DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
2. Applicant’s arguments, see "Remarks", pages 8-9, filed March 3, 2026, with respect to the rejection(s) of claims 1-4, 6-9, 11, 13-17, 19-21, and 23-25 under 35 USC §112(b), and with respect to the objection to the specification in regard to the phraseology used in the abstract, have been fully considered and are persuasive. Therefore, the rejection(s) under 35 USC §112(b) has/have been withdrawn, and the objection to the abstract is withdrawn. However, upon further consideration, a new ground(s) of rejection of claims 1-4, 6-9, 11, 13-17, 19-21, and 23-25 under 35 USC §112(b) is made in view of an issue made clear in Applicant's arguments [namely, "Remarks", page 13], as explained below.
3. Applicant's arguments, see "Remarks", pages 9-15, filed March 3, 2026, with respect to the rejection(s) of claims 1-4, 6-9, 11, 13-17, 19-21, and 23-25 under 35 USC §102(a)(1) and 35 USC §103 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., "arranged to be selectively positioned within the recess guide region at any longitudinal position along the length of the longitudinal guide element" [emphasis added]) are not clearly recited in the rejected claims – as through Applicant’s arguments it is now apparent that the “longitudinal guide element” is not clearly claimed. As currently written, it is unclear if the longitudinal guide element refers to the hinge-recess guide element or any entirely different feature (see §102 Rejections below). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As currently written, it is apparent that the longitudinal guide element is a separate feature of the hinge-recess guide element. As such, Examiner would draw Applicant’s attention to the Non-Final Rejection (CTNF) of December 3, 2025, page 5 para. 3, where Examiner explains the disclosure of prior art Gregory (US3738013A; Gregory, E.; cited in IDS – hereinafter “Gregory”) – namely, that the “the or each hinge-recess guide element is arranged to be selectively positioned within the recess guide region at any longitudinal position along the length of the longitudinal guide element [shown in Fig. 2]” [emphasis added]. For further clarity, see Images 1 and 2 below.
As can be seen in Image 1, the hinge-recess guide element [plates 32 and 34, see page 4 of CTNF] slide along the recess guide region [U-shaped guide region, shown in Image 2, see page 5 of CTNF], which runs the length of each longitudinal rail element [templates 22-24, see CTNF page 4, seen at least in Figs. 1-2]. Further, each longitudinal rail element contains a longitudinal guide element [shown in Image 1, apertures 62 and 64, see page 7 of CTNF], and the hinge-recess guide element is arranged so that it can be selected at any point of the longitudinal guide element [tabs 58 and 60 can be at any point in the apertures 62 and 64, respectively].
Further, in the instance that Applicant intends to amend claims such that the longitudinal guide element is clearly the same feature as the hinge-recess guide element, Examiner would draw Applicant’s attention to Gregory col. 17 lines 3-5, ”the present embodiment is therefore to be considered in all respects as illustrative and not restrictive”, interpreted to mean that in no way are the apertures 62 and 64 limited to the size shown in Fig. 2, and could be conceivably run the length of the template 24, thus the length of the aperture would not limit the ability of the plates 32 and 34 to be placed at any point along the U-shaped guide region.
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Image 1 – Gregory, Fig. 2, Annotated
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Image 2 – Gregory, Fig. 4, Annotated
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as Applicant chose to not indicate any specific arguments regarding the combination of Gregory and Schuermann (DE1453303A1; Schuermann, H.; cited in prior PTO-892 – hereinafter “Schuermann”) or the combination of Gregory and Gregory in view of Grigg (GB2435234A; Grigg, J.; cited in IDS – hereinafter “Grigg”) [see “Remarks”, filed March 3, 2026, pages 14-15 where Applicant indicates such arguments are not necessary] and instead chose to allege that combination was improper in general [see “Remarks”, filed March 3, 2026, page 11, para. 2], Examiner would draw Applicant’s attention to the rationale for combination included in the prior rejection [see CTNF pages 11-12], as well as the rationale for combination included in the present Office Action (see below).
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.
4. Claims 1-4, 6-9, 11, 13-17, 19-21, and 23-25 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 1 recites the limitation "the longitudinal guide element" in lines 21-22 of the claim. There is insufficient antecedent basis for this limitation in the claim. As written, it is unclear if the longitudinal guide element refers to the hinge-recess guide element or any entirely different feature. For the purposes of examination, Examiner will interpret “the longitudinal guide element” to mean “a longitudinal guide element” (a separate feature).
Claims 2-4, 6-9, 11, 13-17, 19-21, and 23-25 are dependent upon claim 1 and therefore inherit the same deficiencies described above.
