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 .
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.
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.
Claim(s) 1-3, 5, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US 4,096,777) in view of Volk (US 4,320,678), Shapiro (US 4,565,192), (Seedhom (US 5,733,289), and Chen (US 5,483,858).
Claim 1 and 2 have been amended to include the term “rod” and clarify the clamping is by the threaded locking rod. The use of threaded rods from a lateral side wall to usefully clamp work is an old and known expedient and therefore applicant should not be permitted to claw this subject matter into a monopoly right, where the alleged invention consists only in the use of known routine elements which should remain available to skillful men.
It has been held that the combination of elements known in the prior art to be used in accordance with their known functions is unpatentable as a matter of law absent a showing that the combination has results which are unexpectedly advantageous over the prior art. Please see Sakraida v. Ag Pro, Inc. U.S. Supreme Court No. 75-110 425 US 273, 189 USPQ 449 (1976), Which states “patent[s] for combination that only unites old elements with no change in their respective functions withdraws what is already known into field of its monopoly and diminishes resources available to skillful men” and [a] patent [which] simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations…are not patentable under standards appropriate for a combination patent”; also see Anderson’s Black Rock, Inc. v. Pavement Salvage Co., Inc. U.S. Supreme Court 396 US 57, 163 USPQ 673 (1969) which states “while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented”. Similarly here, charging elements, cradles, magnets, and shavers are all well known components, and are being used according to applicant in the same manner they are already known to be used.
The Supreme Court in KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. _____(2007) affirmed both Sakraida and Anderson’s requirement that to be patentable a combination needed to provide some synergistic effect. See Slip op. at 13 lines 3-19. Using known elements for their known functions is as a matter of law not patentable, since it removes resources available to skillful men, contrary to U.S. Const., Art. I §8, cl.8. which provides patent monopolies to promote the progress of useful arts. See Slip op. KSR at 24 lines 5-7.
Each of the elements claimed are known as seen in the cited prior art (below); their combination is unpatentable absent a showing that one of ordinary skill would be unable to effect their combination, or their combination provides unexpectedly good results (more than a duplicated effect).
Claim 1 has not been amended to narrow the scope to a “meniscal dovetail slot…” as in the title of the disclosed application. The claims are understood to be directed broadly to all guides capable of guiding saws, and considerations of how it is known to clamp or lock workpieces in place.
As explained previously, the art known and cited shows that guide slots are known to be used to guide saws relative to workpieces mounted on bases. This is disclosed more directly hereinbelow, mirroring the discussion in the Non-Final rejection dated 01/28/2026:
Regarding claim 1, Adams discloses a device comprising: a base (11); a first sidewall (71) extending vertically from the base (see figure 1); a second sidewall extending vertically from the base (51 figure 1), wherein the second sidewall is spaced away from the first sidewall at a fixed distance (see figure 1 showing a substantial gap between the sidewalls for the placement of workpieces to be cut).
Adams further discloses a third sidewall (61 figure 1) extending vertically from the base, wherein the third sidewall is coupled to the first sidewall and the second sidewall (via the base—the term “coupled” is broad and by plain meaning encompasses the depicted arrangement).
Adams discloses a locking member (‘stop clamp’) as previously discussed (in the action dated 1/28/2026). This is different to a threaded rod as now claimed: “wherein the locking member comprises a rod that extends through the second sidewall.”
Threaded rods laterally engaged through upstanding walls are known for holding work to be cut
In the art of holding work to be cut, it is ubiquitously known to clamp the work. The nature of the clamp itself and the direction of the clamping is one of geometry, and is largely predicated on the nature of the work. The nature of the work in the present claims is unspecified, so any known work to be cut is relevant to the question of what those of ordinary skill know about clamping it. Evidence of the ubiquity of this is shown below.
