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) because they fail to show the motor (26) as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing.
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 motor (claim 8) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
MPEP § 608.02(d). 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 Rejections - 35 USC § 112(b)
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 1-9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 1-9 use the preamble “long life annular…” which is indefinite, because ‘long life’ is speculative, not based in a physical real attribute of the system, and the nature of what makes something long life is not disclosed, and further the term is subjective. There is no objective standard by which a device can be evaluated as being “long life” or not.
Claim 3 requires “protecting cover assembly close to the first saw blade holddown” which in this context is completely subjective, and is unclear. The disclosure as a whole fails to reasonably apprise what a “water retaining plate” is. It is shown mounted and plate-like in figure 1 only as 22, but is disclosed as both preventing coolant from entering the saw blade and driving components (?) which is confusing, because typically coolant is applied to the blade to cool it, and it is believed this is what is meant to be disclosed in this context, even though it is not stated or discussed in the present application. Further, the alternative is also discussed (again at [0032] that the water retaining plate can prevent operator from being affected by splashing coolant or water. So the plate is apparently meant to prevent water from getting to the blade (which it actually isn’t meant to do) and also prevent the water from splashing away from the blade toward the user. This is indefinite and cannot reasonably be interpreted for analysis.
Claim 6 is indefinite for the recitation “taper fitting surface” which is indefinite as claimed and disclosed. The figures and description ‘show’ a surface 7; but does not disclose whether it is part of the wheel or the blade. “a” surface cannot be two surfaces, and the claim requires the “taper fitting surface” to be ‘between’ the power wheel and the saw blade, which implies the surface is not a component of either element—and therefore the nature of the surface is not clear. Is the surface the idea of contact, or a property that both the blade and the wheel must have? The claim is ambiguous as to the necessary structure in this respect and is therefore indefinite.
Claim 7 is indefinite for recitation of a “switch”, because although switches are known broadly, there is no description anywhere in the disclosure as to what is being switched, what technology is being used, or the function or purpose of switching in the context of the device being claimed. What the switch is for is ambiguous, so the claim is indefinite.
The term “head shell” in claim 9 is indefinite. What makes the shell a head shell? IS head surplusage, a moniker, or descriptive of a structure of the shell? Or a position of the shell? The claim is indefinite as a result.
Similarly claim 9 requires “rail[s]” which is indefinite in this context. What shape and features must the rails have? The drawings (figure 2, at 11, 28) do not depict standard ‘rails’, as that term would take in plain meaning-- and only vaguely allude to their positions, which cannot be used to infer clear and definite structural requirements. Applicant has failed to reasonably clearly apprise those of ordinary skill what the rails are and how they are being used (what scope they have in the claim is ambiguous).
Claim 5 requires wave fluctuations are perpendicular… which is not understood. The waves are shown in the figures as sinusoidal—not ‘perpendicular.’ The aspect of perpendicularity is not recited with any reasonable clarity or boundary that is understandable to those of ordinary skill, and is therefore indefinite as set forth.
Claim Rejections - 35 USC § 112(a)
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.
Enablement
Claims 2-5 and 7 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 7 requires a “switch”. The disclosure as a whole fails to define what the switch does, what it is, what it controls, etc. The person of ordinary skill cannot make and use this device as claimed having a “switch” because the function of the switch is not stated. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims; Here all “switches” are encompassed—and therefore this is broad and weighs against a finding of enablement. ere
(B) The nature of the invention; here, the device is mechanical and switches are known things, but the aspect of “switching” being claimed is wholly undefined, which weighs against a finding of enablement.
(C) The state of the prior art; is seen in the references cited, infra, where switches are known to be used for a variety of things—therefore there is not one thing this switch could be, but a variety, which weighs against a finding of enablement
(D) The level of one of ordinary skill; is high—usually people of skill know how to implement switches in general, weighs for a finding of enablement
(E) The level of predictability in the art; is high—usually people of skill know how to implement switches in general, weighs for a finding of enablement.
(F) The amount of direction provided by the inventor; is non-existent with respect to what this switch does, therefore weighs against a finding of enablement.
(G) The existence of working examples; is in this case unknown—there are no switches known which exemplify this switch of undetermined function, therefore this factor weighs against a finding of enablement
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. In this case, the experimentation needed to select an arbitrary switch is unknown—there are no class or particular nature of switches disclosed in the case so the starting point is unknown and therefore this factor weighs against a finding of enablement
A plurality of the Wands factors show that the switch in this context lacks enablement, as its purpose and function are unspecified.
Additionally, with respect to claim 7 recited “tensioning ….adjustment indicator light…” the ability to monitor and express blade tension (or some other tension? The function is unclear) is not disclosed and enabled. The light must be indicative of low or high tension, but no technological means to embody that function are disclosed. The wands factors A, B, C, F and G all weight against a finding of enablement for this tensioning adjustment indicator, on the present record.
