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 .
DETAILED ACTION
Election/Restrictions
This application contains claims directed to the following patentably distinct species:
Species A: where two blades are connected by a pivot, as illustrated in Figs. 1-10; and
Species B: where two arms are joined by a linking area, as illustrated in Figs. 11-17.
The species are independent or distinct because the claims to the different species recite the mutually exclusive characteristics of such species. Claims 1-12 are directed only to Species A, whereas claims 13-20 are directed only to Species B. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claim appears to be generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification;
the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and/or
the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries; e.g., Species A necessitates a search of B26B 13/20 which is not required by Species B, whereas Species B necessitates a search of B26B 13/005 not required by Species A; moreover, for any common classification searches, the Species require different keyword limitations – e.g., Species B requires limitations related to “flex$4 with joint$4” not required by Species A).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve 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 election of species 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 on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them 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 species 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 species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Applicant’s representative David Zelner on 6 January 2026, a provisional election was made without traverse to prosecute the invention of Species B, claims 13-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Specification
The abstract of the disclosure is objected to because it include a phrase which can be implied at the first line, in particular, “Devices … are provided.” Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 must be amended to provide an antecedent basis for all claim terminology, including “a first elongated member” and “a second elongated member” as recited in claim 13 (no ‘elongated members’ are identified with respect to the embodiment of Figs. 11-17, and it is unclear which disclosed structure the Applicant intends to correspond to the claimed ‘elongated members’).
Claim Objections
The claims are objected to because of the following informalities:
Claim 13 introduces two longitudinal directions at lines 3 and 6. The longitudinal directions should be provided with unique names, such as amending claim 3 to introduce – a first longitudinal direction – and amending line 6 to introduce – a second longitudinal direction –. These amendments make clear that lines 3 and 6 are not referring to the same longitudinal direction.
Claim 13 at lines 3-4 recites, “a first cutting and member surface”. This recitation should either delete ‘and’, or include an additional adjective after ‘and’. As the claim currently reads, the surface is only required to be a cutting surface, and no other functionality of the surface is required.
Claim 14 recites, “said first cutting and holding member main body” at lines 4-5. This recitation should read – said main body – or – said main body of said first cutting and holding member – because the main body is not introduced with the name ‘a first cutting and holding member main body’. No new terminology should be used when referring to a term that is already introduced.
Claim 14 at line 5 recites, “a wall or surface”. This recitation should read – a wall or a surface –.
Claim 14 at lines 6-7 recites, “said first arm first elongated member”. This recitation should read – said first elongated member – for consistency with claim 13.
Claim 14 at line 7 ends with “an”. This recitation should read – and –.
Claim 14 at the final paragraph should be amended in the same manner as identified above with respect to the paragraph at lines 3-7.B
Claim 18 twice recites, “said first arm comprises a ridge” at lines 2 and 3, respectively. The second recitation of “said first arm comprises a ridge” at line 3 should be deleted in view of line 2 already describing the same requirement.
Claim 19 at line 2 recites, “or said arm”. This recitation should read – or said second arm – since the claim previously allows the first arm to include the spike.
Appropriate correction is required.
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.
Claim limitations identified below are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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:
“a second cutting and holding member” as recited in claim 13 (first, “member” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “cutting and holding”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the phrase “cutting and holding” preceding the generic placeholder describes the function, not the structure, of the member; moreover, unlike the ‘first cutting and member surface’ of lines 3-4, not structural requirement such as ‘surface’ is recited in regards to the second cutting and holding member).
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 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(s) 14 and 16-17 is/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 14 recites the limitation "said first cutting and holding member" in line 3. There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. For example, the relationship between “said first cutting and holding member” in claim 14 and “a first cutting and member surface” in claim 13 is unclear. Is claim 14 referring to the same surface as already introduced in claim 13, such that claim 14 is describing a surface rather than a member? Is claim 14 introducing a new cutting and holding member despite the use of “the”? Thus, the lack of antecedent basis for "said first cutting and holding member" renders claim 14 indefinite.
Claim 16 recites the limitation "said first cutting and holding member" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. For example, the relationship between “said first cutting and holding member” in claim 16 and “a first cutting and member surface” in claim 13 is unclear. Is claim 16 referring to the same surface as already introduced in claim 13, such that claim 16 is describing a surface rather than a member? Is claim 16 introducing a new cutting and holding member despite the use of “the”? Thus, the lack of antecedent basis for "said first cutting and holding member" renders claim 16 indefinite.
Claim 16 recites, “the first end” and “the second end” at lines 4-5. There is insufficient antecedent basis for each of these limitations in the claim, rendering the claim indefinite. It is unclear, for example, whether the Applicant intends claim 16 to depend from claim 14, which introduces two of “a first end” and two of “a second end”. Alternatively, it is unclear whether claim 16 has a correct dependency, but intends to introduce a new first end and a new second end. [If claim 16 were to depend from claim 14, then claim 16 should refer to a particular one of the ‘first ends’ introduced in claim 14 and a particular one of the ‘second ends’ introduced in claim 14.]
