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 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.
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, “at least a portion of the housing extends into the recess in the wheel and supports the first bearing” of claim 21 must be shown or the feature(s) canceled from the claim(s). 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification does not appear to provide written support of newly added claim 21 “at least a portion of the housing extends into the recess in the wheel and supports the first bearing”.
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 21 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.
-Regarding claim 21, the phrase “at least a portion of the housing extends into the recess in the wheel and supports the first bearing” is new matter. Examiner notes the specification and drawings do not appear to provide written or drawing support for the current claim limitation.
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 21 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.
-Regarding claim 21, the phrase “at least a portion of the housing extends into the recess in the wheel and supports the first bearing” is unclear. Examiner notes it is unclear as to the bounds of the housing (14) as currently shown in the Figures. The specification does not appear to describe any structural component of the housing extending into the recess as claimed, and the drawings to not specifically note any housing component or portion of (14) that provides for the structural limitation as claimed. For the purposes of examination, the limitation will be treated as any component capable of providing “housing” or connected to the housing that may extend into the recess of the wheel.
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, 6-11 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over McIntosh (U.S. Patent Pub. No. 2004/0158996) in view of Dean (U.S. Patent No. 6,442,848).
Regarding claim 1, McIntosh teaches a handheld band saw (50), comprising:
a housing (52) (Figures 5-6);
a handle (92) supported by the housing and configured to be grasped by a user during a cutting operation (Figures 5-6);
a motor (76,104) supported by the housing (Figure 6; Paragraphs 0041-0042);
a drive wheel assembly (100) at least partially disposed within the housing (Figure 5; Paragraphs 0042-0043);
a saw blade (150) driven by the drive wheel assembly and configured to cut a workpiece during the cutting operation (Figure 5; Paragraph 0046); and
a drive assembly (106,108,110) positioned between the motor and the drive wheel assembly, wherein the drive assembly is configured to transfer torque from the motor to the drive wheel assembly, causing the drive wheel assembly and the saw blade to rotate, wherein the drive wheel assembly includes a wheel (114) having a recess in which a portion of the drive assembly is received to shorten an overall length of the motor, the drive assembly, and the drive wheel assembly (Figures 5 and 9a-9b; Paragraphs 0042-0043; See recessed portion between the outer wall of drive wheel 114 and internal gear 116).
Regarding claim 1, McIntosh teaches the handheld band saw of claim 2, wherein the drive assembly includes a spindle (108,110 Figure 9b) to which the wheel is coupled for co-rotation (Paragraphs 0042-0043).
McIntosh does not provide a first bearing that rotatably supports the spindle, and wherein the first bearing is at least partially received within the recess in the wheel.
Dean teaches it is known within the art of handheld saws to incorporate a motor with a spindle (60) including a bearing assembly (64)(Figure 1 and Col. 5, Lines 34-49).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the device of McIntosh to incorporate the teachings of Dean to provide the spindle with a bearing assembly. In doing so, it allows for a reduction in friction during use.
Thus, the modified device of McIntosh in view of Dean provides wherein the drive assembly includes a spindle (108,110 McIntosh Figure 9b) to which the wheel is coupled for co-rotation (McIntosh Paragraphs 0042-0043) and a first bearing (64 Dean Figure 1) that rotatably supports the spindle, and wherein the first bearing is at least partially received within the recess in the wheel (McIntosh Figures 9a-9b).
Regarding claim 2, the modified device of McIntosh teaches the handheld band saw of claim 1, wherein the wheel surrounds the portion of the drive assembly that is recessed within the recess (McIntosh Figure 9a).
Regarding claim 4, the modified device of McIntosh teaches the handheld band saw of claim 3, wherein the wheel surrounds the first bearing that rotatably supports the spindle (Dean Figure 1 and McIntosh Figures 9a-9b).
Regarding claims 6 and 7 the modified device of McIntosh must have an overall length of the motor, the drive assembly, and the drive wheel assembly however the prior art is silent as to the exact dimensions. McIntosh teaches all of the elements of the current invention except; wherein the overall length of the motor, the drive assembly, and the drive wheel assembly is between 2 inches and 3 inches or wherein the overall length of the motor, the drive assembly, and the drive wheel assembly is approximately 2.5 inches.
Regarding claims 6 and 7 McIntosh discloses the invention essentially as claimed as discussed above. McIntosh must have an overall length of the motor, the drive assembly, and the drive wheel assembly. However, McIntosh does not expressly disclose the overall length of the motor, the drive assembly, and the drive wheel assembly is between 2 inches and 3 inches or wherein the overall length of the motor, the drive assembly, and the drive wheel assembly is approximately 2.5 inches.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of McIntosh to have the overall length of the motor, the drive assembly, and the drive wheel assembly is between 2 inches and 3 inches or wherein the overall length of the motor, the drive assembly, and the drive wheel assembly is approximately 2.5 inches. since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984).
