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 .
Prosecution Reopened
In view of the Appeal Brief filed on May 27, 2026, PROSECUTION IS HEREBY REOPENED. New rejections are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/BOYER D ASHLEY/ Supervisory Patent Examiner, Art Unit 3724
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 and 6-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/983,253 in view of Moreno (US Publication 2013/0081285) and further in view of Weiss (US Patent 4,864,730).
Regarding claim 1, copending Application No. 18/983,253 discloses a handheld ring cutter comprising: a body extending in a longitudinal direction from a body front end to a body rear end (claim 1, line 2); a blade motor housed in the body, the blade motor having a motor rotation axis (claim 1, line 3); a circular blade drivingly connected to the blade motor via a drive shaft, the drive shaft defining a blade rotation axis (claim 1, lines 4-5); a safety guard pivotably connected to the body and rotatable about a guard rotation axis (claim 1, line 6), and the safety guard being aligned with the circular blade (claim 1, line 7), the safety guard being rotatable about the guard rotation axis relative to the circular blade (claim 1, lines 8-9); and an electro-mechanical safety guard actuator drivingly connected to the safety guard and controlling movement of the guard (claim 1, lines 10-11). Copending Application No. 18/983,253 fails to disclose the motor rotation axis extends in the longitudinal direction; the blade rotation axis extends in the lateral direction; such that the lateral direction being horizontal and transverse to the longitudinal direction, the drive shaft protruding in the lateral direction out of the body, wherein the circular blade being mounted to the drive shaft outside of the body at a position spaced from the body in the lateral direction. However, Moreno teaches it is known in the art of handheld power saws to include a motor (136) having a motor rotation axis (176) extending in the longitudinal direction (fig. 3); the blade rotation axis (268) extends in the lateral direction (para. 0077, lines 12-14); such that the lateral direction being horizontal (para. 0111, lines 9-10) and transverse to the longitudinal direction (para. 0077, lines 19-20), a drive shaft (260) protruding in the lateral direction out of the body (para. 0077, lines 20-22), wherein the circular blade (296) being mounted to the drive shaft (para. 0079, lines 4-7) outside of the body at a position spaced from the body in the lateral direction (para. 0110, lines 1-4). and the safety guard being located outside of the body at a position spaced from the body in the lateral direction. It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the handheld ring cutter of copending Application No. 18/983,253 with the teaching of Moreno such that the motor rotation axis extends in the longitudinal direction; the blade rotation axis extends in the lateral direction; such that the lateral direction being horizontal and transverse to the longitudinal direction, the drive shaft protruding in the lateral direction out of the body, wherein the circular blade being mounted to the drive shaft outside of the body at a position spaced from the body in the lateral direction as this is a known structural configuration for a handheld power saw that is compact in size and robust (Moreno, para. 0004, lines 1-2). The modified handheld ring cutter of copending Application No. 18/983,253 substantially disclosed above fails to include the guard rotation axis extending in the lateral direction, and the safety guard being located outside of the body at a position spaced from the body in the lateral direction. However, Weiss (US Patent 4,864,730) teaches it is known in the art of handheld ring cutters to provide a safety guard with a guard rotation axis extending in the lateral direction, wherein the safety guard is aligned with the circular blade. It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the handheld ring cutter of copending Application No. 18/983,253 with the teaching of Weiss in order to maintain the ring holding function of the safety guard.
This is a provisional nonstatutory double patenting rejection.
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.
Claim 7 is 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 7 recites, “a cutting progress indicator associated with the rotational position of the safety guard about the guard rotation axis.” This limitation has the following issues: As currently written, there is insufficient antecedent basis in the claims for the recitation of “the rotational position of the safety guard.” Examiner notes claim 6 recites, “a guard position sensor located to sense a rotational position of the safety guard about the guard rotation axis” [emphasis added]. However, claim 7 depends directly from claim 1 which does not previously define or otherwise introduce “a rotational position of the safety guard.” It is unclear if Applicant intends for there to be any distinction between the two rotational positions or if Applicant intended to have claim 7 depend from claim 6. It is unclear if the recitation of “the rotational position of the safety guard” is referring to a position of the safety guard or to a rotational position of another feature. It is unclear what can or cannot be included within the scope of being “associated with.” It is unclear if the claim positively requires the cutting progress indicator to specifically indicate the rotational position of the safety guard or if “a cutting progress indicator associated with” can broadly be interpreted as an indicator that tells the operator the safety guard is in a position in which the ring is being pressed against the saw blade, thereby indicating that cutting is progressing.
