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 (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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,083,609. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 2 of U.S. Patent No. 12,083,609 teach a mobile handheld machine saw having a saw assembly, a scoring assembly, and a scorer depth setting device.
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 2-10, 13-17, 21, and 23 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 3 recites the limitations "the actuation acceptor" and “the actuation generator”. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitations "the guide link". There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitations "the guide device". There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitations " the ratio of an external diameter of the saw tool", “the saw drive motor”, “the external diameter of the scoring tool”, and “the scorer drive motor” . There is insufficient antecedent basis for these limitations in the claim. Furthermore, the language of claim 26 is confusing.
Regarding claims 2, 3, 4, 5, 10, 13, 15, 16, 17, 21, and 23, there term “and/or” is confusing.
The claims are full of informalities as shown above. The Applicant is required to review the entire claim set to make corrections that the Examiner may not be aware of.
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.
Claims 1, 2, 11-13, 15, 20, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bishop (5,724,740).
Regarding claim 1, Bishop teaches a mobile handheld machine saw having a saw assembly, which has a saw toolholder (shaft where the blade is mounted on) for a saw tool 82, and a saw drive motor 90 for driving the saw toolholder, and having a guide device 12, which has a guide body having a guide surface extending along a longitudinal axis for guiding the handheld machine saw along a working direction on a workpiece or a guide rail and, on its upper side opposite to the guide surface, the saw toolholder as a whole is movably mounted by means of a saw depth setting bearing (32 or 36) between an upper depth setting position and at least one lower depth setting position, in which the saw toolholder is adjusted closer to the guide surface than in the upper depth setting position, so that the saw tool, to introduce a saw cut into the workpiece, protrudes farther from the guide surface in the lower depth setting position than in the upper depth setting position,
wherein the hand-held machine saw further comprises a scoring assembly, arranged in front of the saw assembly on the guide device with respect to the working direction, having a scorer toolholder for a scoring tool 68 and having a scorer drive (74, 72, 66) for driving the scorer toolholder, which is movably mounted on or with respect to the guide device by means of a scorer depth setting bearing 30, which is separate from the saw depth setting bearing, between at least one active position, in which the scoring tool arranged on the scorer toolholder protrudes from the guide surface to introduce a score, which is upstream in the working direction from a saw cut to be introduced, into the workpiece, and an inactive position, in which the scoring tool is adjusted behind the guide surface, and
wherein the scoring assembly is configured to introduce the score using the scoring tool into an upper side surface of the workpiece, and the saw assembly is configured to introduce the saw cut using the saw tool from a lower side surface of the workpiece opposite the upper side surface, the upper side surface of the workpiece being closer to the guide surface of the guide device than the lower side surface of the workpiece, and
wherein the saw depth setting bearing is spaced a longitudinal distance along the guide body with respect to the working direction from the scorer depth setting bearing.
See Figs. 1-4.
Regarding claim 2, a scorer depth setting device 16 is best seen in Fig. 1.
Regarding claim 11, a saw depth setting device having a depth stop holder 94 is best seen in Fig. 3.
Regarding claim 12, a guide link 54 is best seen in Fig. 3.
Regarding claim 13, the saw depth setting bearing 32 being a pivoting bearing is best seen in Fig. 1.
Regarding claim 15, the saw depth setting bearing 36 behind the saw tool holder is best seen in Fig. 1-2.
Regarding claims 20 and 21, a scorer positioning device 16 is best seen in Fig. 1.
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 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Bishop (5,724,740) in view of Nicholson (2013/0318801).
Regarding claims 16 and 17, Bishop teaches the invention substantially as claimed except for the saw assembly having miter bearing.
Nicholson teaches a saw assembly having a miter bearing 38 for making miter cuts. See Fig. 2.
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the claimed invention to provide the saw assembly of Bishop a miter bearing as taught by Campbell for making miter cuts.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Bishop (5,724,740) in view of Albery (4,353,165).
Bishop teaches the invention substantially as claimed except for a saw assembly spring arrangement in the upper depth setting position.
Albery teaches a saw assembly having a saw assembly spring arrangement 21 in the upper depth setting position for setting forth a default height of a saw blade. See Fig. 1.
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the claimed invention to provide the saw assembly of Bishop a saw assembly spring arrangement in the upper depth setting position as taught by Albery for setting forth a default height of a saw blade.
Allowable Subject Matter
Claims 19 and 22-28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 3-10 and 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 27-28 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 2 is allowable for setting forth the actuation acceptor of the driving device is engaged or in contact with the actuation generator of the driving device, and the scorer depth setting means for setting the actuation distance are designed so that by setting the actuation distance, the distance of the scorer toolholder to the guide device or the guide surface and/or the penetration depth of the scoring tool into the workpiece is settable or is set in the at least one active position.
Claim 14 is allowable for setting forth the depth setting axis of the scorer depth setting bearing is arranged between the scorer toolholder and the saw toolholder on the guide device.
Claim 19 is allowable for setting forth a scoring assembly arrangement different from a spring arrangement for the saw assembly.
Claim 22 is allowable for setting forth the saw assembly and the scoring assembly each having its own motor.
Claims 24 and 27 are allowable for setting forth an electrical wire connection between the saw assembly and the scoring assembly for supplying power to the scoring assembly.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHONG H NGUYEN whose telephone number is (571)272-4510. The examiner can normally be reached M-F: 8-5.
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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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/PHONG H NGUYEN/Examiner, Art Unit 3724