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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
Reference character “22” has been used to designate a friction portion (paragraph [0039]) and a limiting block (paragraph [0051]).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because:
The Figures have reference numerals of all different sizes. Figures 3, 4, 5, and 8 have larger labels and smaller labels. For example, in Figure 3, the “3” on the left is larger than the other “3”s In Figure 4, the “21” and “5” are larger than the “R”s. All reference labels need to be the same size.
Figures 3, 4, 5, and 6 have very light lines probably due to the submission process (see below). These Figures need to be resubmitted with darker lines.
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Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-4, 6-8, and 10 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.
With regards to claim 1 and the specification, the terms “transmission sheet” and “connection sheet” are unclear. Mainly, the term “sheet” is not understood. It is understood Applicant is allowed to be their own lexicographer but, in this case, the term “sheet” inherently has structure associated therewith that does not correspond with items 2 and 3. It is unclear how items 2 and 3 alone can be considered sheets. The term “sheet” needs to be replaced with a better descriptive term so it is clear how to interpret (i.e. link).
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 1-4, 6-8, and 10 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
With regards to claim 1, the terms “transmission sheet” and “connection sheet” are unclear. It is unclear what structures can and cannot be considered a sheet.
With regards to claim 4, the phrase “protruding outward is arranged at an inner end” is unclear. It is believed this “end” would be an “outer end”. The limitation will be interpreted as “an outer end” in the art rejection below.
With regards to claim 4, the phrase “more outward than the limiting block” is unclear. It is unclear which one of the limiting blocks is being referenced. Should the phrase be replaced with “more outward than the limiting blocks” because the blades are more outward than all of the blocks?
With regards to claim 6, the phrase “when the supporting portions of the connecting sheets come into contact with the peripheral surface” is unclear. Claim 1 requires “a gap formed between the supporting portions and the peripheral surface”. If the portions contact the peripheral surface, where is the gap required by claim 1? The claim 1 gap cannot exist if the connecting sheets come into contact with the peripheral surface. Both of these structural relationships cannot exist at the same time.
With regards to claim 8, the phrase “a distance between the supporting portions and the peripheral surface” is unclear. It is unclear if the distance represents the same or a different dimension than the claim 1 gap between the same items. As written, there is a distance and a gap between these structures. The distance is measuring the gap and claim 8 needs to acknowledge the gap.
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 1, 2, 4, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Harfst et al. (7,293,491) in view of Baratta (2012/0176806).
With regards to claims 1, 2, 4, 8, and 9, Harfst et al. disclose the invention including a chainsaw assembly (Fig. 1) having a guide plate (22), a saw chain (10) arranged on the guide plate to rotate along a periphery of the guide plate for cutting (29), the saw chain includes transmission sheets (18) connected by connecting sheets (16), and blades arranged between and connected to the transmission sheets (14), the transmission sheets each include a friction portion (30) inserted into a guide plate slot (24) in the periphery of the guide plate (Figs 1-3), the connecting sheets each include a supporting portion (34), a gap is formed between the supporting portions and a peripheral surface of the guide plate when the chain is initially arranged on the guide plate (36), an inner surface of the guide plate slot is an arc surface (24 arcs around the periphery of the guide bar to allow the chain to travel around the guide bar as known in the chainsaw art), a limiting block protruding outward is arranged at an inner (outer) end of at least some of the transmission sheets (in Fig. 1, top projection on 18), the blades extend more outward than the limiting block (14, 18, Fig. 1), the saw chain is initially arranged on the guide plate a distance between the supporting portions and the peripheral surface of the guide plate (36), and a depth of the guide plate slot (Fig. 2).
However, with regards to claim 1, Harfst et al. remain silent and, therefore, fail to disclose the guide plate is non-metal.
Baratta teaches it is known in the art of chainsaws to incorporate a guide plate made from non-metal (abstract lines 1-2). It would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the guide plate out of any reasonable material including non-metal materials, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to have provided Harfst et al. with the non-metal guide plate, as taught by Baratta, because the substitution of one known element for another would have yielded predictable results and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results.
However, with regards to claims 8 and 10, Harfst et al. in view of Baratta fail to disclose the distance is 0.51 mm and the depth is 3.16 mm.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have utilized any reasonable values including the claimed values, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It would have been an obvious matter of design choice to have utilized any reasonable size, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Therefore, it would have been an obvious matter of design choice to modify the device of Harfst et al. in view of Baratta to obtain the invention as specified in claims 8 and 10. The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Harfst et al. (7,293,491) in view of Baratta (2012/0176806) as applied to claim 1 above, and further in view of Osborne et al. (8,342,163).
Harfst et al. in view of Baratta disclose the invention but fail to disclose chamfers with a radius respectively arranged at two ends of the friction portion of each of the transmission sheets.
Osborne et al. teach it is known in the art of chainsaw transmission sheets (12) to incorporate chamfers with a radius respectively arranged at two ends of the friction portion of each of the transmission sheets (Fig. 1B). It would have been well within one’s technical skill to have utilized any known transmission sheet shape as long as the shape allows for the chain to be driven. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to have provided Harfst et al. in view Baratta with the chamfers, as taught by Osborne et al., because the substitution of one known element for another would have yielded predictable results and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results.
However, with regards to claim 3, Harfst et al. in view of Baratta further in view of Osborne et al. fail to disclose the radius is 0.1 mm to 10 mm.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have utilized any reasonable values 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. It would have been an obvious matter of design choice to have utilized any reasonable size including the claimed range, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Therefore, it would have been an obvious matter of design choice to modify the device of Harfst et al. in view of Baratta further in view of Osborne et al. to obtain the invention as specified in claim 3. The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense.
Claims
It is to be noted that claims 6 and 7 have not been rejected over prior art. It may or may not be readable over the prior art but allowability cannot be determined at this time in view of the issues under 35 USC § 112. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection is not specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON DANIEL PRONE whose telephone number is (571)272-4513. The examiner can normally be reached on Monday-Friday: 7:00 am-3:00 pm.
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02 February 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724