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 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.
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: “blocking element” “bearing portion” and “head portion” and “deformation portion” in claim 1. Actuator unit in claim 15 is broad and does not implicate 112(f) since “actuator” is not a function.
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. As noted below, the specific scope of these elements is not clearly defined in the specification, and they are therefore indefinite in scope and rejected under 112(b).
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(b)
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 1-15 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 limitations ““blocking element” “bearing portion” and “head portion” and “deformation portion”” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (see interpretation above). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification never says exactly what each element or ‘means’ must be- in reality, only defining them in terms of their function or application, which does not clearly define what they are and what they are not. For example, the deformation portion may or may not be arcuate, and may or may not have rectilinear portions (See Specification p. 5), and is otherwise not defined as a structural element, nor is the material specified, nor is any constraint to its size discussed or shown. Applicant merely states that it is “specifically designed to be plastically shortened…” (Specification p. 2) which is a statement of an intended result for an ambiguous use—and non-claimed use in the present claims.
How is it specifically designed? What features must it have?
The claims do not reasonably define what the invention is considered to be, either by specifying exactly the object, or exactly the functions which must be performed. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The specification notes ” even deformation portions which are arcuate in sections are to be considered to be arcuate” but it is unclear whether all deformation portions must by definition have some arcuateness, or if arcuateness is one feature a deformation portion may have.
Similarly, what is the nature of the claimed “head portion” and how is the claim limited by the clause “designed to engage into the saw blade.” This clause is indefinite, since the intent of the user or the purpose of the inventor is subjective when it is ascribed to form a “head portion” standing alone, as here. What elements must a thing have in order to be “designed to engage into….”
Similarly, the nature of the “bearing portion” is not specifically delineated in the specification. This is therefore indefinite because the precise structure is not defined, rather the disclosure highlights the effect of or function of the element, and not the specific technical features which must be present to be a “bearing portion.” It is not clear what technical structure or feature is needed in order for something to be called a “bearing portion.” Just the ability to contact something else? Pivotability? A pair of pivot elements?
Additionally, claim 1: “designed to be plastically shortened” is indefinite since there is no objective statement of what structure or features satisfy this clause, and which do not. A lump of clay would be capable of being plastically shortened; as would most metal rods, plastic soda bottles etc. and all would provide some amount of brake to a blade, and be plastically deformed in response. The boundary of this clause is not useful in establishing the necessary conditions to be the claimed “deformation portion.”
Claim 3 “radially inwards” is indefinite in the context of the claim. There is no radius defined, nor any point of reference, and once cannot be inferred from the drawings, or otherwise. This limitation is meaningless without a frame of reference present in the claim defined by objective criteria and with concrete connection to the structures of the claimed device which are part of the claim.
Claim 5 “comprises a structure (68) with desired deformation points (78) which is plastically deformable in the arc circumferential direction” is indefinite, since a point cannot be determined structurally to be or not be a ‘desired’ point, as that is a subjective term as presently claimed. As best understood, this clause may mean is capable of deformation.
Claim 7 “the cavities are continuous in one direction which extends axially in relation to the arc circumferential direction” is indefinite as the cavities disclosed are not continuous—they are discrete portions as shown, the term “continuous” is therefore being used contrary to its ordinary meaning and must be clearly redefined so the clause makes sense and is objectively defined.
Claim 8 requires “constant wall thickness” which is not understood—as in the figures of the application no ring is formed with constant thickness—the thickness is larger at least at the intersections with adjacent rings. The terminology is not being used consistent with its accepted meaning and must be corrected.
Applicant must correct these indefinite recitations by incorporating understandable, objective features into the claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Howland (US 3,640,567).
Regarding claim 1, Howland discloses a blocking element (5 figure 1). The clause “for an emergency brake unit (24) of a sawing device (10) having a circular disc-shaped saw blade (12),” is a statement of intended use and does not restrict the nature of the device being claimed outside the disclosure of Howland.
