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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “wherein at least two neighboring shoulders of the first set of shoulders are disposed at least 50 arcuate degrees apart from each other with respect to the first axis (Claim 17, lines 6-8),” “the at least two neighboring shoulders of the first set of shoulders are disposed between 50 arcuate degrees and 70 arcuate degrees (Claim 18, lines 1-3),” and “each of the neighboring shoulders of the first set of shoulders are disposed at least 55 arcuate degrees apart from each other with respect to the first axis (Claim 20, lines 1-3)” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 19 is objected to because of the following informalities: The phrase “wherein each of the neighboring shoulders of the first set of the shoulders are disposed at least 50 arcuate degrees apart from each other with respect to the first axis” appears redundant to the limitation set forth in Claim 17 to the first set of shoulders disposed at least 50 arcuate degrees apart from each other with respect to the first axis.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 18 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Regarding claim 18, the phrase “the at least two neighboring shoulders of the first set of shoulders are disposed between 50 arcuate degrees and 70 arcuate degrees” was not disclosed in such a way to reasonably convey that possession was had at the time of filing the invention. Page 2, Para [0006] sets forth “At least two neighboring shoulders of the shoulders are disposed at least 50 arcuate degrees apart from each other with respect to the first axis.” This is the only mention in the disclosure of the neighboring shoulders being at least 50 arcuate degrees. At least Figure 8 and the disclosure provide support for neighboring shoulders disposed apart from one another. As shown in at least Figure 8, arc 100 between shoulders 60 is between 20 and 40 degrees. The Examiner is not solely permitted to rely on the drawings and the disclosure does not provide support for the arc exceeding 40 degrees. Therefore, disclosure does not support the neighboring shoulders disposed between a range of 50 to 70 arcuate degrees.
Regarding claim 20, the phrase “each of the neighboring shoulders of the first set of shoulders are disposed at least 55 arcuate degrees apart from each other with respect to the first axis” was not disclosed in such a way to reasonably convey that possession was had at the time of filing the invention. Page 2, Para [0006] sets forth “At least two neighboring shoulders of the shoulders are disposed at least 50 arcuate degrees apart from each other with respect to the first axis.” At least Figure 8 and the disclosure provide support for at least two neighboring shoulders disposed apart from one another. As shown in at least Figure 8, arc 100 between neighboring shoulders 60 is between 20 and 40 degrees. The Examiner is not solely permitted to rely on the drawings and the disclosure does not provide support for each of the neighboring shoulders of the first set of shoulders being disposed at least 55 arcuate degrees apart from each other with respect to the first axis.
**Note, while this subject matter was not supported in the original disclosure, an amendment including only the limitations of Claims 18 and 20 are permitted into the disclosure. If the subject matter is amended into the Specification, claims 18 and 20 would no longer receive the priority date of March 30, 2018. Claims 18 and 20 would receive the filing date of September 11, 2024 (which is the filing date of the instant application).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 6, 8, and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,745,326. Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 1-3, 6, 8, and 9 are anticipated by claim 1 of ‘326.
Claim 1 to Blumenthal of US Patent No. ‘326 recites a bolt cutter comprising: a bolt cutting head, the bolt cutting head comprising:
a first bolt cutting blade (12);
a second bolt cutting blade (14); and
a compound hinge (16) coupled to the first and second bolt cutting blades such that the first and second bolt cutting blades are allowed to pivot relative to each other, the compound hinge comprising:
a first link (22) defining a first aperture centered around a first axis, the first aperture comprising a first set of recesses; and
a second link (24) defining a second aperture centered around a second axis;
a first adjustable handle pivotally coupled to the first link, the first adjustable handle defining a third aperture centered around the first axis and comprising a third set of recesses;
a locking button (50) that actuates along the first axis and rotates around the first axis, the locking button comprises a set of shoulders that protrude radially away from the first axis, the set of shoulders sized to be received concurrently within both the first set of recesses and the third set of recesses, at least one shoulder of the set of shoulders having an arcuate radially outermost surface that extends an arcuate distance of at least 20 degrees with respect to the first axis (Col. 4, lines 58-67, Col. 5, lines 1-4);
the set of shoulders being less in number than the first set of recesses, and a second adjustable handle pivotally coupled to the second link at the second axis. Here, the more specific patent claims encompass the broader application claims. Following the rationale of In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, application may not obtain a second patent with a claim for the generic or broader inventio without first submitting an appropriate terminal disclaimer.
Claims 4, 5, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, and 5 of U.S. Patent No. 11,745,326. Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 4, 5 and 7 are anticipated by claims 2, 3, and 5 of ‘326. Here, the more specific patent claims encompass the broader application claims. Following the rationale of In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, application may not obtain a second patent with a claim for the generic or broader inventio without first submitting an appropriate terminal disclaimer. The chart below details the relationship between the pending claims and Patent ‘326, which are being rejected under nonstatuatory double patenting.
US Patent No. 11,745,326
Application 18/882,138
Claim 2
Claim 4
Claim 3
Claim 5
Claim 5
Claim 7
Claims 1-3 and 5-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,115,687. Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 1-3 and 5-9 are anticipated by claim 1 of ‘687.