Volk (US 4,320,678) shows a lateral clamp block 12, figure 2, 12f figure 6, mounted on and guided by a spring biased rod 12e figure 6. The point is to provide a lateral biased engagement point to hold a work (10) in place for cutting through a slot guide (2/2/2a figures 1-2 are a slot guide for a bladed cutting tool- the same as applicant). This is an example of a “locking member …rod extends “ through a side wall. The particular side wall is not restricted—the Volk device is teaching lateral clamping by rod through a side wall in a general sense. Note too, See KSR International v. Teleflex Inc. 550 U.S. ____(2007) slip op at 13, lines 22-34 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious.” Here, Volk is showing the same technique as applicant, and such lateral clamping with rod based clamp is generally applicable in the art of holding down workpieces for cutting.
Further evidence consists in Shapiro (US 4,565,192), which discloses a guide slot 22 for a blade to cut work (as shown in figure 9) with first and second sidewalls (14, 12, figure 9) and specifically a threaded rod (32) which extends to a lateral sidewall 14, in order to clamp the work by movable pins 28’; “The rotational mounting of the screw 32 in the leg extension is well-known, and allows for rotation of the screw but prevents longitudinal axial movement thereof relative to its mounting. Thus, it can be seen in FIG. 1, that upon rotation of the screw 32 in one direction, or the other, the mounting plate, and, therefore, the pointed prongs 28', will move either toward or away from the fixed clamping member 24.” (Col 6 line 18+).
Further evidence consists in Seedhom (US 5,733,289) which shows an upstanding wall 25 (figure 5) a threaded rod 22 (figure 5) with an engagement tip 23 designed to engage and hold and clamp a workpiece in a workpiece holding jig configured to permit a guided cutting of the work (‘reamer’ 10 cuts into and harvests from work 20 inter alia; e.g. 45 figure 22) shown in figure 8. IN this case, the clamping and gripping is for a patella, but the point and knowledge implied is broader—where a work needs to be held, those of ordinary skill know to use a threaded rod through a wall: “The gripping means also include an adjustable gripper device 22 at an opposite end of the recess 17, and which has a screw thread to enable the spiked or pointed end 23 to be driven into the material of the patella 18 to complete the anchorage of the bracket 16 to the patella prior to commencement of a harvesting operation.” (Col. 5 line 30+).
Further evidence consists in Chen (US 5,483,858) which shows an upstanding wall 22 fixed on a base 11 (See figure 1) and further shows a threaded rod 21 used to clamp a workpiece (column 1 line 43+) between 27 and 29 (figure 4) with respect to a fixed path for a cutter (shown in the blade of figure 1, which is entered into a slot 12 during a cutting step. Rod 21 is rotated in wall 22 which shifts the clamping plate 27 and permits the clamping restraint of the desired workpiece to be held for cutting.
It would have been obvious to one of ordinary skill in the art to add a rotating threaded rod through any of the walls of Adams (or indeed adding additional walls), since doing so is the implementation of a known technique of clamping work—evidenced to be well known by Chen, Seedhom, Shapiro, and Volk. As noted above, under the flexible inquiry of Graham and KSR, the use of old features in combination is not patentable, since it takes normal features out of the hands of skillful men. Unless the use of a threaded rod to clamp work would have required undue experimentation, or has unexpected results when added to Adams, it is not a patentable difference, shown by the recognition in the jig/clamp/cutter art above cited showing that clamping with a lateral threaded rod through a wall in order to hold work in place during a guided cutting is well known and available to the public.
Adams further discloses a removable cutting guide including a slotted through-hole (35/35 figure 2, figure 1, inter alia), wherein the removable cutting guide is configured to be removably coupled to the first sidewall and the second sidewall (by 25, 25 figure 1, figure 2; discussed as “bolted” into the device end). Note for clarity in reading Adams—25 is used variously as the slot, OR as the end uprights used to fasten the guide and sleeves 35 to the device..
Regarding claim 2, Adams as modified with respect to claim 1 above has already incorporated a threaded rod for clamping as claimed herein, and requires no additional commentary.
