have been obvious to one of ordinary skill in the art before the effective filing date to use the grinding jig of Jones according to the teachings of Persson regarding a grinding system comprising a grinding machine and grinding jig to obtain a grinding system comprising a grinding machine and the grinding jig of claim 1, as doing so represents the combination of known prior art elements according to known methods, the results of such a combination being predictable to one of ordinary skill.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Jones as applied to claim 10 above, and further in view of Schwartz (US 8303381).
13. Jones teaches the grinding jig of claim 10, wherein the actuating system comprises a joining actuator (pin 12, Jones figs. 1-2). Jones does not teach that the actuating system comprises a separating actuator, wherein the separating actuator is positioned between the joining actuator and the first and second support legs.
However, Schwartz teaches a grinding jig (2) having two halves (10,12) comprising clamping portions (22,24) and support portions (38,40, Schwartz fig. 3); and an actuating system comprising a joining actuator (14) and a separating actuator (18, see Schwartz fig. 3, 2:54-67, and 3:35-45), wherein the separating actuator is positioned between the joining actuator and the first and second support portions (18 is between 14 and supports 38,40; see Schwartz fig. 3).
It would have been obvious to one of ordinary skill in the art to modify the grinding jig of Jones according to the teachings from Schwartz regarding an actuating system such that it included a separating actuator positioned between the joining actuator and the first and second support legs, as doing so would improve clamping and stabilize the clamping members (Schwartz 3:35-45).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Keska (US 7182678), Sessoms (US 4497142), Haile et al. (US 3924360), Keller (US 2562618), Connerat (US 2189883), and Warner (US 1770538) teach relevant structures of sharpening jigs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN R ZAWORSKI whose telephone number is (571)272-7804. The examiner can normally be reached Monday-Thursday 8:00-5:00, Fridays 9:00-1:00.
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/J.R.Z./ Examiner, Art Unit 3723
/MONICA S CARTER/ Supervisory Patent Examiner, Art Unit 3723
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