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 1-5, 9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Weiss (US Patent 4,864,730) in view of Moreno (US Publication 2013/0081285) and further in view of Linke et al (US Patent 4,942,795), herein referred to as Linke, and Anderson (US Patent 8,894,654).
Regarding claim 1, Weiss discloses a handheld ring cutter (fig. 1) comprising: a body (elongated housing 10 and outer shell of electrical drive motor 20) extending in a longitudinal direction (annotated fig. 2) from a body front end (annotated fig. 2) to a body rear end (annotated fig. 2); a blade motor (20) housed in the body (col. 1, lines 56-57), the blade motor (drive motor 20) having a motor rotation axis (coaxial with drive shaft 23); a circular blade (22) drivingly connected to the blade motor via a drive shaft (col. 2, lines 15-16), the drive shaft defining a blade rotation axis extending in a lateral direction (annotated fig. 2), the lateral direction being horizontal (e.g., fig. 4) and transverse to the longitudinal direction (annotated fig. 2), the drive shaft (23) protruding in the lateral direction out of the body (i.e., drive shaft 23 at least protrudes from a surface of the body), and the circular blade (22) being mounted to the drive shaft (23); and a safety guard (30) pivotably connected to the body (col. 1, lines 62-64) and rotatable about a guard rotation axis (rotational axis of pin 31), the guard rotation axis extending in the lateral direction (col. 1, lines 62-68).
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• Weiss fails to disclose the motor rotation axis extends in the longitudinal direction, the drive shaft protruding in the lateral direction out of the body, wherein the circular blade being mounted to the drive shaft outside of the body at a position spaced from the body in the lateral direction. However, Moreno teaches it is known in the art of handheld power saws to include a motor (136) having a motor rotation axis (176) extending in the longitudinal direction (fig. 3); the blade rotation axis (268) extends in the lateral direction (para. 0077, lines 12-14); such that the lateral direction being horizontal (para. 0111, lines 9-10) and transverse to the longitudinal direction (para. 0077, lines 19-20), a drive shaft (260) protruding in the lateral direction out of the body (para. 0077, lines 20-22), wherein the circular blade (296) being mounted to the drive shaft (para. 0079, lines 4-7) outside of the body at a position spaced from the body in the lateral direction (para. 0110, lines 1-4). and the safety guard being located outside of the body at a position spaced from the body in the lateral direction.