Regarding claim 3, Adams as modified with respect to claim 1 above further discloses wherein a longitudinal axis of the threaded rod is offset from the slotted through-hole ( because the location is a matter of choice; See also at least Seedhom figure 5 showing the cutter path offset relative to the threaded rod; and see Chen which has cutting path 12 offset relative to the clamping path of the threaded rod therein). Additionally, bear in mind that See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 80 USPQ2d 1641 (Fed. Cir. 2006), which states that “the suggestion test is not a rigid categorical rule. The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself. In re Dembiczak, 175 F.3d 994, 999 [50 USPQ2d 1614] (Fed. Cir. 1999). As we explained in Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472 [43 USPQ2d 1481] (Fed. Cir. 1997), ‘there is no requirement that the prior art contain an express suggestion to combine known elements to achieve the claimed invention. Rather, the suggestion to combine may come from the prior art, as filtered through the knowledge of one skilled in the art.’ “ (emphasis added).
Here, shifting the clamp location to one side or the other, or changing it from lateral to vertical, etc. in light of the prior art’s breadth of available clamping locations suggested, means that all the positions one would like to clamp work which are known in the art should be available to those of ordinary skill. Additionally, duplication of clamps along the length of the fence would also be obvious, and would implicate a showing of offset, since duplication of the clamp would distribute the load on the work, and would increase the available clamping force to hold work in place, which is a motivation found in the nature of the problem of clamping work generally, as expressed in ADAMS as well as the other cited art.
Regarding claim 5, Adams further discloses the third sidewall is perpendicular to both the first sidewall and the second sidewall (see figure 1).
Regarding claim 9, Adams implies the presence of “the base includes a third groove, and wherein the third groove is vertically aligned with the slotted through-hole when the removable cutting guide is removably coupled to the first sidewall and the second sidewall.” Because of the saw depicted in figure 1. Without a slot as claimed—the saw would not function as described. Because the saw is shown, Adams discloses that there is a slot—at the location and alignment claimed.
Regarding claim 11, as claimed—the clause “further comprising an opening opposite the third sidewall” means a void or space adjacent to the sidewall. Because Adams 61 is adjacent to an open space (facing left in figure 1) the clause is clearly met by Adams.
Claim(s) 4, 6-8, and 10 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams in view of Volk (US 4,320,678), Shapiro (US 4,565,192), (Seedhom (US 5,733,289), and Chen (US 5,483,858) as applied to claim 1 (inter alia) above, and in view of further discussion of Volk (US 4,320,678).
Regarding claims 4, Adams does not further discloses the removable cutting guide includes a first pin configured to be positioned in a first hole in the first sidewall, and wherein the removable cutting guide includes a second pin configured to be positioned in a second hole in the second sidewall. The pin/bolt configuration is not vertical/ or not plainly and clearly mounted in the manner of applicant’s disclosure—
The use of vertical pins to mount a cutting guide into first and second sidewalls as claimed is old and plainly known from Volk, (US 4,320,678) which shows vertical wingnut screws threaded through vertical receiving portions of side walls 3 at the right and left of a cutting platform.
It would have been obvious to mount the cutting guide of Adams by vertical pins, since Volk discloses that is a known way that ordinary skilled artisans in the cutter guide arts know to mount guides to sidewalls, and the substitution of one bolt type or arrangement for another achives the same fastening and unfastening, and can be implemented with no undue experimentation or unexpected results. It has been held that the combination of elements known in the prior art to be used in accordance with their known functions is unpatentable as a matter of law absent a showing that the combination has results which are unexpectedly advantageous over the prior art. Please see Sakraida v. Ag Pro, Inc. U.S. Supreme Court No. 75-110 425 US 273, 189 USPQ 449 (1976), Which states “patent[s] for combination that only unites old elements with no change in their respective functions withdraws what is already known into field of its monopoly and diminishes resources available to skillful men” and [a] patent [which] simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations…are not patentable under standards appropriate for a combination patent”; also see Anderson’s Black Rock, Inc. v. Pavement Salvage Co., Inc. U.S. Supreme Court 396 US 57, 163 USPQ 673 (1969) which states “while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented”. Similarly here, each of the elements (pins/ fastening, guide slot, base, etc) are known in the art, and therefore are combinable to use their respective known qualities and effects.
