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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-5, drawn to a tool, classified in B23D61/006.
II. Claim 6, drawn to a method for cutting a slot, classified in B23D61/006.
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the process as claimed can be practiced by a materially different apparatus such as a different cutting tool.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Robert Smith on 1/6/2025 a provisional election was made without traverse to prosecute the invention of Group I, drawn to claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Claim 6 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: TRADESMEN' S APPARATUS AND METHOD TO ACCESS THE SPACE BEHIND A WALLBOARD.
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 2 and 3 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 2 recites the limitation "said 1st and 2nd planar cutters" in lines 3-4 without first introducing “1st and 2nd planar cutters” in claim 2 or claim 1, on which claim 2 depends. For purposes of examination, the examiner will treat the “1st and 2nd planar cutters” as being the same feature as the 1st and 2nd oscillating saw blades. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "said planar support" in lines 1-2 without first introducing “a planar support” in claim 3 or claim 1, on which claim 3 depends. There is insufficient antecedent basis for this limitation in the claim.
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horst Holzkämper (DE 202022000461 U1 – hereinafter Holzkämper).
Regarding claim 1, Holzkämper teaches a tool for use with an associated oscillating multitool which comprises: an elongated oscillating saw blade tool (Fig. 1) having 1st and 2nd axial extremities (Fig. 1, axial extremities on either end in the vertical direction as shown in Fig. 1, where the first axial extremity is the top one in the vertical direction and the second axial extremity is the bottom one); a mounting portion (Fig. 2, Tool Holder 14) configured to center the tool for oscillation about a rotation axis proximate to the 1st axial extremity thereof (Abstract – examiner interprets this to be a recitation of intended use, and finds that the Tool Holder 14 is capable of centering the tool during oscillation about a rotational axis when coupled with an appropriate oscillating multitool); a saw blade assembly comprising 1st and 2nd planar oscillating saw blades (Fig. 1, Saw Blades 1) disposed in spaced mutually parallel relationship (Fig. 1 and 2, the blades are seen to be parallel and spaced apart), each of said 1st and 2nd oscillating saw blades having a plurality of peripheral cutting teeth proximate to the 2nd axial extremity thereof distal to said 1st axial extremity (Fig. 2, Cutting Teeth 11).
Regarding claim 2, Holzkämper further teaches an elongated tool as described in claim 1 further including a planar support (Fig. 1, Spacer Elements 2) intermediate said 1st and 2nd planar oscillating saw blades (Fig. 1, Saw Blades 1) to stabilize the respective positions of said 1St and 2nd planar oscillating saw blades (Fig. 2 – examiner interprets this to be a recitation of intended use, and finds that the Spacer Elements 2 are capable of stabilizing the respective positions of the 1st and 2nd planar blades).
Regarding claim 3, Holzkämper further teaches an elongated tool as described in claim 1 wherein a planar support (Fig. 1, Spacer Elements 2) is disposed in perpendicular relationship to each of said 1st and 2nd planar oscillating saw blades (Fig. 1, the side walls of the Spacer Elements 2 extend perpendicularly to the main faces of Blades 1).
Regarding claim 4, Holzkämper further teaches an elongated tool as described in claim 1 wherein each of said 1st and 2nd oscillating saw blades have a plurality of plunge cutting optimized teeth (Fig. 2, Cutting Teeth 11; Abstract).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Horst Holzkämper (DE 202022000461 U1 – hereinafter Holzkämper).
Regarding claim 5, Holzkämper further teaches an elongated tool as described in claim 1 wherein each of said 1st and 2nd oscillating saw blades have a plurality of teeth and the tips of all the teeth at one axial extremity of the tool are coincident with a virtual curvilinear plane (Fig. 2, the tips of Teeth 11 are shown to lie on a shared curvilinear plane). Holzkämper does not disclose the virtual curvilinear plane as having a center of curvature coincident with the axis of movement of said other axial extremity. However, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teeth tips to define a virtual curvilinear plane which has a center of curvature coincident with the axis of movement of said other axial extremity as doing so would require only a change in shape of the outline defined by the teeth of the blades, and a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLA LORRAINE KEENA whose telephone number is (571)272-1806. The examiner can normally be reached 7:30am - 5:00 pm ET.
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.
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/ELLA L KEENA/Examiner, Art Unit 3724 /BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724