It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the handheld ring cutter of Weiss with the teaching of Moreno such that the blade rotation axis extends in the lateral direction; such that the lateral direction being horizontal and transverse to the longitudinal direction, the drive shaft protruding in the lateral direction out of the body, wherein the circular blade being mounted to the drive shaft outside of the body at a position spaced from the body in the lateral direction as this is a known structural configuration for a handheld power saw that is compact in size and robust (Moreno, para. 0004, lines 1-2). • As a result of the aforementioned modification, the safety guard is located outside of the body at a position spaced from the body in the lateral direction (fig. 3), and the safety guard being aligned with the circular blade (fig. 3), the safety guard (30) being rotatable about the guard rotation axis relative to the circular blade (Weiss col. 1, lines 64-68). • The modified handheld ring cutter of Weiss substantially disclosed above fails to include an electro-mechanical safety guard actuator drivingly connected to the safety guard and controlling movement of the guard. Linke teaches it is known in the art of cutting devices to mechanically and automatically actuate a pivotably mounted lever (14) that supports a workpiece (chuck 16 is configured to hold a workpiece) relative to a circular blade (12). The lever (14) pivots about shaft (30) in the same way as the guard (30) disclosed by Weiss and is driveably connected (col. 4, lines 22-33) to a motor (42) that is controlled by signals from sensors to apply the correct amount of force through the lever (14) into the workpiece and against the blade (col. 6, lines 55-68). It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the handheld ring cutter of Weiss with the teaching of Linke such that an electro-mechanical safety guard actuator drivingly connected to the safety guard and controlling movement of the guard in order to at least partially automate operation of the ring cutter and to mitigate operation inconsistencies that arise from the operator of the handheld ring cutter misjudging how much pressure should be applied to the guard actuator to most effectively cut through the ring. Regarding claims 2-5, the modified handheld ring cutter of Weiss substantially disclosed above fails to include the following: In claim 2, a pistol grip handle extending upwardly from a handle lower end to a handle upper end, the handle upper end being connected to the body; In claim 3, a motor activation trigger connected to the pistol grip handle proximate the handle upper end; In claim 4, a resting base connected to the handle lower end and positioned below the handle, the resting base extending outwardly of the handle lower end; and In claim 5, an energy storage member positioned within the resting base and electrically connected to the blade motor. However, Kamiya teaches it is known in the art of handheld power tools to provide a pistol grip handle (6) extending from a distal handle end (with battery mount 8) to a proximate handle end (with main switch 34), the proximate handle end being connected to a body (4). Kamiya teaches a resting base (outer shell of battery pack 60) is connected to the distal handle end (fig. 1), the resting base (60) extending outwardly of the distal handle end (fig. 1). Kamiya teaches an energy storage member (battery 10) is positioned within the resting base a (para. 0067) and electrically connected to the blade motor (fig. 11; para. 0067). Additionally, Anderson teaches it is known in the art of handheld power tools to provide a pistol grip handle (figs. 6and 7A) extending upwardly from a handle lower end (near 364) to a handle upper end (near trigger housing 212), the handle upper end being connected to a body (210). Anderson teaches the handle upper end of the pistol grip handle includes an activation trigger (232, 234). Anderson teaches a resting base (base case cover 364 and expanded portion 362) is connected to the handle lower end (fig. 6) and positioned below the handle (fig. 7A), the resting base (362, 364) extending outwardly of the handle lower end (fig. 6). Kamiya teaches an energy storage member (360) positioned within the resting base (fig. 6). It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the handheld ring cutter of Weiss substantially disclosed above with the teaching of Kamiya and Anderson such that the handheld ring cutter includes a pistol grip handle extending upwardly from a handle lower end to a handle upper end, the handle upper end being connected to the body (as per claim 2); a motor activation trigger connected to the pistol grip handle proximate the handle upper end (as per claim 3); a resting base connected to the handle lower end and positioned below the handle, the resting base extending outwardly of the handle lower end (as per claim 4); and an energy storage member positioned within the resting base and electrically connected to the blade motor (as per claim 5) because the pistol grip handle and associated features (i.e., trigger, resting base and battery) are useful for improving the ergonomics during single-handed operation of the handheld ring cutter and allows the operator to stand the handheld ring cutter in place in an upright orientation when not in use. Moreover, it would have been obvious to replace the power cable of Weiss with the energy storage member of Kamiya and Anderson to facilitate cord-free use of the handheld ring cutter without the need of a power cord connected to an external power source.
