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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/11/2025 and 11/11/2025 have been considered by the examiner.
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 “a circular cord having a circular cross-section; wherein the telescopic cutting tool is characterized in that two parallel elongated channels are arranged at the outer side of the outer tube, and are arranged parallel to each other; wherein the first portion of the circular cord is guided within one of the two channels; and, the second portion of the circular cord is guided within the other one of said two channels” of claim 7 and “one or more further intermediate tubes, wherein the further intermediate tube includes at least two deflection pulleys arranged at the front end and back end, respectively, of the said further intermediate tube, and wherein the further intermediate tube is arranged between the outer tube and intermediate tube and/or between the intermediate tube and the inner tube” of claim 15 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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Such claim limitation(s) is/are: puling means in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 7 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.
-Regarding claim 7, the language appears to lack written description. The claim requires wherein the telescopic cutting tool is characterized in that two parallel elongated channels are arranged at the outer side of the outer tube, and are arranged parallel to each other; wherein the first portion of the circular cord is guided within one of the two channels; and, the second portion of the circular cord is guided within the other one of said two channels”. However, the specification (Paragraphs 0039-0040) appears to only describe a single elongated channel (46). How does the outer tube provide for two different and distinct channels that provides for the two different portions of the cord to be guided therethrough? Paragraph 0039 also states “he first portion and the second portion of the pulling means 18 guided within the elongated channel 46 are arranged one above the other such that solely one of the first portion and the second portion of the pulling means 18 is visible at an outer side of the outer tube 12”. As provided in the specification and drawings, it is unclear what the second elongated channel is meant to be. For the purposes of examination, the limitation will be treated as two elongated channels operating within the tube, such that the “channels” are both operated within the interior of the tube, and the cord, when provided runs parallel within the interior of the tube space.
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 1-15 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.
-A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation a telescopic hand tool, and the claim also recites in particular a telescopic pruner which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
-A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 14 recites the broad recitation a maximum length of the telescopic hand tool is between 3m and 5m, and the claim also recites in particular about 4m which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
-A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 14 recites the broad recitation a minimum length of the telescopic hand tool is between 1.5m and 2m, and the claim also recites in particular about 1.7m which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
-Claim 7 recites the limitation "the telescopic cutting tool" in line 2. There is insufficient antecedent basis for this limitation in the claim.
-Claim 7 recites the limitations "the first portion of the circular chord" in line 5 and “the second portion of the circular chord” in line 6. There is insufficient antecedent basis for these limitations in the claim.
-Claim 7 recites the limitation " the other one of said two channels" in line 5. There is insufficient antecedent basis for this limitation in the claim.
-Claim 8 recites the limitation " the second deflection pulley" in line 2. There is insufficient antecedent basis for this limitation in the claim.
-Claim 10 recites the limitation "the deflection pulleys" in line 2. There is insufficient antecedent basis for this limitation in the claim.
-Regarding claim 11, the phrase “wherein a guiding pulley is dedicated to at least one deflection pulley, so that the pulling means takes an S-shaped course between the guiding pulley and the corresponding deflection pulley” us unclear. Examiner notes claim 1 merely provides for “a number of deflection pulleys” and claim 12 further includes “at least one deflection pulley. It is unclear if the at least one deflection pulley is the same or different than the number of deflection pulleys of claim 1. For the purposes of examination, it will be treated as the same.
Claims 2-15 dependent from claim 1 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are rejected as being dependent from a rejected parent claim.
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 1-11 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2011/0113635) in view of Sun (US 2005/0081387).
Regarding claim 1, Lee teaches a telescopic hand tool (11) in particular a telescopic pruner, the telescopic hand tool comprises:
an outer tube (13)(Figures 1-3);
at least one tool head (17)
a back handle (25) detachably arranged at the back end of the outer tube (Figures 1-3; Paragraph 0023);
a pulling means (21, 41) arranged substantially inside the tubes, wherein one end of the pulling means is connected to the back handle, while another end of the pulling means is connected to a fixing point at the front end of the outer tube (Figures 1-3 and 7; Paragraphs 0024-0031);
a number of deflection pulleys (77,87,89) arranged at the back ends of the tubes and at the front ends of the outer tube and intermediate tube, wherein the deflection pulleys are provided for redirecting the pulling means (Figures 6-7; Paragraphs 0042—043; Noting there are a plurality of pulley wheels 87, 89, 91);
a hoist pulley (67,69) slidable within the inner tube and connected to the tool head by at least one rod, band or further cord, wherein the hoist pulley is provided for redirecting the pulling means (Figures 6-7 and Paragraph 0040);
a pull sleeve (19) connected to the pulling means and slidable along the outer tube (Figures 2-3 and Paragraphs 0028,0029,0033); and
at least one elongated channel (23) arranged at the outer side of the outer tube and extending parallel to the longitudinal axis of said outer tube, wherein at least one portion of the pulling means is guided within the channel (Figures 1-3; Note Figure 13 showing details of the channel 23).