The Supreme Court in KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. _____(2007) affirmed both Sakraida and Anderson’s requirement that to be patentable a combination needed to provide some synergistic effect. See Slip op. at 13 lines 3-19. Using known elements for their known functions is as a matter of law not patentable, since it removes resources available to skillful men, contrary to U.S. Const., Art. I §8, cl.8. which provides patent monopolies to promote the progress of useful arts. See Slip op. KSR at 24 lines 5-7.
Each of the elements claimed are known as seen in the cited prior art (above); their combination is unpatentable absent a showing that one of ordinary skill would be unable to effect their combination, or their combination provides unexpectedly good results (more than a duplicated effect).
Regarding claim 6, Adams is unclear about whether a length of the slotted through-hole is greater than the fixed distance between the first sidewall and the second sidewall. This is not an inventive change—as shown in Volk, which shows a slotted through-hole betwixt 2-and 2 the angle iron of those elements is plainly shown in figure 1 to form a gap or ‘slot’ per se, and the slot thereformed by those angles continues through and past the wingnut fasteners shown on figure 1; therefore extending beyond the lateral sidewalls (3, in Volk). Further, it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also In re Yount (36 C.C.P.A. (Patents) 775, 171 F.2d 317, 80 USPQ 141. It would have been obvious to permit the slot of Adams to extend into the sidewall position, since that permits the cut to extend further—and make a complete cut. This is both logical as evidenced by the disclosure of Adams, suggesting making cuts along the guide for a saw—and also is seen in the related art of Volk—which permits a sliding of the guided saw along a further/ longer path. It is obvious to make a guide slot bigger, since it results in more guide slot (duplicated effect).
Regarding claim 7, Adams apparently discloses the first sidewall includes a first groove, wherein the second sidewall includes a second groove (See cross sectional detail, figure 2 which shows a gap in the first and or second sidewall—annotation below), and wherein the first groove and the second groove are vertically aligned with the slotted through-hole when the removable cutting guide is removably coupled to the first sidewall and the second sidewall (see alignment below).
PNG
media_image1.png
583
495
media_image1.png
Greyscale
PNG
media_image2.png
452
410
media_image2.png
Greyscale
Regarding claim 8, Adams in view of Volk further discloses or renders obvious “wherein a distance from a bottom of the first groove to a bottom of the second groove is equal to the length of the slotted through-hole.” (This is self-evident in light of the figures 1, 2 of Adams). Adams discloses in the text as follows: “(3) In FIG. 2 there will be seen a slot 17 which runs most of the length of the table surface 13 (about 3 feet, for example). The slot 17 may be approximately one-quarter inch in width and permits a handsaw 19 to be operated through the table surface 13.”)
Additionally-- the choice of when to end the slots is a matter of optimization of a result effective variable—those of ordinary skill can choose how far the slot will extend, since that is the length of how much saw guidance is being provided / or the ultimate size of the slot or cutting capacity of the device. Making the length longer or shorter has no unexpected results here—it is the choice of how long the cut can be. As noted above, selecting the size of something known in the art is obvious unless the change of size shows unexpected results or could not be accomplished without undue experimentation.
Regarding claim 10, the clause “wherein the slotted through-hole comprises a first slotted through-hole, wherein the base includes a second slotted through-hole, and wherein the second slotted through-hole is vertically aligned with the first slotted through-hole when the removable cutting guide is removably coupled to the first sidewall and the second sidewall.” Is treated in like manner to claim 8 above—discussing the reasons Adams discloses slot in the guide above slot in the base, depicted at 17, inter alia, figure 2, and discussed in the excerpt cited above in discussion of claim 8.
Response to Arguments
Applicant's arguments filed 03/05/2026 have been fully considered but they are not persuasive.
Applicant alleges that the introduction of ‘locking member comprises a threaded rod that extends through the second sidewall” is lacking in the art rejection under section 102, and thus the application now with that limitation in claim 1 is patentable (See Rem. 5-6). As explained above, the new claim language is obvious in light of the prior art.
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 SEAN M MICHALSKI whose telephone number is (571)272-6752. The examiner can normally be reached Typically M-F 6a-3:30p East Coast Time.
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.
SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/Primary Examiner, Art Unit 3724