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.
Specification
The disclosure is objected to because of the following informalities:
Paragraphs [15]-[27] just show the word “(Cancelled)”. This word must be deleted in each paragraph.
Reference character “22” has been used to designate a friction portion (paragraph [0039]) and a limiting block (paragraph [0051]).
Appropriate correction is required.
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 1-4, 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 lines 5-8, how the transmission plates, connecting plates, and the blade are arranged/connected is confusing. The connecting plates connect the transmission plates but then the blades are at two sides of the transmission plates. Are the connecting plates not at the two sides of the transmission plates? These lines need to be amended so it is clear the arrangement follows what is shown in Figure 1.
With regards to claims 1 and 4, the terms “top” “bottom”, “above”, and “upward” are unclear in that these terms are dependent upon an unclaimed indefinite orientation. The assembly is handheld and is capable of being utilized in an infinite number of orientations some of which do not correspond with these terms. Terms must be used that are true regardless of orientation.
With regards to claim 1, the first and second operating states are unclear. As written, the chainsaw comprises both states at the same time which is not supported. The chainsaw assembly cannot alternate between these states or comprise both states at the same time. In order for the second state to even exist, the chainsaw has to perform indefinite intended uses to the point that the second state does exist and when/if it reaches the second state, the positively recited first state will be eliminated along with the positively recited gap. The chainsaw assembly having the gap and defining the first state cannot ever be in the second state. If the intended uses performed does not completely eliminate the gap, the chainsaw cannot enter the second state which adds to the confusion. While the same chainsaw is used, the chainsaw has to have completely different structures in order to be in the first or second states and these structures cannot and do not overlap. Meaning the saw cannot return to the first state once in the second state. Saws sometimes have different power modes which allows for a user to switch between a high-speed state and a low-speed state. In this case, the saw incorporates the same structural setup but also incorporates a switch that allows for the saw to operate in either speed state or go from one speed state to the other and then return. That is not the case for the instant invention and, therefore, the saw claim is unable to comprise both states. Since the gap is positively claimed, the saw is only able to be in the first state because a positively recited limitation cannot be positively claimed and then not exist later in the claim. Basically, since the saw has a first structural setup to be in the first state and must transform to alternate second structural setup that eliminates a necessary structure from the first setup to be in the second state, the same saw structures cannot comprise both the first and second state.
With regards to claim 6, the phrase “when the supporting portion of each of the plurality of connecting plates come into contact with the top surface” is unclear. Claim 1 requires “a gap defined between the supporting portion and the top surface”. If the portions contact the 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. Claim 6 has the same issues with the second state as claim 1 does above.
Claims
It is to be noted that claims 1-4, 6-8, and 10 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 filed 5-22-26 have been fully considered but they are not persuasive. The Examiner position remains the same. The saw cannot comprise both the first state and the second state as claimed in claim 1. Claim 1 requires a “gap” which is necessary for the existence of the first state. The second state must eliminate the positively claimed gap so that the second state can exist. A positively recited gap cannot exist and not exist at the same time and therefore the saw cannot claim both the first state and the second state. The Examiner attempted to better explain his position in the rejection above.
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 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.
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 D Ashley can be reached on (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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02 February 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724
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