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 grounds of rejection 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
Election/Restrictions
Claims 4-6 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species B and C, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 2, 2025.
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, 3, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Weiss (US Patent 4,864,730) in view of Linke et al (US Patent 4,942,795), herein referred to as Linke, Obear (US Patent 4,091,698) and Anderson (US Patent 8,894,654). Regarding claim 1, Weiss discloses a handheld ring cutter (fig. 1) comprising: a body (10) extending in a longitudinal direction from a body front end (i.e., left-hand side of fig. 1) to a body rear end (i.e., right-hand side of fig. 1); a blade motor (20) housed in the body (i.e., housing 10 extends around motor 20, wherein motor 20 is inside enlarged portion of housing identified by reference character “20”), the blade motor having a motor rotation axis (coaxial with driveshaft 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 (fig. 1), a safety guard (30) pivotably connected to the body (About pivot point 31) and rotatable about a guard rotation axis (i.e., coaxial with pivot point 31), the safety guard being substantially aligned with the circular blade (figs. 2 and 3), the safety guard being rotatable about the guard rotation axis relative to the circular blade (col. 1, line 62 – col. 2, line 2), a safety guard actuator (32) drivingly connected to the safety guard and controlling movement of the guard (col. 2, lines 5-10), a guard position sensor (cut-off switch 12) located to sense a rotational position of the safety guard about the guard rotation axis (i.e., detects “when saw blade has cut through the ring,” col. 2, lines 28-29, which indicates safety guard is closely proximate to saw blade), and a cutting progress indicator (blade operative indicator light 18) associated with the rotational position of the safety guard about the guard rotation axis (col. 2, lines 25-32; blade operative indicator light 18 turns on when saw blade 22 is rotating and cutting through the ring, which, in turn, safety guard 30 is operatively positioned against ring). • Weiss fails to disclose an electro-mechanical safety guard actuator drivingly connected to the safety guard and controlling movement of the guard. However, 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 the handheld ring cutter includes an electro-mechanical safety guard actuator drivingly connected to the safety guard and controlling movement of the guard in order to automate the cutting process and to eliminate variability generated from individual operator grip strength and performance during a ring removal procedure (i.e., variations in how much pressure can be applied to the safety guard to press the ring against the saw blade). • The modified handheld ring cutter of Weiss substantially disclosed above fails to disclose 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 or continuously receive position signals from the guard position sensor, and periodically or continuously direct the cutting progress indicator to update based on the position signals. However, the following references provide teaching pertinent to the aforementioned limitations: A. Linke teaches it is known in the art of cutting devices to mechanically and automatically actuate pivotably mounted lever (14) that supports a workpiece (chuck 16 is configured to hold a workpiece) relative to a circular blade (12) to provide “[c]ontrol means… for controlling the means for moving the processing member and the workpiece together, to keep the pressure between the processing member and the workpiece at a predetermined value by means of monitoring of the load differential” (col. 2, lines 7-11). B. Obear (US Patent 4,091,698) discloses 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 (servo control system 30) which drives a motors that facilitate the relative movement between the workpieces and the cutting tools (col. 4, lines 30-39). Notably, Obear mounts saw blade (10) on a pivoting arm (18) to move saw blade toward and away from workpiece (24), wherein “position reference signal 116 … is proportionate to the position of the blade relative to the work piece…” (col. 1, lines 31-32). When considered with respect to safety guard (30) disclosed by Weiss, the teaching of Obear suggests a similar reference signal means can be provided by a position sensing means for the guard sensor to provide indication of a location of the safety guard with respect to the saw blade. C. Anderson (US Patent 8,894,654) a surgical power tool with an electronics package (236) that “can include a display” (col. 14, lines 2-3) 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) [emphasis added]. Further, Anderson states in col. 15, lines 34-48, “[t]he encoder can measure rotation and convert that information in to axial motion. The encoder … can provide instantaneous information on the position of the drive shaft 40 regarding the depth of axial movement of the working tool into a bore. This information can be fed to the electronics package 235 that can perform multiplication to determine the tool position. For example, the rotation of the drive shaft 40 can be measure and a calculation performed to determine the distance traveled. This distance traveled can be compared to a set point or zero point such that the position of the working tool 110 from the distal end of the instrument can be calculated. This calculation relates to depth as determined by the position of the distal end of the instrument with respect to the target tissue (e.g. bone)” [emphasis added]. Moreover, Anderson teaches in col. 15, lines 49-54, “the instrument can include a meter that measures the rotational speed… time, velocity, acceleration, deceleration or torque. The meter can provide the user with information pertaining to the passage of the working tool 110 through different layers of tissue” [emphasis added]. The teaching of Anderson suggests display and/or meter features are known in the art to provide distance information to the user, from which cutting progress can be derived. 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, Obear and Anderson such that 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 or continuously receive position signals from the guard position sensor, and periodically or continuously direct the cutting progress indicator to update based on the position signals 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 and to provide increased situational awareness to the operator of the handheld ring cutter. Regarding claim 3, the modified handheld ring cutter of Weiss substantially disclosed above includes the guard position sensor comprises a potentiometer (as taught by Anderson, col. 15, lines 16-25). Regarding claim 13, 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 14, 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, 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 2 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Weiss (US Patent 4,864,730), Linke (US Patent 4,942,795), Obear (US Patent 4,091,698) and Anderson (US Patent 8,894,654) in further view of Lovelass et al (US Publication 2013/0327552), herein referred toas Lovelass. Regarding claim 2, the modified handheld ring cutter of Weiss substantially disclosed above fails to specifically disclose the cutting progress indicator is positioned at the body rear end and faces rearwardly. 