Regarding claim 9, the modified handheld ring cutter of Weiss substantially disclosed above one or more processors configured to collectively: direct the safety guard actuator to move the safety guard relative to the circular blade (as taught by Linke, col. 2, lines 7-15). Regarding claim 11, the modified handheld ring cutter of Weiss substantially disclosed above fails to specifically disclose an electrical sensor positioned to sense electrical readings associated with the blade motor. However, Linke teaches it is known in the art of control systems for cutting devices to sense electrical readings associated with the blade motor, i.e., Linke states in col. 7, lines 47-51, “[t]he power drawn by motor 26 will be monitored by circuit 119 as a feedback.” Examiner interprets the element which monitors the power draw of the motor to correspond to “an electrical sensor.” It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the handheld ring cutter of Weiss substantially disclosed above with the teaching of Linke such that an electrical sensor is positioned to sense electrical readings associated with the blade motor in order to allow the handheld ring cutter to monitor operational parameters while in use. Regarding claim 12, the modified handheld ring cutter of Weiss substantially disclosed above includes one or more processors communicatively coupled to the safety guard actuator and the electrical sensor, and configured to collectively: receive, from the electrical sensor, an electrical reading associated with the blade motor (Linke, col. 7, lines 42-58); and direct the safety guard actuator to move the safety guard (as taught by Obear), based at least in part on the electrical reading, upwardly relative to the circular blade (Linke, col. 7, line 59 – col. 8 , line 2).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Weiss (US Patent 4,864,730), Moreno (US Publication 2013/0081285), Linke (US Patent 4,942,795), and Anderson (US Patent 8,894,654) in further view of Obear (US Patent 4,091,698) and view of Lovelass et al (US Publication 2013/0327552), herein referred toas Lovelass. Regarding claim 6, the modified handheld ring cutter of Weiss substantially disclosed above fails to include a guard position sensor located to sense a rotational position of the safety guard about the guard rotation axis. However, the following references provide teaching pertinent to this limitation: A. Obear (US Patent 4,091,698) teaches it is known in the art of drives for moving workpieces and cutting tools relative to one another to include a position sensor (provided by position reference signal 116) to provide information to a control system which drives a motors that facilitate the relative movement between the workpieces and the cutting tools (col. 4, lines 30-39). Obear states in col. 3, lines 22-34, “[t]he invention also accommodates itself to automatic return of the cutting head by use of an auxiliary circuit that senses when the load has dropped below and is maintained below a predetermined level. For example, assuming that the full load reference signal has been adjusted by a potentiometer to maintain a current draw for the motor of two hundred amperes, then during the cutting operation the current will vary up and down around this 200 ampere line as an optimum. This optimum current would be governed by the instantaneous position of the piston 38 which is regulated to the servo valve 34. When the cut through the workpiece 24 is completed, the load on the saw drops sharply.” When considered with respect to safety guard (30) disclosed by Weiss, the teaching of Obear suggests a similar reference signal can be provided by a sensing means for the guard sensor to provide indication of when the blade has passed through the ring.
B. Anderson teaches it is known in the art of cutting tools, e.g., a surgical power tool, to provide an electronics package (236) and “instruments 10 described herein can instantaneously measure the axial motion and the depth the working tool 110 travels into the work by a transducer or encoder, such as an incremental rotary encoder, an absolute rotary encoder, mechanical, magnetic, electrical, or optical rotary encoder, or the like (see for example BEI Optical encoder; www.motion-control-info.com/encoder_design_guide.html). The depth the working tool 110 travels into the work can also be measured by a synchro, a resolver, a rotary variable differential transformer (RVDT) or a rotary potentiometer, or the like” (col. 15, lines 16-25). It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the handheld ring cutter of Weiss with the teaching of Obear and Anderson so as to include a guard position sensor located to sense a rotational position of the safety guard about the guard rotation axis in order to help automate the function of driving the safety guard toward the ring and to mitigate operation inconsistencies that arise from the operator of the handheld ring cutter misjudging how much pressure should be applied to the guard actuator to most effectively cut through the ring. Regarding claim 7, the modified handheld ring cutter of Weiss substantially disclosed above fails to specifically disclose a cutting progress indicator associated with the rotational position of the safety guard about the guard rotation axis. However, Lovelass teaches it is known in the art of operational parameter indicators to provide a plurality of LEDs (102, 104, 106, 108, 110, 112) form a display port (80) to provide a visual indication of a variety of working parameters of the power tool (e.g., para. 0058-0062) on a rear portion of the body and face rearwardly (e.g., fig. 8). Additionally, Obear teaches it is known in the art of drives for moving workpieces and cutting tools relative to one another to include a position sensor (provided by position reference signal 116) to provide information to a control system which drives a motors that facilitate the relative movement between the workpieces and the cutting tools (col. 4, lines 30-39). Obear states in col. 3, lines 22-34, “[t]he invention also accommodates itself to automatic return of the cutting head by use of an auxiliary circuit that senses when the load has dropped below and is maintained below a predetermined level.
