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 . This office action is in response to the amendment filed on 8/10/2026 in which claims 12-18, 20-22 are pending, and claims 12, 20, 21 and 22 are currently amended.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12-22 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 12, lines 10-11 is recite, “wherein the holding of the blade in the notch of the blade holder is by magnetic attraction without a mechanical attachment fastening the blade to the blade holder.” However, lines 7-9 recite, “at least one lug formed in the notch and configured to be received in a cutout made in the upper end of the blade for absorbing cutting forces from the blade.” The mechanical engagement between lugs 20 and cutouts 2a provides a mechanical interlocking relationship that restrains movement of the blade relative to the blade holder, thereby mechanically securing the blade in at least one direction. Although the lug/cutout engagement might not independently secure the blade in all directions, it nevertheless contributes to fastening the blade to the blade holder. Accordingly, it is unclear whether the blade can be mechanically secured by the recited lug/cutout engagement while simultaneously being held in the blade holder without a mechanical attachment fastening the blade to the blade holder. It is unclear what constitutes a “mechanical attachment fastening the blade to the blade holder” as distinguished from the mechanical engagement required by the claim. It is unclear whether the negative limitation excludes only separate fastening elements such as screws, or also encompasses mechanical retention arrangements, including clamping, frictional engagement, and interlocking structures that secure the blade relative to the blade holder. Accordingly, the scope of the negative limitation is unclear.
Furthermore, Figures 2A and 2B appear to illustrate the upper end of the blade 2 as being at least partially enclosed by blade holder 4, with the lug 20 engaging cutout 2a. It is unclear whether the configuration permits the blade to be disengaged solely by overcoming magnetic attraction or whether mechanical restraint provided by the holder must also be released. This further raise uncertainty regarding the scope of the recited exclusion of a mechanical attachment fastening the blade to the blade holder.
Claim 20 recites, a vibrating steel blade “configured to magnetically held”. However, the claim fails to clearly define what structural, or material characteristics of the blade are required to satisfy this limitation. It is unclear whether the limitation requires the blade to be formed of a magnetically attractable material, to include a magnetic element, or merely be capable of being retained by an external magnetic holding device. Accordingly, the scope of the limitation “configured to be magnetically held” is unclear.
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 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hendrick (U.S. Patent 4,020,555). In regards to claim 20 as best understood, Hendrick discloses a blade (10) comprising a cutting edge (11) and an upper end configured to be received in a notch of a blade holder, wherein the upper end includes at least one circular cutout (opening 15) configured to receive a lug extending from a bottom of the notch; wherein the upper end of the blade is configured to be magnetically held within the notch along a direction perpendicular to the longitudinal axis of the blade (as set forth the magnetic recitations do not necessitate any structural limitations to the blade)
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 12-14 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Schallinox (DE202016102478) in view of Child et al. (U.S. Publication 2022/0048121), herein referred to as Child.
In regards to claim 12, as best understood, Schallinox discloses a device for holding a vibrating steel blade on a blade holder of a cutting machine (e.g. 1; Fig. 2b), comprising: a vibrating steel blade (2A; metallic ultrasonic vibrating) for a cutting machine; a blade holder (coupling rod 3) having a notch (either recess 521 or 321; Figs. 3b and 5a) able to receive an upper end of the blade (22; 2a), means for holding by magnetism (magnetic coupling element 322; fig. 5b) the upper of the blade (one of the ends of the blade 2a) in the notch (either 521 or 321) of the blade holder (3) along a direction perpendicular to a longitudinal axis of the blade (in the thickness direction of the blade), and at least one lug (one of the protrusions of 521) formed in the notch (321 or 521) and configured to be received in a cutout (one of the waves of 221) made in the upper end of the blade for absorbing cutting forces from the blade;
Wherein the holding of the blade (22) in the notch (521/531) of the blade is by magnetic attraction (magnetic coupling element 322; fig. 5b) without a mechanical attachment fastening the blade to the blade holder.
(“Preferably, the features of the embodiments of Fig. 5a and Fig. 5b are combined, i.e., mechanical molded parts 321 and magnetic coupling elements 322 are provided. The mechanical components 321 subsequently absorb the force acting during the cutting process, while the magnetic coupling elements 322 hold the installed blades in position.The magnetic coupling elements therefore also form a locking device 4, which secures the connection”;
paragraph [0062])
Schallinox sets forth that the blade is made of metal, but does not set forth the type of metal as highlighted above and therefore does not positively disclose that it is made of steel. Child discloses an ultrasonic cutting system having a blade driven by ultrasonic resonation, wherein the blade may be comprised of metal, such as titanium, aluminum or steel. Child further teaches that selection of the blade material is made to reduce sticking of the workpiece to the blade (see paragraph [0056]), thereby indicating that the blade material is a result-effective variable depending upon the workpiece being cut. It would have been obvious to one having ordinary skill in the art at the time of the invention to form the blade of Schallinox from steel for improved structural stability and performance, as suggested by Child.
In regards to the limitations, “holding of the blade in the notch is without a mechanical attachment fastening the blade to the blade holder”, it is unclear the metes and bounds of this negative recitation. However, both Schallinox and the instant invention utilize magnets and lugs to hold the blade within the blade holder. Schallinox discloses complementary molded parts 321 and magnetic elements 322 for coupling and positioning the blade relative to the coupling rod, wherein the magnetic coupling may be provided additionally or alternatively to the mechanical coupling arrangement (paragraph [0019]. Schallinox also discloses the use of closure devices 4 (fig. 2b) that clamp the blades to the coupling rods using trays 41 and screws 91. To the extent that the claimed absence of a mechanical attachment fastening the blade to the blade holder excludes the closure devices 4 of Schallinox, it would have been obvious to omit the closure device trays and their associated clamping function where the magnetic elements provide sufficient retention for the intended cutting operation. Such a modification would simplify the coupling arrangement by eliminating the separate locking components while retaining the magnetic elements for blade retention and the complementary molded parts for positioning and transmitting cutting forces. The omission of the locking trays and their associated clamping function would have been an obvious simplification where the remaining magnetic coupling provides sufficient retention for the intended cutting operation, with the recognized tradeoff of eliminating the additional mechanical clamping provided by the trays. constitutes a known design choice where the retaining elements perform the same function as before, namely retaining the blade, and would have involved only routine skill in the art. In re Karlson, 136 USPQ 184.