Similarly with respect to claims 2-5, the “blade holddown handwheel” lacks enablement. There is nothing showing or discussing what the handwheel does (physically; the general idea or function of ‘holddown” is specified). The interaction of the wheel with the blade, or the cover or something else is not disclosed. How does the holddown wheel hold- down the blade? The drawings show only a vague top-view with a position of the handwheels 20, 21, but the structure they are controlling, or mounted to, or interacting with is not shown or discussed in the specification as a whole. (A) The breadth of the claims; Here all “handwheels” or “hold-down” are encompassed—and therefore this is broad and weighs against a finding of enablement. ere
(B) The nature of the invention; here, the device is mechanical and hand adjusters are known things, but the physical operation of the handwheel to do something claimed is wholly undefined, which weighs against a finding of enablement.
(C) The state of the prior art; is seen in the references cited, infra, where handwheels are known to be used for a variety of things—therefore there is not one thing this handwheel could be, but a variety, which weighs against a finding of enablement
(D) The level of one of ordinary skill; is high—usually people of skill know how to implement adjustments by manual cranking in general, weighs for a finding of enablement
(E) The level of predictability in the art; is high—in general, weighs for a finding of enablement.
(F) The amount of direction provided by the inventor; is non-existent with respect to what this handwheel does and how it physically interacts with the other elements of the machine, therefore weighs against a finding of enablement.
(G) The existence of working examples; is in this case unknown—no evidence on the record discloses a working example, therefore this factor weighs against a finding of enablement
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. In this case, the experimentation needed to select the adjustment mechanism to implement the vague function of hold-down is unknown—starting point is unknown and therefore this factor weighs against a finding of enablement
Written Description
Claim 9 is 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.
Claim 9 requires “head shell… a first guide rail and a second guide rail” which are shown only in vaguest form at 11 and 28 in figure 2 and discussed : “Further, one end of the power wheel 5 is further provided with a head shell 27, and two sides of the head shell 27 are respectively provided with a first guide rail 28 and a second guide rail 11. With the arrangement of the first guide rail 28 and the second guide rail 11, the stability and straightness of the saw blade during cutting can be ensured….” This is not understood to be demonstrative of possession of the invention. The idea of guidance is present, but it has not been reduced to practice. The shape of the rails and how they contact the blade is not present in the disclosure as a whole. The actual technical details of the blade being guided are not in the disclosure, and therefore lacking written description.
Claim 7 requires the “tensioning handwheel adjustment indicator light” but does not disclose any technical details necessary to fulfil that functional idea. While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved… (MPEP 2163.03 V). Here—how can a light indicate tension? There is insufficient disclosure of the embodiment of this capability into an invention.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 6, 8 is/are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Nilsson et al (US 6,243,956).
Regarding claim 1, Nilsson discloses an annular wall cutting machine (Figure 1, Brief description discusses a motor driven saw, which is capable of cutting wall), comprising a housing (6, figure 1, inter alia) and an annular saw blade fixing and protecting cover assembly (4, 5, figure 2), wherein a power wheel (21 figure 2) is arranged in the annular saw blade fixing and protecting cover assembly (See figure 2), an annular saw blade (3 figure 1) is arranged in a middle of the power wheel (See figure 2), the power wheel and the annular saw blade abut against each other (See 3, 2, figure 2), one side of the power wheel is provided with an output shaft (Above 20, figure 3), an elastic member (19 figure 3) is mounted between the output shaft and the power wheel, the other side of the power wheel is provided with a pressing plate bolt (26 has plate surface for pressing, and is a bolt as shown, figure 3), and a small pressing plate is mounted between the pressing plate bolt and the power wheel (as 25 figure 3).
Regarding claim 2, Nilsson further discloses the annular saw blade fixing and protecting cover assembly further comprises a first saw blade holddown handwheel (47 figure 1) and a second saw blade holddown handwheel *(mirror of 47 abount II figure 1), and the first saw blade holddown handwheel and the second saw blade holddown handwheel are arranged on a same side wall of the annular saw blade fixing and protecting cover assembly (as seen in figure 1).
Regarding claim 6, Nilsson further discloses a taper fitting surface is arranged between the power wheel and the annular saw blade (See the “V” contact abutment of 22, 21, figure 2).
Regarding claim 8, Nilsson further discloses a motor (“driven by a hydraulic motor 2,” Column 2 line 9) for driving the wall cutting machine (ibid), wherein the motor is driven by a motor driver (12, hydraulic line, is per se a motor driver, since it drives the motor; applicant has not supplied a narrowing definition for – or disclosed anything that is – a ‘motor driver’).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M MICHALSKI whose telephone number is (571)272-6752. The examiner can normally be reached Typically M-F 6a-3:30p East Coast Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/Primary Examiner, Art Unit 3724
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