In the instant case, the device of McIntosh would not operate differently with the claimed overall length and since the motor, drive assembly and drive wheel assembly cooperate are intended to reside within the housing with an overall length the device would function appropriately having the claimed overall length. Further, applicant places no criticality on the range claimed, indicating simply that the overall length “may” be within the claimed ranges (specification pp. [0023]).
Regarding claim 8, the modified device of McIntosh teaches the handheld band saw of claim 1, and wherein the housing includes a deck (54) that at least partially covers the wheel (McIntosh Figure 5; Paragraphs 0037-0038), and wherein the deck includes a motor support portion (52) and a separate motor cover (112) that together enclose the motor (McIntosh Figure 6).
Regarding claim 9, the modified device of McIntosh teaches the handheld band saw of claim 8, wherein the motor cover extends from the deck (McIntosh Figure 6).
Regarding claim 10, the modified device of McIntosh teaches the handheld band saw of claim 1, further comprising a battery (99) removably coupled to the handle (92), wherein the battery, when coupled to the handle, is configured to provide power to the motor (McIntosh Figure 6, Paragraphs 0013 and 0041).
Regarding claim 11, the modified device of McIntosh teaches the handheld band saw of claim 10, further comprising a trigger (96) disposed adjacent a gripping portion (Portion near element 92 noting handle assembly) of the handle, wherein power from the battery is supplied to the motor when the trigger is actuated (Figure 6; Paragraph 0040).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over McIntosh (U.S. Patent Pub. No. 2004/0158996) in view of Dean (U.S. Patent No. 6,442,848) as applied to claim 1 above, and further in view of Warrick (U.S. Patent No. 3,538,964).
Regarding claim 5, the modified device of McIntosh teaches the handheld band saw of claim 1, except further comprising: a second bearing rotatably supporting a rotor of the motor; and a fan driven by the motor, wherein the fan includes a recess in which the second bearing is at least partially received to shorten the overall length of the motor, the drive assembly, and the drive wheel assembly.
Warrick teaches it is known in the art of motor driven saws to incorporate a first bearing (139) and a second bearing (122) rotatably supporting a rotor (141) of a motor (Figure 4); and a fan (144, 142, 143) driven by the motor, wherein the fan includes a recess in which the bearing is at least partially received to shorten the overall length of the motor (Figure 4)
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have further modified the device of McIntosh to incorporate the teachings of Warrick to provide multiple bearings. In doing so, it allows for a reduction in friction during use.
Thus, the modified device of McIntosh further in view of Warrick provides a second bearing (122) rotatably supporting a rotor of the motor (Warrick Figure 4); and a fan driven (144,142,143) by the motor, wherein the fan includes a recess in which the second bearing is at least partially received (Warrick Figure 4) to shorten the overall length of the motor, the drive assembly, and the drive wheel assembly (Dean Figure 1 and McIntosh Figures 9a-9b).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over McIntosh (U.S. Patent Pub. No. 2004/0158996) in view of Dean (U.S. Patent No. 6,442,848) as applied to claim 1 above, and further in view of Elger (U.S. 2011/0119935).
Regarding claim 21, the modified device of McIntosh teaches the handheld band saw of claim 1 (As best understood in light of the 112 rejections above), but does not appear to provide wherein at least a portion of the housing extends into the recess in the wheel and supports the first bearing.
Elger teaches it is known in the art of handheld band saws to incorporate a plurality of bearing and bearing supported by a housing component throughout the bandsaw device (Paragraphs 0029-0032 and Figures 6-10).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have further modified the device of McIntosh to incorporate the teachings of Elger to provide the bearings with support from the bandsaw housing. In doing so, it allows for the bearings to be placed as needed within the device to allow for the bearings to be supported and interact with the desired component to reduce friction during use.
Response to Arguments
Applicant's arguments filed 05/21/2029 have been fully considered but they are not persuasive. Applicant argues “one of ordinary skill in the art would not be motivated to modify the cut-off saw 50 of McIntosh to add a bearing to the assembly of the output shaft 108 and the gear 110. As shown above in FIG. 9A of McIntosh, the alleged wheel (i.e., the drive wheel 114) has an internal gear 116 within its interior, which is engaged by the gear 110 (see paragraph 0043). As such, adding a bearing to the assembly of the output shaft 108 and the gear 110 of McIntosh would necessarily obstruct the meshed engagement between the gear 110 and the internal gear 116, thereby dissuading one or ordinary skill in the art from making the Examiner's proposed modification of McIntosh”. Examiner disagrees. As noted in the rejection above, one of ordinary skill would look to bearings, and be able to appropriately add them to the desired locations for the purposes of reducing friction. Examiner has further added Elger (U.S. 2011/0119935) as a teaching reference to newly added claim 21 with similar rationale that it is known in the art of handheld band saws to place bearings near rotating shafts throughout the device to reduce the friction between moving components and improve overall machine efficiency.
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 RICHARD D CROSBY JR whose telephone number is (571)272-8034. The examiner can normally be reached Monday-Friday 8:00-4:00.
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/RICHARD D CROSBY JR/ 06/09/2026Examiner, Art Unit 3724
/BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
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