In regards to claim 13, the modified device of Schallinox discloses wherein the blade holder (3) comprises at least one magnet (322) assembled inside the notch (321) and able to establish a planar bearing with a planar surface of the upper end of the blade (fig. 5b; the magnet is planar) so as to ensure holding by magnetism of the upper end of the blade in the notch (321) of the blade holder (3).
In regards to claim 14, the modified device of Schallinox discloses wherein the notch (321) of the blade holder is magnetized (via magnet 322) so as to ensure holding by magnetism of the upper end of the blade in the notch of the blade holder.
In regards to claim 16, the modified device of Schallinox discloses wherein the notch (321) comprises a bottom (back, 32) having a planar surface and is delimited laterally by two rims (two curved rims on the sides) protruding relative to the bottom.
In regards to claim 17, the modified device of Schallinox discloses wherein the lug (5) extends from a lower end of one of the rims of the notch towards the other rim along a direction substantially perpendicular to the longitudinal axis of the blade.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Schallinox (DE202016102478) in view of Child et al. (U.S. Publication 2022/0048121), herein referred to as Child. In regards to claim 15, the modified device of Schallinox discloses the claimed invention except wherein the notch of the blade holder comprises a ferromagnetic metal and the upper end of the blade comprises a magnet so as to ensure holding by magnetism of the upper end of the blade in the notch of the blade holder. Schallinox discloses rather a coupling system in which a magnetic element is provided in the adapter to magnetically retain a blade formed of metal. Schallinox therefore teaches magnetic coupling between the blade and the adapter to facilitate positioning and temporary retention of the blade during assembly. . It would have been obvious to one of ordinary skill in the art at the time of the invention to instead provide the magnetic element on the blade and form the blade holder (adapter) from a ferromagnetic material, as magnetic attraction between a magnet and a ferromagnetic material is well known to be reciprocal and does not depend on which component carries the magnet. Such a modification represents a predicable use of known magnetic coupling techniques to achieve the same function of retaining and positioning the blade relative to the blade holder. Furthermore, the applicant describes alternative configurations in which the magnetic element may be associated with different components of the coupling system, indicating that the particular placement of the magnet is not critical. Accordingly, selecting whether the magnet is disposed on the blade or the blade holder would have been an obvious matter of design choice.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Hedrick (U.S. Patent 4,020,555) in view of Maxera et al. (U.S. Publication 2020/0078878), herein referred to Maxera. In regards to claim 21 the modified device of Hedrick discloses wherein the blade is made of steel but not made of high-speed steel. Maxera discloses a reciprocating saw wherein the blade can be formed of low alloy steel, carbon steel in the body of the blade and high-speed steel along the cutting edge. It would have been obvious to one having ordinary skill in the art to have formed the blade of Hendrick from high speed steel as suggested by Maxera in order to maintain hardness and sharpness of the cutting edge during cutting operations involving elevated temperatures and friction.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Hedrick (U.S. Patent 4,020,555) in view of Li et al. (U.S. Patent 11,577,423), herein referred to as Li. In regards to claim 22 the modified device of Hedrick discloses an assembly comprising the vibrating steel blade according to claim 20; and a blade holder (locking collar 44) of a cutting machine having a notch (pockets 56/opening 45) in which the upper end of the vibrating steel blade (10) is received wherein the at least one cutout of the upper end receives a lug (pin 52) extending from the notch (45/56). Hedrick does not disclose that the upper end of the vibrating steel blade is magnetically held within the notch. Li discloses a reciprocating saw wherein the blade is retained within the housing by engagement of the blades’ s positioning holes 203 that engage with reciprocating rods 31/32 and a magnetic component 304 configured to attract ferromagnetic material of the saw blade, thereby improving the reliability of the connection between the blade assembly and the reciprocating rod assembly. It would have been obvious to one having ordinary skill in the art to have included a magnetic component, as taught by Li into the blade holding assembly of Hedrick to magnetically attract and retain the steel blade, thereby providing supplemental retention and improving the reliability of the blade to holder connection.
Response to Arguments
Applicant's arguments filed on 8/10/2026 have been fully considered but they are not persuasive. The Applicant argues Schallinox utilizes mechanical attachment whereas the claimed invention employs lugs to absorb cutting forces and magnetic attraction to retain the blade. However, Schallinox similarly discloses complementary molded parts 321 and 221 for mechanical engagement and magnetic elements 322 for blade retention.
Applicant further argues that removing molded parts 321 would eliminate the claimed lug/cutout arrangement. The rejection has therefore been modified to retain the molded parts and magnetic elements while omitting the separate locking trays 41 and their associated clamping function as discussed above.
Furthermore, the distinction between the claimed mechanical engagement and the excluded mechanical attachment is unclear as addressed in the rejection under 35 USC 112(b).
Accordingly, the applicant’s arguments do not overcome the rejections under 35 USC 103.
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 LAURA M LEE whose telephone number is (571)272-8339. The examiner can normally be reached M-F 8a.m.- 5p.m..
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.
/LAURA M LEE/Primary Examiner, Art Unit 3724