It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the handheld ring cutter of Weiss substantially disclosed above with the teaching of Lovelass and Obear such that a cutting progress indicator associated with the rotational position of the safety guard about the guard rotation axis in order to provide cutting progress information to the operator of the handheld ring cutter.
Regarding claim 8, the modified handheld ring cutter of Weiss substantially disclosed above as set forth in the 103 rejections for claims 6 and 7 include a cutting progress indicator (as taught by Lovelass) associated with the rotational position of the safety guard about the guard rotation axis; and one or more processors communicatively coupled to the guard position sensor and the cutting progress indicator, and configured to collectively: direct the safety guard actuator to move the safety guard relative to the circular blade, periodically receive position signals from the guard position sensor, and periodically direct the cutting progress indicator to update based on the position signals (as taught by Obear and Anderson).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Weiss (US Patent 4,864,730), Moreno (US Publication 2013/0081285), Linke (US Patent 4,942,795), and Anderson (US Patent 8,894,654) in further view of Zwirkoski et al (US Patent 9,168,188), herein referred to as Zwirkoski.
Regarding claim 10, the modified handheld ring cutter of Weiss substantially disclosed above includes a compact circular blade (Weiss, 22) but fails to disclose the circular blade has a diameter of between 10mm and 50mm. However, Zwirkoski teaches it is known in the art of handheld cutting devices (fig. 1) used for medical purposes (e.g., cast removal) to utilize a circular blade (e.g., 54, 56), wherein the circular blade can be formed in a variety of diameters (e.g., figs. 48A-48E; described in col. 5, lines 17-31), including diameters of 1.474 inches [37.4396 mm], 1.736 inches [44.0944 mm], 1.998 inches [50.7492 mm], 2.226 inches [56.5404 mm] and 2.365 inches [60 mm]. It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the handheld ring cutter of Weiss substantially disclosed above with the teaching of Zwirkoski such that the circular blade has any reasonable diameter, including a diameter of between 10mm and 50mm, since Zwirkoski teaches blades in this size range are known in the art and because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Weiss (US Patent 4,864,730), Moreno (US Publication 2013/0081285), Linke (US Patent 4,942,795), and Anderson (US Patent 8,894,654) in further view of Harris (US Patent 6,212,437). Regarding claim 13, the modified handheld ring cutter of Weiss substantially disclosed above fails to specifically include a user-operable guard adjustment input; and one or more processors communicatively coupled to the safety guard actuator and the user-operable guard adjustment input, the one or more processors configured to collectively: direct the safety guard actuator to move the guard relative to the circular blade in response to user interaction with the user-operable guard adjustment input. However, Harris teaches it is known in the art of cutting devices to include a control assembly (39) for a band saw with user-operable adjustment inputs (e.g., “cutting force” dial 54 and “clamping force” dial 68) that allow the operator to control and adjust movement of the cutting tool during a cutting operation. It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the handheld ring cutter of Weiss substantially disclosed above with the teaching of Harris so as to provide a user-operable guard adjustment input; and one or more processors communicatively coupled to the safety guard actuator and the user-operable guard adjustment input, the one or more processors configured to collectively: direct the safety guard actuator to move the guard relative to the circular blade in response to user interaction with the user-operable guard adjustment input because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
To the extent some of Applicant’s arguments are applicable, i.e., in response to applicant's argument that the teaching of Linke, Obear and Anderson are not applicable to the handheld ring cutter of Weiss, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL ALLEN DAVIES whose telephone number is (571)270-1511. The examiner can normally be reached Monday-Friday; 9am-5pm EST.
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/SAMUEL A DAVIES/Patent Examiner, Art Unit 3724 September 12, 2026
/BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
Prosecution Insights