Howland shows the blocking element (5) comprises:- a bearing portion (see the through-hole of 5 at 7 figure 2), which the blocking element (5) is configured to be mounted on the sawing device (again this is a statement of intent—the nature of what is capable of being mounted on a saw device which forms no part of the present claim is an issue of breadth and indefiniteness above—the hole is a hole and therefore it is capable of being mounted to any saw device, at least in the same manner applicant’s bearing is so capable—it is a hole).
Howland further discloses a head portion (the top part of 5 figure 1, proximate to element 6 in the drawing). Again, the clause “which is designed to engage into the saw blade (12) selectively for braking purposes”: is wholly subjective and indefinite, but to the extent it is understood to mean something capable of being shoved into engagement with a blade the end of 5 is capable of being shoved into a blade, and as a chunk of metal would be similarly effective at braking (or breaking) the blade.
Howland further discloses a deformation portion (5 medial portion as in figure 2 on the bar of 5; as claimed) which is located between the bearing portion (hole in 5 at 7 figure1, cf. figure 2) and the head portion (proximate to element 6 on the bar 5, as seen in figure 1-2) and/or connects the bearing portion and the head portion to one another (Howland discloses this as well, though the clause is optional, as the 5 is a single unitary structure, thus all connected together).
Howland further discloses wherein the deformation portion (center of 5) is arcuate (5 shows arcuateness towards both 6 and 7 in figure 2) and designed to be plastically shortened in order to brake the saw blade in an arc circumferential direction (indefinite as above—but believed to be met by Howland, since both arcs of the 5 rod can and would be bent if they were shoved into a blade, which capability is being claimed, as best understood).
Regarding claim 2, Howland discloses further the head portion (proximate 6) is shorter in the arc circumferential direction than the deformation portion (See figure 2 which shows the pre arc portion of 5 to be smaller than the main elongate stretch of 5 through the middle (‘deformation’) portion.
Claim(s) 1-3, 5-14 is/are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Gass (US 2005/0139058).
Regarding claim 1, Gass discloses A blocking element (figure 3) for an emergency brake unit of a sawing device having a circular disc-shaped saw blade (see figure 5, figure 106) wherein the blocking element comprises: a bearing portion (128 figure 3, inter alia) via which the blocking element is configured to mount on the sawing device (See e.g. figures 5, 106). Gass further discloses a head portion (38 and thereabout figure 3-4, inter alia) which is designed to engage into the saw blade selectively for braking purposes (Capable of so performing—also, here in Gass: Paragraph “[0146] A plurality of holes, such as hole 138, are cut into pawl 132 immediately below surface 136. These holes create what may be thought of as a collapse zone. The holes make it easier for the teeth of a spinning blade to cut into the pawl and bind.”
Gass further discloses a deformation portion (indicated generally by 132, 140 figures 3-4; note again the ambiguity in the claim as to when a ‘portion’ starts and ends) which is located between the bearing portion and the head portion (see figure 3-4) and/or connects the bearing portion and the head portion to one another (they are integral and unitary together all three, so they clearly are arranged or definable as claimed—‘connect[ing] each to each other), wherein the deformation portion is arcuate (from 136 -134 figure 3 is considererd to be a deformation portion and is arcuate—as noted in the specification arcuate can include both arcuate and non-arcuate sections; which the outer surfaces 136, 132 are; alternatively some inte4rior holes of 140 are arcuate which makes the deformation portion ‘arcuate’ as it has some arcuate portion) and designed to be plastically shortened in order to brake the saw blade in an arc circumferential direction (the block is clearly and plainly capable of being deformed in the manner claimed).
Regarding claim 2, see figure 3, and note that in neither of applicant’s disclosure nor Gass is there a particularly firm delineation as to when any ‘portion’ ends, and when it becomes part of another portion. As seen in figure 3-4 of Gass, the head may be considered part of 132 proximate to 178, and extending only some lngth back therefrom—and the deformation part is the balance (until the bearing).