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). 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 such that the cutting progress indicator is positioned at the body rear end and faces rearwardly in order to be arranged in a position that is easily viewable by the operator. Regarding claim 7, the modified handheld ring cutter of Weiss substantially disclosed above fails to specifically disclose the cutting progress indicator comprises a series of discrete multi-colored lights, and said periodically directing the cutting progress indicator to update based on the position signals comprising changing a color of the multi-colored lights in sequence as a visual representation of the rotational position of the safety guard about the rotation axis. However, Lovelass teaches it is known in the art to provide the cutting progress indicator comprises a series of discrete multi-colored lights (Loveless, para. 0062) to provide feedback regarding the operation of the power tool. Additionally, Obear teaches the position sensor continuously provides position reference data to the servo control system as the cutting blade is moved toward the workpiece (Fig. 1). 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 the cutting progress indicator comprises a series of discrete multi-colored lights to provide feedback regarding the operation of the power tool and periodically directing the cutting progress indicator to update based on the position signals comprising changing a color of the multi-colored lights in sequence as a visual representation of the rotational position of the safety guard about the rotation axis 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. Regarding claims 8-11, the modified handheld ring cutter of Weiss substantially disclosed above fails to include the following: In claim 8, 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 9, a motor activation trigger connected to the pistol grip handle proximate the handle upper end; In claim 10, 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 11, an energy storage member positioned within the resting base and electrically connected to the blade motor. However, Lovelass teaches it is known in the art of handheld power tools to provide a pistol grip handle (14) extending upwardly from a handle lower end (e.g., 18) to a handle upper end (e.g., location of rotary switch assembly 32), the handle upper end being connected to a body (12). Lovelass teaches the handle upper end of the pistol grip handle includes a motor activation trigger (28). Loveless teaches a resting base (outer shell of battery pack 16) is connected to the handle lower end (para. 0044) and positioned below the handle (fig. 1), the resting base (16) extending outwardly of the handle lower end (fig. 1). Lovelass teaches an energy storage member (reference character 16 is referred to as “a rechargable batter pack”) positioned within the resting base and electrically connected to the blade motor (fig. 9B). 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 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 8); a motor activation trigger connected to the pistol grip handle proximate the handle upper end (as per claim 9); 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 10); and an energy storage member positioned within the resting base and electrically connected to the blade motor (as per claim 11) because the pistol grip handle and associated features (i.e., trigger, resting base and battery) are useful for improving the ergonomics of the handheld ring cutter for 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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Weiss (US Patent 4,864,730), Linke (US Patent 4,942,795), Obear (US Patent 4,091,698) and Anderson (US Patent 8,894,654) in further view of Zwirkoski et al (9168188), herein referred to as Zwirkoski. Regarding claim 12, 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 15 is under 35 U.S.C. 103 as being unpatentable over Weiss (US Patent 4,864,730), Linke (US Patent 4,942,795), Obear (US Patent 4,091,698) and Anderson (US Patent 8,894,654) in further view of Bradley (US Patent 5,038,473) and Harris (US Publication 2017/0368618).
Regarding claim 15, the modified handheld ring cutter of Weiss substantially disclosed above fails to specifically disclose 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, Bradley states in col. 1, line 67- 68, “this device is suitable for robotic or remote controlled applications” and in col. 2, lines 11-13, “[the device has] current sensing means which can be used … to control the feed of the cutting blade.” The feed of the cutting blade described by Bradley is related to the adjustment of the guard, i.e. the feed of the cutting blade moves the guard and the cutting blade relative to one another in order to operate the device. Moreover, when the device is operated “by hand,” the operator manually advances the guide and cutting blade toward one another via the feed screw 54, but in the automated embodiment, i.e., “[i]n a robotic operation, the current signals will be output to a control device for rotation of the feed screw 54 to an acceptable rotational feed as well as counter rotation of the feed screw 54 to back off the saw blade or to reduce the load on the saw” (col. 5, lines 19-24). Bradley does not specifically state there is a user-operable guard adjustment input communicatively coupled to at least one of the processors in the embodiment for performing a robotic operation, but a manual override would improve the safety of the device, should the operator need to stop the cutting operation in the event of an emergency. Additionally, Harris provides teaching it is known in the art of cutting devices with a guard (110, 180) that can be adjusted by a switch (156) in communication with one or more processors (paragraph 0026, lines 1-6, “[t]he control system means 158, which can have a programed feed system, can include one or more microprocessors, one or more controllers, or more switches, software, and/or other equipment that can control one of more of the various aspects and systems of the extendable saw 100”). This statement suggests the “control system means” can receive signals from a switch (156) that serves as a user operable adjustment input that allow the operator to actuate and manually adjust motor driven mechanical guard elements on the cutting device (fig. 4A). It would have been obvious to one having an ordinary skill in the art at the time of the filing of the invention to modify the ring cutter of Weiss substantially disclosed above with the teaching of Bradley and Harris such that the ring cutter includes a user-operable guard adjustment input communicatively coupled to at least one of the processors, and the one or more processors are further configured to collectively: direct the guard actuator to pivot the guard about the guard pivot axis between the guard insertion position and the cutting start position in response to user interaction with the guard adjustment input in order to allow the operator to manually override a “robotic operation” of the ring cutter in the event of an emergency.
Response to Arguments
Applicant’s arguments have been considered but they are not entirely persuasive. 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Moreno (US Publication 2013/00812285) discloses a hand-held saw.
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/SAMUEL A DAVIES/Patent Examiner, Art Unit 3724 September 12, 2026
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