Claim Rejections - 35 USC § 102
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.
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.
5. Claims 1-3, 7, 9, 11, 13-17, 19-21, and 23-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gregory.
In regard to claims 1-3, 7, 9, 11, 13-17, 19-21, and 23-24, Gregory discloses:
[claim 1] a door-hinge jig [hinge butt template assembly 20] for forming hinge-receiving recesses in a door edge or door frame [described in col. 6 lines 28-38], the jig comprising: an elongate body [shown in Fig. 1] comprising at least one longitudinal rail element, the or each longitudinal rail element comprising at least two rail members [templates 22-24] arranged to be connected together to form the respective longitudinal rail element [shown in Fig. 1]; at least one hinge-recess guide element [plates 32 and 34] at least partially defining a guide channel for forming a hinge recess in a door or doorframe [shown in Fig. 2], the or each hinge-recess guide element comprising engagement means [flanges 71 and locating pin 73] for engaging the or each hinge-recess guide element with the at least one longitudinal rail element to set a longitudinal position of the hinge-recess guide element on said longitudinal rail element [shown in Fig. 2 and Fig. 3]; and at least one connector element [channel 25] arranged to connect two rail members together [templates 22-24, shown in Fig. 2 and Fig. 3] wherein, in use: the jig defines a recess guide region extending continuously along the length of the or each longitudinal rail element [U-shaped guide region between side rails 40 and 41, best shown in Fig. 4], from a first end region of the or each longitudinal rail element to a second end region of each longitudinal rail element [shown at least in Fig. 2] the or each hinge-recess guide element [plates 32 and 34] is located within said recess guide region so as to at least partially define a position of a guide channel within said recess guide region [shown in Fig. 3], and the or each connector element [channel 25] is remote from the recess guide region [shown in Fig. 3 and Fig. 4], such that the or each hinge-recess guide element is arranged to be selectively positioned within the recess guide region at any longitudinal position along the length of the longitudinal guide element [shown in Fig. 2/Image 1, apertures 62 and 64], without obstruction or interference by the connector element [shown in Fig. 3 and Fig. 4];
[claim 2] that each rail member comprises an engagement portion [end portion 56, having tabs 58 and 60]; the engagement means of the at least one hinge-recess guide element is arranged to engage with the engagement portion of a rail member so as to set a longitudinal position of the hinge-recess guide element on the longitudinal rail element [shown in Fig. 3; described col. 4 line 63 – col. 5 line 9]; and in use, the at least one connector element is remote from the engagement portion of each rail member [shown in Fig. 2 and Fig. 3];
[claim 3] that the engagement portions of the rail members of each longitudinal rail element collectively define an engagement portion of said longitudinal rail element, the engagement portion of said longitudinal rail element extending continuously along substantially the entire length of said longitudinal rail element [U-shaped guide region between side rails 40 and 41, best shown in Fig. 4]; [claim 7] that the or each connector element [channel 25] is an elongate member arranged, in use, to bridge between two adjacent rail members and engage with each rail member so as to connect said rail members together [shown in Fig. 1], wherein a transverse dimension of the or each connector element is less than a transverse dimension of the or each longitudinal rail element [Fig. 4];
[claim 9] that the hinge-recess guide element [plates 32 and 34] is engaged with the or each longitudinal rail element on a first side of said longitudinal rail element and wherein the connector element [channel 38] engages with the respective adjacent rail members on a side of the longitudinal rail element different to the first side [best shown in Fig. 4];
[claim 11] that the or each longitudinal rail element comprises an engagement channel for receiving the engagement means [U-channel, shown in Fig. 4/Fig. 17];
[claim 13] that the engagement means of the at least one hinge-recess guide element comprises a head portion [tabs 58 and 60] arranged to be received with the engagement channel and engage an inner wall of the engagement channel of a respective longitudinal rail element so as to clamp the hinge-recess guide element to that respective longitudinal rail element [apertures 62 and 64, shown in Fig. 1];
[claim 14] that the or each longitudinal rail element comprises a connector channel or recess for receiving the connector element [shown in Fig. 4/Fig. 17];
[claim 15] that the connector element comprises an elongate plate arranged to be at least partially received within the connector channel or recess [best shown in Fig. 2 – connector 25 has a flat back plate portion with a slot];
[claim 16] that the or each longitudinal rail element comprises a connector channel separate from the engagement channel [shown in Fig. 4/Fig. 17];
[claim 17] that the or each longitudinal rail element comprises one or more flanges arranged to separate the connector channel from the engagement channel [shown in Fig. 4, leg portions 150 and 151, cross piece 152 seats against the outwardly facing, flat surface of leg 41];
[claim 19] that the connector element extends in a longitudinal direction and comprises fastening means [screw 164] arranged to engage the connector element with each of the two respective rail members which the connector element connects [shown in Fig. 1/Fig. 2/Fig. 4], in use, so as to fix the position of the connector element relative to each of the rail members and thereby connect the two rail members together, wherein at least one fastening means is provided for each rail member [Fig. 4];
[claim 20] that the fastening means comprise threaded screws [screw 164 has threads, Fig. 2];
[claim 21] that each fastening means extends through the connector element and engages with a respective rail member, or extends through a respective rail member and engages with the connector element [shown in Fig. 12];
[claim 23] comprising two hinge-recess guide elements arranged to define a guide channel therebetween [hinge size plates 32 and 34], wherein at least one of said hinge-recess guide elements is slidable along the longitudinal rail element to adjust the length of the guide channel to match or substantially match a hinge length [shown in Fig. 1]; and
[claim 24] that each rail member of the or each longitudinal rail element has a cross-sectional profile corresponding to a cross-sectional profile of the other rail member or rail members of the same longitudinal rail element [rail members 22-24].