Regarding claim 3, Gass further discloses wherein the head portion protrudes in relation to the arc circumferential direction radially inwards with respect to the deformation portion (indefinite, above): as best understood see below:
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Regarding claim 5, Gass further discloses the deformation portion (indefinite—but some portion of figure 3-4) comprises a structure with desired deformation points (failure points clearly exist in figures 3-4 depending blade speed, material, etc) which structure is plastically deformable in the arc circumferential direction (See figures 3-4 of Gass; the device is capable of being so deformed).
Regarding claim 6, Gass further discloses the deformation portion has a plurality of cavities (140, 138 too; figures 3-4, inter alia) which are arranged adjacently in the arc circumferential direction (they are next to each other, they proceed left/right generally, figures 3-4).
Regarding claim 7, Gass further discloses the cavities are continuous in one direction which extends axially in relation to the arc circumferential direction (the openings shown at the leading face or inner circumferential ring of Gass Figures 3-4 do this to the extent the claim requires; as best understood—there are aligned rings shown).
Regarding claim 8, Gass further discloses at least one cavity is defined by a wall having a constant wall thickness (surrounding some portions of the rings are sections of uniform thickness, as best understood- see figure 3-4)
Regarding claim 9, Gass further discloses the cavities are formed by means of adjacently arranged ring segments (as seen in figure 3-4 the openings in the deformation and head portions are formed by ring – loop-- sections).
Regarding claim 10, Gass shows inherently the deformation portion has a rigidity progression since some ‘portion’ will have a different rigidity than another ‘portion’, based strictly on the visible geometry.
Regarding claims 11-14, See Gass at figure 5 and figure 106.
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gass (US 2005/0139058).
Regarding claim 4, Gass doesn’t specifically disclose the head portion has a greater rigidity in the arc circumferential direction than the deformation portion (because the porosity of the two sections as shown, by 140, 138 it is unclear which if either is more rigid). Gass does disclose that the deformation zone proximate to 140 is meant for deformation in response to a blade impact: “[0147] Pawl 132 also includes several large holes, such as hole 140. These holes minimize the mass of the pawl so that with a given force the pawl can accelerate into the blade faster. The large holes also create another collapse zone so that the pawl can deform to absorb the energy of the spinning blade. It is desirable for the pawl to absorb the energy of the blade by deforming.”
The question of which of the two sections head/ deformation section of the pawl shown in figures 3-4 of Gass is an optimization problem to those of ordinary skill. The Gass reference suggests that both zones be deformable and collapse in response to the blade impact—the decision about how thick (or small) to make each hole in both zones is therefore a result effective variable, or a duplication of parts (finding how many holes is effective at absorbing the impact). IN either theory the selection of head and’/or deformation section to be more rigid is a matter of ordinary design choice and routine optimization. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the head more rigid than the deformation section, AND the opposite since it has been held that discovering an optimum result of a result effective variable involves only routine skill in the art, and both options were evident from the disclosure of Gass as set forth above. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
It has been held that a motivation to try constitutes a motivation, unless it is shown that one of ordinary skill would have been unable to make the combination. See KSR International Co. v Teleflex Inc. et al. US Supreme Court, No. 04-1350, 550 U.S. ___ (2007), which states “a person of ordinary skill has good reason to pursue the known options within his of her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” Slip op. at 17
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gass (US 2005/0139058) as applied to claims 1-3, 5-14 above, and further in view of CN 1547521 .
Regarding claim 15, Gass discloses a sawing device as in claims 11-14, as shown above, but does not disclose the blocking element is configured to selectively disassemble from the sawing device separately from an actuator unit because Gass uses a single brake cartridge setup 100, figure 4-6, where the actuator is inside the cartridge. CN1547521 shows a brake unit 842 and an actuator unit (840/852, inter alia) in figures 62A and 62B showing that the use of separate distinct elements for actuators and brakes in the saw braking arts are known to those of ordinary skill.
It would have been obvious to use the two-part system for brakes and actuators disclosed in CN1547521 rather than the known equivalent cartridge style shown in Gass above. 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 (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).
Conclusion
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.
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SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/Primary Examiner, Art Unit 3724