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 under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the positioning aid (see claim 10) must be shown or the feature(s) canceled from the claim(s). If the feature is shown, the feature should be provided with a reference character. No new matter should be entered.
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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“positioning aid” as recited in at least claim 10 (first, “aid” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “positioning”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “positioning” preceding the generic placeholder describes the function, not the structure, of the aid)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 10 is 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. The “positioning aid” as required by claim 10 has been interpreted under 35 U.S.C. 112(f), but has not been described in such a way as to apprise one of ordinary skill in the art what structure is intended. Although the positioning aid “allows the sprocket-wheel cover to find its position with precision when being mounted” (see paragraph [0013] of instant specification), there is no provided structure which describes how this effect is achieved.
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.
Claim 10 is 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 limitation “positioning aid” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. As discussed above, the structure which performs the function of positioning the sprocket wheel cover has not been disclosed. As a result, it is unclear how this function is achieved. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
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.
Claims 1-3, 6, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Harer (US 20150273721).
Regarding claim 1, Harer discloses a handheld chainsaw (chain saw 1; see fig. 1) comprising: a cutting assembly (guide bar 8 and saw chain 10; see fig. 1); a housing (housing 2; see fig. 1) having a lateral contact surface (see annotated portions of fig. 8 below); a sprocket-wheel cover (sprocket wheel cover 16; see fig. 1); a chain catcher (chain catch 76; see fig. 8) having a catch edge (see annotated portions of fig. 8 below); the chainsaw extending in the direction of a longitudinal axis predefined by said cutting assembly (guide bar 8 extends along longitudinal center axis 9; see paragraph [0036] and fig. 1); said chain catcher being arranged on said sprocket-wheel cover (chain catch 76 can be arranged on sprocket wheel cover 16; see paragraph [0047]); said lateral contact surface defining a contact plane (the lateral contact surface serves as a contact plane; see annotated portions of fig. 8 below); said chain catcher having a free end adjoining said lateral contact surface (when chain catch 76 is arranged on sprocket wheel cover 16, the free end adjoins the lateral contact surface; see annotated portions of fig. 8 below) and, wherein, at least in a region of said free end, said catch edge of said chain catcher has a catch slope (see annotated portions of fig. 8 below) oriented away from said lateral contact surface (the catch slope is at least partially oriented away from the lateral contact surface; see annotated portions of fig. 8 below).
PNG
media_image1.png
477
318
media_image1.png
Greyscale
PNG
media_image2.png
486
322
media_image2.png
Greyscale
Harer does not explicitly disclose that the chain catcher has no form-fitting position holder acting rearwardly in a direction of the longitudinal axis.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Harer to remove the form-fitting position holder and thus make the chain catcher and sprocket wheel cover integral since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art (see Howard v. Detroit Stove Works, 150 U.S. 164 (1993)). It appears that Harer discloses a fastener which holds the chain catcher in place (see fig. 7). However, if the chain catcher were made such that it is integral with the sprocket wheel cover, the fastener would not be necessary. A person of ordinary skill in the art would understand the benefit of making the chain catcher and sprocket wheel cover integral being that fewer parts are required and the structure is more stable (since fewer parts means that there are fewer potential points of failure). For example, in the event of chain breakage, there is no risk that the chain could damage the fastener or cause it to come loose, which could potentially lead to injury to the user. Therefore, in order to reduce the number of parts, increase stability of the device, and improve safety, such a modification would be obvious.
Regarding claim 2, Harer as modified discloses the limitations of claim 1 as described in the rejection above.
Harer as modified further discloses wherein said catch slope is configured in a form of a concave catch hook (the catch slope is formed in a concave manner; see fig. 8).
Regarding claim 3, Harer as modified discloses the limitations of claim 1 as described in the rejection above.
Harer as modified further discloses wherein said catch slope has a first side directed away from said lateral contact surface (when chain catch 76 is arranged on sprocket wheel cover 16, at least a portion of the catch slope is angled away from the lateral contact surface; see annotated portions of fig. 8 above); and, said catch slope is adjoined on said first side by a rectilinear catch-edge section (see annotated portion of fig. 8 below) disposed perpendicularly on said lateral contact surface (the catch-edge section is perpendicular relative to the lateral contact surface; see annotated portion of fig. 8 below).
PNG
media_image3.png
486
339
media_image3.png
Greyscale
Regarding claim 6, Harer as modified discloses the limitations of claim 1 as described in the rejection above.
Harer as modified further discloses wherein said chain catcher is formed in one piece on said sprocket-wheel cover (as modified above, chain catch 76 and sprocket wheel cover 16 are formed integrally; see rejection of claim 1 above).