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
6. Claims 4, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Gregory in view of Schuermann.
In regard to claim 4, Gregory teaches a door-hinge jig according to claim 1, and wherein the rail element is a first longitudinal rail element.
Gregory does not teach an elongate body further comprising a second longitudinal rail element spaced apart from the first from the first longitudinal rail element so as to define the recess guide region between the first and second longitudinal rail elements.
However, Schuermann teaches an elongate body [part 8] with two longitudinal rail elements [legs 10 and 12] that define a recess guide region between the longitudinal rail elements [Fig. 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used Schuermann’s elongate body with two legs that define a recess guide region between the longitudinal rail elements with Gregory’s door-hinge jig for the purpose of better positioning Gregory’s templates from a pre-determined distance, as taught by Schuermann [machine translation, page 2 para. 3].
In regard to claim 6, Gregory in view of Schuermann teaches the door-hinge jig of claim 4.
Gregory does not teach wherein the elongate body comprises a first sub-assembly comprising a first pair of spaced-apart rail members and a second sub-assembly comprising a second pair of spaced-apart rail members, wherein, in use, a respective one of the first pair of rail members is connected to a respective one of the second pair of rail members by means of a connector element so as to at least partially define the first longitudinal rail element, and the other respective one of the first pair of rail members is connected to the other respective one of the second pair of rail members by means of a separate connector element so as to at least partially define the second longitudinal rail element.
However, Schuermann teaches wherein the elongate body comprises a first sub-assembly comprising a first pair of spaced-apart rail members and a second sub-assembly comprising a second pair of spaced-apart rail members [shown in Fig. 2/Fig. 3], wherein, in use, a respective one of the first pair of rail members is connected to a respective one of the second pair of rail members by means of a connector element [tongues 28 are received by limb 18] so as to at least partially define the first longitudinal rail element [machine translation, page 4 para. 3 describes connection], and the other respective one of the first pair of rail members is connected to the other respective one of the second pair of rail members by means of a separate connector element [clamping screws 34] so as to at least partially define the second longitudinal rail element [shown in Fig. 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Schuermann’s use of a pair of sub-assemblies with connecting components with Gregory’s door-hinge jig in order to more securely affix two ends of a jig at a pre-determined distance, as shown by Schuermann [Fig. 1 and machine translation, page 4 para. 3].
In regard to claim 8, Gregory further teaches wherein the or each connector element [thread post 68] is arranged to be wholly received within a channel [elongated channel 216] of a respective longitudinal rail element [shown in Fig. 2].
6. Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Gregory in view of Grigg.
In regard to claim 25, Gregory teaches the door-hinge jig of claim 1.
Gregory does not teach wherein each longitudinal rail comprises a plurality of rail members having specific, non-equal lengths.
However, Grigg teaches wherein each longitudinal rail comprises a plurality of rail members having specific, non-equal lengths [shown in Fig. 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used Grigg’s longitudinal rail members with specific, non-equal lengths with Gregory’s door-hinge jig in order to better accommodate a variety of different mortise latch and lock positions, as taught by Grigg [page 6, section “B”].
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 DANIEL QUINN whose telephone number is (571)272-2690. The examiner can normally be reached T-R 07:00-19:00 PST, F 07:00-11:00.
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, JOHN BREENE can be reached at (571)272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL M QUINN/Examiner, Art Unit 2855
/JOHN E BREENE/Supervisory Patent Examiner, Art Unit 2855
Prosecution Insights