Claim 1 to Blumenthal of US Patent No. ‘687 recites a bolt cutter comprising: a bolt cutting head, the bolt cutting head comprising:
a first bolt cutting blade (12);
a second bolt cutting blade (14);
a compound hinge (16) coupled to the first and second bolt cutting blades such that the first and second bolt cutting blades are allowed to pivot relative to each other, the compound hinge comprising:
a first link (22) defining a first aperture centered around a first axis, the first aperture comprising a first set of recesses; and
a second link (24) defining a second aperture centered around a second axis; a first adjustable handle pivotally coupled to the first link, the first adjustable handle defining a third aperture centered around the first axis and comprising a third set of recesses;
a locking button (50) that actuates along the first axis and rotates around the first axis, the locking button comprises a set of shoulders that protrude radially away from the first axis, the set of shoulders sized to be received concurrently within both the first set of recesses and the third set of recesses, at least one shoulder of the set of shoulders extends an arcuate distance of at least 20 degrees with respect to the first axis (Col. 4, lines 58-67, Col. 5, lines 1-4); and
a second adjustable handle pivotally coupled to the second link at the second axis. Here, the more specific patent claims encompass the broader application claims. Following the rationale of In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, application may not obtain a second patent with a claim for the generic or broader inventio without first submitting an appropriate terminal disclaimer.
Claims 4 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 5 of U.S. Patent No. 12,115,687. Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 4 and 7 are anticipated by claims 2 and 5 of ‘687. Here, the more specific patent claims encompass the broader application claims. Following the rationale of In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, application may not obtain a second patent with a claim for the generic or broader inventio without first submitting an appropriate terminal disclaimer. The chart below details the relationship between the pending claims and Patent ‘687, which are being rejected under nonstatuatory double patenting.
US Patent No. 12,115,689
Application 18/882,138
Claim 2
Claim 4
Claim 5
Claim 7
Claims 10-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,115,687. Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 10-13 are anticipated by claim 10 of ‘687.
Claim 1 to Blumenthal of US Patent No. ‘687 recites a cutter comprising:
a first blade (12);
a second blade (13);
a first locking button (50) that actuates along a first axis and rotates around the first axis, the first locking button defines a first base surface and a first set of shoulders (60) that protrude radially away from the first axis past the first base surface, wherein at least one shoulder of the first set of shoulders extends at least 10% further from the first axis than the first base surface (Col. 5, lines 5-20);
a second locking button that actuates along a second axis and rotates around the second axis, the second locking button defines a second base surface and a second set of shoulders that protrude radially away from the second axis past the second base surface, wherein at least one shoulder of the second set of shoulders extends at least 10% further from the second axis than the second base surface;
a hinge (16) coupled to the first and second blades and configured to actuate the first and second blades, the hinge comprising: a first link defining a first aperture centered around the first axis, the first aperture comprising a first set of recesses that interface with the first set of shoulders; and a second link defining a second aperture centered around the second axis, the second aperture comprising a second set of recesses that interface with the second set of shoulders;
a first adjustable handle (20) pivotally coupled to the first link, the first adjustable handle defining a third aperture centered around the first axis and comprising a third set of recesses that interface with the first set of shoulders protruding from the first locking button; and
a second adjustable handle pivotally coupled to the second link, the second adjustable handle defining a fourth aperture centered around the second axis and comprising a fourth set of recesses that interface with the second set of shoulders protruding from the second locking button. Here, the more specific patent claims encompass the broader application claims. Following the rationale of In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, application may not obtain a second patent with a claim for the generic or broader inventio without first submitting an appropriate terminal disclaimer.
Claims 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11, 13, and 16 of U.S. Patent No. 12,115,687. Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 14-16 are anticipated by claims 11, 13, and 16 of ‘687. Here, the more specific patent claims encompass the broader application claims. Following the rationale of In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, application may not obtain a second patent with a claim for the generic or broader inventio without first submitting an appropriate terminal disclaimer. The chart below details the relationship between the pending claims and Patent ‘687, which are being rejected under nonstatuatory double patenting.
US Patent No. 12,115,689
Application 18/882,138
Claim 11
Claim 14
Claim 13
Claim 15
Claim 16
Claim 16
Allowable Subject Matter
Claims 17 and 19 are allowed.
Claims 1-16 will be allowable with the filing and approval of a Terminal Disclaimer for the reasons set forth, bolt cutters with adjustably positioned handles are known, as seen in Feuerstein (2017/0165852). It is well known for adjustably handled cutters to have buttons with a set of shoulders, with each shoulder occupying more than 20 degrees, as seen in Schmidt (5,722,171) in figures 14 and 15. However, it would be unlikely that one of ordinary skill would have been motivated to modify Feuestein with Schmidt’s shoulder width.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER S MATTHEWS whose telephone number is (571)270-5843. The examiner can normally be reached Monday-Thursday 8am-4pm.
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/JENNIFER S MATTHEWS/Primary Examiner, Art Unit 3724