Regarding claim 8, Harer as modified discloses the limitations of claim 1 as described in the rejection above.
Harer as modified further discloses wherein, away from said chain catcher, said sprocket-wheel cover has a form-fitting position holder acting rearwardly at least in the direction of the longitudinal axis (fastening nuts 65, 68 fix sprocket wheel cover 16 to housing 2 – when saw chain 10 breaks and comes into contact with chain catch 76, fastening nuts 65, 68 will experience a rearward force relative to longitudinal center axis 9; see paragraph [0043] and fig. 6).
Regarding claim 9, Harer as modified discloses the limitations of claim 8 as described in the rejection above.
Harer as modified further discloses wherein said form-fitting position holder is formed by a lug of said sprocket-wheel cover (the form-fitting position holder is formed as fastening nuts 65, 68; see paragraph [0043] and fig. 6), said lug engaging in a corresponding receiver opening of said housing (fastening nuts 65, 68 are received in recess 56 in order to secure sprocket wheel cover 16 to housing 2; see paragraph [0043] and figs. 6, 17).
Regarding claim 10, Harer as modified discloses the limitations of claim 1 as described in the rejection above.
Harer as modified further discloses wherein at least one positioning aid (guide part 51; see figs. 5, 6, and 16) with no form-fitting position holder for said chain catcher acting rearwardly in the direction of the longitudinal axis is formed on said lateral contact surface of said housing (guide part 51 is formed at least partially on the lateral contact surface of housing 2; see fig. 16).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Harer (US 20150273721) in view of Kachi (US 20230099820).
Regarding claim 4, Harer as modified discloses the limitations of claim 1 as described in the rejection above.
Harer as modified does not explicitly disclose wherein a directing slope is positioned on said lateral contact surface of said housing; and, said directing slope at least partially overlaps said catch slope of said chain catcher in a direction of a lateral axis of the chainsaw.
Kachi discloses wherein a directing slope (chain guide 100; see fig. 12) is positioned on said lateral contact surface of said housing (chain guide 100 is positioned on base member 14, which is part of body 4; see paragraph [0042] and fig. 12); and, said directing slope at least partially overlaps said catch slope of said chain catcher in a direction of a lateral axis of the chainsaw (chain guide 100 at least partially overlaps chain catcher 106 in a lateral (left/right) direction; see fig. 13).
It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify Harer in view of Kachi to include a directing slope. Kachi discloses that chain guide 100 is located near the chain catcher (see paragraphs [0064-0065]) and is useful for preventing lateral movement of saw chain 8, which could result in it becoming detached from guide bar 6 (see paragraph [0063]). A person of ordinary skill in the art would understand that including such a structure is beneficial because it further limits undesirable movement of the saw chain, which could cause injury to a user. Therefore, in order to improve safety of the device by limiting lateral movement of the saw chain, such a modification would be obvious.
Regarding claim 5, Harer as modified discloses the limitations of claim 4 as described in the rejection above.
Kachi further discloses wherein, as seen in relation to the longitudinal axis of the chainsaw, said directing slope begins in front of said catch slope of said chain catcher (chain guide 100 begins in front of chain catcher 106; see figs. 12 and 17) and extends to behind said catch slope of said chain catcher (chain guide 100 extends to the rear of chain catcher 106; see figs. 12 and 17).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Harer (US 20150273721) in view of Stieler (US 20150152901).
Regarding claim 7, Harer as modified discloses the limitations of claim 1 as described in the rejection above.
Harer as modified does not explicitly disclose wherein said sprocket-wheel cover is formed from plastic material.
Stieler discloses wherein said sprocket-wheel cover is formed from plastic material (housing section 30, which is formed as a chain wheel cover, may be made from a plastic material; see paragraph [0034]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify Harer in view of Stieler to make the sprocket wheel cover from a plastic material 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 (see In re Leshin, 125 USPQ 416). A person of ordinary skill in the art would be motivated to use plastic for a part of the device housing since it is relatively easy and inexpensive to manufacture, while still providing suitable resistance to outside forces. Therefore, in order to reduce costs and improve ease of manufacturing, such a modification would be obvious.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 20200298327 to Torrey, drawn to a chain guard with chip deflector; US 20060107804 to Annala, drawn to a sawing device and its safety system for precaution of a breaking saw chain; US 5179785 to Nagashima, drawn to a chain saw guide plate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HALEIGH N WATSON whose telephone number is (571)272-3818. The examiner can normally be reached M-Th 530AM-330PM EST.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HALEIGH N WATSON/Examiner, Art Unit 3724 /BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724