DETAILED ACTION
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, other than in Para [0006]. Based on the lack of disclosed details the upper range could be 51 arcuate degrees (since there are no details in the disclosure defining the upper limit of the range). 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).
Allowable Subject Matter
Claims 1-17 and 19 are allowed.
Claim 18 and 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, set forth in this Office action. 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.
Response to Arguments
The drawing objection in the Office Action mailed February 13, 2026 has been obviated by the Remarks/Arguments filed May 12, 2026.
Applicant's arguments filed May 12, 2026 have been fully considered but they are not persuasive. Applicant argues applicant is required to furnish drawing of his or her invention where necessary for the understanding of the subject matter sought to be patented. Applicant argues the claims with respect to the phrase “at least 50 arcuate degrees apart”, “between 50 arcuate degrees and 70 arcuate degrees” and “at least 55 arcuate degrees apart” are not claims “necessary for the understanding.”
The Examiner respectfully disagrees. The depicted illustrations are with respect to the neighboring shoulders being between 20 and 40 degrees, between 25-35 degrees, and more specifically between 29 and 33 degrees, according to Para [0031] on Pages 6-7. There are no drawings illustrating the claimed subject matter, which in this instance, are necessary for understanding the claimed subject matter.
Applicant argues the Examiner has failed to establish a prima facie case in that claims 18 and 20 do not comply with the written description requirement. Applicant further argues Claims 18 and 20 of the pending application corresponding to claims 18 and 20 in US Application No. 16/383221, now US Patent No. 11,745,326 and that the originally filed claims (in the instant application are sufficient to describe the claimed invention). Applicant further argues the Examiner did not provide any analysis or explanation regarding why a person in the art would not recognize the originally filed claims 18 and 20 as providing support in the instant application.
A prima facie case is directed to 35 U.S.C. 103 and the details of establishing a prima facie case are directed to “During patent examination and reexamination, the concept of prima facie obviousness establishes the framework for the obviousness determination and the burdens the parties face. Under this framework, the patent examiner must first set forth a prima facie case, supported by evidence, showing why the claims at issue would have been obvious in light of the prior art. Once the examiner sets out this prima facie case, the burden shifts to the patentee to provide evidence, in the prior art or beyond it, or argument sufficient to rebut the examiner's evidence. The examiner then reaches the final determination on obviousness by weighing the evidence establishing the prima facie case with the rebuttal evidence." ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365–66, 117 USPQ2d 1951, 1553-54 (Fed. Cir. 2016) (internal citations omitted).
The legal concept of prima facie obviousness is a procedural tool of examination which applies broadly to all arts. It allocates who has the burden of going forward with production of evidence or arguments in each step of the examination process. See In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971), amended, 448 F.2d 791, 171 USPQ 294 (CCPA 1971); In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). The examiner bears the initial burden of using facts and reasoning to establish a prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence or arguments to show nonobviousness. If, however, the examiner does produce a prima facie case, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence of nonobviousness, such as comparative test data showing that the claimed invention possesses properties not expected by the prior art, or rebuttal arguments. The decision of whether to submit evidence after a rejection should be influenced by the goals of compact prosecution, which encourages the early submission of such evidence. It is also noted that evidence submitted after final rejection may be denied entry into the record.
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art". That time is "before the effective filing date of the claimed invention" for 35 U.S.C. 103 or "at the time the invention was made" for pre-AIA 35 U.S.C. 103. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to a hypothetical person of ordinary skill in the art. Knowledge of applicant’s disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search, and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant's disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.”
In this particular instance, the Examiner rejected to claims 18 and 20 under 112(a), written description. As stated in the above 112(a) rejection, 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. Para [0006] provides a lower limit of the angular range of being at least 50 degrees, but does not set forth an upper limit. In other words, as currently set forth in the disclosure the range could extend between 50 and 360 degrees. There are no details to the range encompassing an upper limit of 70 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 upper limit of the range. The disclosure does not support the neighboring shoulders disposed between a range of 50 to 70 arcuate degrees.
The issued claims in US Patent No. 11,745,326 does not provide support for claims 18 and 20. Col. 2, lines 7-10 is the only mention of the arcuate range being “at least 50 degrees” which is the same verbiage in Para [0006] of the instant application. The issued claims do not exceed 14 and there is no claimed angle exceeding 40 degrees. Claims 18 and 20 in ‘326 (US Application 16/383221) were canceled November 18, 2020.
As set forth in the above rejection, while the subject matter to claims 18 and 20 were 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).
Conclusion
THIS ACTION IS MADE FINAL. 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 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
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