Claim 17 recites, “the first end” and “the second end” at lines 4-5. There is insufficient antecedent basis for each of these limitations in the claim, rendering the claim indefinite. It is unclear, for example, whether the Applicant intends claim 17 to depend from claim 14, which introduces two of “a first end” and two of “a second end”. Alternatively, it is unclear whether claim 17 has a correct dependency, but intends to introduce a new first end and a new second end. [If claim 17 were to depend from claim 14, then claim 17 should refer to a particular one of the ‘first ends’ introduced in claim 14 and a particular one of the ‘second ends’ introduced in claim 14.]
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.
Claim(s) 13-18 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. No. 4,092,776 to Ferguson.
Regarding claim 13, Ferguson discloses a device 1 for serving or cutting food (with respect to the recitation ‘for serving or cutting food’, the body of claim 13 fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, such that “the preamble is not considered a limitation and is of no significance to claim construction” as explained in MPEP 2111.02(II); regardless, the device 1 of Ferguson is able to cut food such as cutting shredded cheese into shorter pieces) comprising:
a first arm 2 comprising a first elongated member 6 extending in a longitudinal direction (see Fig. 1, where the longitudinal direction is along the member 6 in a generally left-right direction) and a first cutting and member surface (a side surface of blade 4);
a second arm 3 comprising a second elongated member 7 extending in a longitudinal direction (see Fig. 1, where the longitudinal direction is along the member 7 in a generally left-right direction) and a second cutting and holding member 5, said second arm 3 separated from said first arm 2 by a space (see Fig. 1); and
a linking area 8 linking said first arm 2 and said second arm 3 (see Fig. 1).
Regarding claim 14, Ferguson discloses that said first cutting and holding member (as best understood, blade 4) comprises a main body (the main body being the blade 4 excluding cutting edge 4a) having a first end and a second opposing end (right and left ends, respectively, of the blade 4 relative to Fig. 1), said first cutting and holding member main body defined by a wall or surface extending outwardly and away from said first arm first elongated member 6 (see Fig. 1, where the wall or surface of the blade 4 facing out of the page extends outwardly and away from the member 6); an said second cutting and holding member 5 comprises a main body (the main body being the blade 5 excluding cutting edge 5a) having a first end and a second opposing end (right and left ends, respectively, of the blade 5 relative to Fig. 1), said second cutting and holding member main body defined by a wall or surface extending outwardly and away from said second arm second elongated member 7 (see Fig. 1, where the wall or surface of the blade 5 facing out of the page extends outwardly and away from the member 7).
Regarding claim 15, Ferguson discloses that said first arm 2, said second arm 3, or said first arm 2 and said second arm 3 move when a force is applied thereto (compare Figs. 1 and 5 showing relative movement of the arms 2 and 3; see also col. 3, lines 53-56).
Regarding claim 16, Ferguson discloses that said first cutting and holding member (as best understood, blade 4) comprises an outer edge (the outer edge being a lower edge of the blade 4 relative to Fig. 1; this edge defines a portion of a perimeter of the blade 4, and is thus an ‘outer edge’), said outer edge comprising a generally linear section, a first angled section at the first end, and a second angled surface at the second end (see the annotated Fig. 1 below, where each of the angled section and angled surface is angled relative to the linear section).
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Regarding claim 17, Ferguson discloses said second cutting and holding member 5 comprises an outer edge (the outer edge being an upper edge of the blade 5 relative to Fig. 1; this edge defines a portion of a perimeter of the blade 5, and is thus an ‘outer edge’), said outer edge comprising a generally linear section, a first angled section at the first end, and a second angled surface at the second end (see sections of the second blade 5 corresponding to the sections of the first blade indicated in the annotated Fig. above).
Regarding claim 18, Ferguson discloses that said first arm 2 comprises a ridge 11 (see Fig. 5); and said first arm 2 comprises a ridge 11 (see Fig. 5).
Regarding claim 20, Ferguson discloses that said linking area 8 comprises an opening (see Fig. 5; an opening is defined at least in part by the linking area 8).
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(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 4,092,776 to Ferguson in view of US Pub. No. 2,038,916 to Vorwerk.
At least for purposes of this rejection, Ferguson is considered as failing to disclose that said first arm comprises a spike or said [second, sic] arm comprises a spike as required by claim 19.
Vorwerk, though, teaches providing an arm 5 of a cutting device with a spike (see any of spikes 7, 9, or 10 in Fig. 1). Vorwerk teaches that providing the arm of the cutting device with the spike is advantageous in order to enhance the versatility of a cutting device by providing the cutting device with the ability to loosen or remove threads, such as threads closing a bag (see Figs. 2 and 3).
Therefore, it would have been obvious to one of ordinary skill in the art to provide either of the first and second arms of Ferguson with a spike in view of the teachings of Vorwerk in order to enhance the versatility of the device of Ferguson, such as providing the device with the ability to loosen cords that hold a bag closed. Indeed, the spike is further useful for other uses, including punching plastic packaging.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Each of the following references discloses a relevant cutting device having a linking area:
US D255,763 to Ferguson
US D258,798 to Ferguson
US D503,323 S to Hasegawa et al.
US D613,571 S to Quante
US D816,451 S to Huesman et al.
US 0,098,840 to Barnard
US 0,258,089 to Mann
US 1,566,649 to Carlson
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EVAN H MACFARLANE whose telephone number is (303)297-4242. The examiner can normally be reached Monday-Friday, 7:30AM to 4:00PM MT.
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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/EVAN H MACFARLANE/Examiner, Art Unit 3724