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 .
Election/Restrictions
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5-1-26.
Drawings
The drawings are objected to because:
In Figure 1, there are two occurrences of item 168 (threaded thumb lock). The upper occurrence appears to be incorrect and should be replaced with 170 which is the transparent portion (see Figure 5). The left occurrence of 168 is correct.
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.
Specification
The disclosure is objected to because of the following informalities:
It is unclear how the movement of the housing in claim 1 takes place and how the sliding of the shoe housing takes place? It is clear from Figure 2 that the shoe and the main housing can move relative to each other but what is not clear is how the movement starts or takes place. It is believed that the user applies the shoe against the pipe and then apply a force to compress the springs to move the blade to the receptacle and then releases the force and the springs move back to the rest position. Or does the saw itself have the ability to move the blade to and from the receptacle? An operation explanation in the Detailed Description is requested so the functions are clear.
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 1-12 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.
With regards to claims 1 and 4, in the last paragraph of claim 1, the main housing moves toward and away from the shoe. Claim 4 then discloses the slides over the portion of the main housing during a cutting operation. Claim 1 discloses moving between the states with the main housing moving in relation to the shoe and claim 4 discloses the shoe housing slides over the main housing during a cutting operation. Is the movement of the housing to the shoe the same or a different movement than the sliding of the shoe housing over the main housing?
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 1-12, 16-18, and 20 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 pre-AIA the applicant regards as the invention.
With regards to claim 1, the “saw blade” disclosure is unclear. As written, the saw blade in not in or engaged with the main housing which does not appear to be supported. The saw blade needs to have a structural relationship with the main housing in the same manner as the drive mechanism because both are claimed and there never appears to be a time where the blade does not have a relationship with the main housing. Claim 16 has the same issue.
With regards to claims 2 and 3, the guide plate, at least one guide collar, the at least one guide pin, and the pin fit into the collar disclosures are unclear. Claim 1 previously discloses the “shoe is slidably coupled to the main housing” but claims 2 and 3 are not written in a way that further limits this claim 1 limitation. Therefore, the disclosures of claims 2 and 3 are unrelated and in addition to the claim 1 limitation which is not supported. Claims 2 and 3 needs to disclose that the structures claim at least partially define the slidable coupling between the shoe and the main housing.
With regards to claims 4, 9, 10, 16, and 20, the terms “upper” and “lower” are indefinite in that they are dependent upon an unclaimed indefinite orientation. The cutter is handheld and is capable of being utilized in an infinite number of orientations some of which do not correspond with the terms as claimed. Terms that are true regardless of the orientation need to be used.
With regards to claim 4, what structure defines the sliding of the shoe housing relative to the main housing in relation to the movement of the main housing relative to the shoe disclosed in claim 1?
With regards to claim 4, the phrase “a cutting operation” is unclear. As written, the cutting operation is unrelated to and in addition to the movements between the plunge and retracted states which does not appear to be supported. It is believed that the movements between the states would be the same thing as a cutting operation? If so, the cutting operation needs to be linked to the movements between the sates of claim 1.
With regards to claim 5, as written, the first portion and the second portion are unrelated and in addition to the pipe receptacle which is not supported. The pipe receptacle appears to have the first and second portions and needs to be the structure disclosed in claim 5. Claim 18 has the same issue.
With regards to claim 5, the phrase “first portion that is fixed” is unclear. It is unclear what the first portion is “fixed” in relation to? The cutter is handheld and all components can move along with the cutter as a whole.
With regards to claim 6, what structure incorporates the “pin”. As written, the pin is not part of the shoe or any other part of the cutter which is not supported. Claim 6 needs to disclose that the second portion is rotationally connected to the first portion via a pin and rotation about the pin moves the second portion between the first state and the second state. Claim 17 has the same issue.
With regards to claims 5 and 16, the terms “aligned” and “misaligned” are unclear. There can be a straight line drawn between any two point thereby aligning the portions in both states. Further definition is needed so it is clear what is meant.
With regards to claim 7, what structure allows for the second portion to be removed? There needs to be a “detachable connection” between the first and second parts allow for the removing function to take place.
With regards to claim 10, the phrase “closely fit” is unclear. It is unclear what can and cannot be considered a “close” fit in relation to a relationship that is just “fit” and not considered “close”. Removing the word “closely” overcomes the issue.
With regards to claim 11, claim 1 discloses the blade is in the receptacle when in the plunge state. However, as written in claim 11, the saw blade slot is unrelated to the saw blade being in the receptacle which is not supported. Since claim 1 discloses the blade is in the receptacle, claim 11 needs to disclose the blade is in the receptacle via saw blade slot because this is the only structure that allows for that relationship to happen in the plunge state.
With regards to claim 12, claim 11 is written in a way that discloses the saw blade slot is unrelated to the plunge state. If two structures are unrelated, they cannot be related later on. Claim 12 should be amended into claim 11 because there is never a time where the blade does not use the slot to enter the receptacle in the plunge state.
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.
Claims 1, 2, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Otis (2,645,011).
With regards to claims 1, 2, and 8 Otis discloses the same invention including a circular saw plunge cutter capable of cutting pipe (Fig. 1) having a main housing (15, 16, 17, 25), a drive mechanism at least partially disposed within the main housing (13), a saw blade operably coupled with the drive mechanism (10), a shoe slidably coupled to the main housing (11), the shoe includes a receptacle capable of receiving a pipe (11a, Fig. 3), the cutter is adjustable between a plunge state in which the main housing moves toward the shoe and the blade extends into the receptacle (Fig. 2, column 3, the paragraph starting with “In operation” discusses how the hand grips are squeezed towards each other and brought together. That means both parts move relative to each other so that the main housing moves in relation to the shoe just as the shoe moves in relation to the main housing) and a retracted state in which the main housing moves away from the shoe and the blade does not extend into the receptacle (Fig. 1), the main housing includes a guide plate disposed therein (17), the guide plate includes at least one guide collar (22, 23), and a blade guard mounted on main housing around the blade (25).
Claims 16-18 are rejected, as best understood, under 35 U.S.C. 102(a)(1) as being anticipated by Schlosser (2009/0307910).
With regards to claims 16-18, Schlosser discloses the same invention including a circular saw plunge cutter capable of cutting pipe (Figs. 1A-2) having a main housing (110), a drive mechanism at least partially disposed within the main housing (paragraph [0014]), a saw blade operably coupled with the drive mechanism (10), a shoe slidably coupled to the main housing (100), the shoe includes a shoe housing that fits around an upper portion of the main housing (Fig. 1A), the shoe includes a first portion fixed relative to the shoe housing (25) and a second portion (20) that is movable relative to the shoe housing between a first state, in which the second portion is aligned with the first portion (Fig. 1A) and a second state in which the second portion is misaligned with the first portion (Fig. 1B), in the second state the second portion is rotated away from the first portion about a pin (Figs. 1A-2), and the shoe includes a pipe receptacle in which a pipe is capable of being received (Fig. 2).
Allowable Subject Matter
Claims 3-7, 9-12, and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON DANIEL PRONE whose telephone number is (571)272-4513. The examiner can normally be reached on Monday-Friday: 7:00 am-3:00 pm.
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18 June 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724
Prosecution Insights