Lee does not provide at least one intermediate tube slidable within the outer tube; an inner tube slidable within the intermediate tube; or the at least one tool head (17) connected or connectable to the front end of the inner tube. Lee does provide within another embodiment a telescoping pole (Figures 11-12 an embodiment showing two telescoping pole portions 113 and 115, but does not provide a third).
Sun teaches it is known in the art of telescoping pruners to provide a telescoping member (6) including an outer tube (62), at least one intermediate tube (71) slidable within the outer tube and an inner tube (61) slidable within the intermediate tube; and the at least one tool head capable of being connected or connectable to the front end of the inner tube (Figure 11 and Paragraph 0004).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the device of Lee to incorporate the teachings of Sun to provide the pole as telescoping. In doing so, it allows for variable length pole as desired by the user.
Regarding claim 2, the modified device of Lee teaches the telescopic hand tool according to Claim 1, wherein the telescopic hand tool includes at least two telescopic interfaces, wherein a first telescopic interface (711) connects the outer tube and the intermediate tube, while a second telescopic interface (721) connects the intermediate tube and the inner tube (Sun Figure 11).
Regarding claim 3, the modified device of Lee teaches the telescopic hand tool according to Claim 1, but does not provide wherein the channel has an Omega shaped cross-section.
It would have been an obvious matter of design choice to make the different portions of the channel of whatever form or shape was desired or expedient. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 4, the modified device of Lee teaches the telescopic hand tool according to Claim 3, wherein a first portion of the pulling means extending between the back handle and a first deflection pulley (87) arranged at the front end of the outer tube is guided within the channel, wherein the pull sleeve is connected to the first portion of the pulling means, and wherein preferably the first deflection pulley is arranged at the outer side of the outer tube and inside the first telescopic interface (Lee Figure 7 and Sun Figure 11).
Regarding claim 5, the modified device of Lee teaches the telescopic hand tool according to Claim 4, wherein a second portion of the pulling means extending between the first deflection pulley and a second deflection pulley (89) arranged at or close to the back end of the outer tube, wherein the second portion of the pulling means (21) is guided within the channel (Lee Figure 7).
Regarding claim 6, the modified device of Lee teaches the telescopic hand tool according to the Claim 3, wherein the first portion and the second portion of the pulling means are guided within one channel, wherein the first portion and the second portion of the pulling means are arranged next to one another within the channel, and wherein preferably the first portion and the second portion of the pulling means are arranged side- by-side in a radial direction relating to the outer tube (Lee Figure 7 noting multiple portions of the cord (21) within the tube (13) such that they are arranged within the channel (interior of tube 13)).
Regarding claim 7, the modified device of Lee teaches the telescopic hand tool according to Claim 3, wherein the pulling means is formed as a circular cord having a circular cross-section; wherein the telescopic cutting tool is characterized in that two parallel elongated channels are arranged at the outer side of the outer tube, and are arranged parallel to each other; wherein the first portion of the circular cord is guided within one of the two channels; and, the second portion of the circular cord is guided within the other one of said two channels (Lee Figure 7 noting the cord (21) is guided within the ”left channel” and the “right channel” of the interior of the tube (13)).
Regarding claim 8, the modified device of Lee teaches the telescopic hand tool according to Claim 1, wherein an end sleeve (27) is arranged at the back end of the outer tube, wherein preferably the second deflection pulley is arranged inside said end sleeve and the back handle is detachably mounted at the end sleeve (Lee Figures 2 and 3; Paragraphs 0032 and 0033 noting the back handle 25 detachably mounted to the end sleeve 27).
Regarding claim 9, the modified device of Lee teaches the telescopic hand tool according to Claim 8, wherein a stop cam (29) is attached at the outer side of the outer tube, wherein the pull sleeve is slidable between said stop cam and the end sleeve (Figures 2 and 3; Paragraph 0023).
Regarding claim 10, the modified device of Lee teaches the telescopic hand tool according to Claim 1, wherein the deflection pulleys (77) and the hoist pulley (71) are provided for redirecting the pulling means by about 180 degrees (Figure 7; Paragraph 0043 noting the path of the cord 21).
Regarding claim 11, the modified device of Lee teaches the telescopic hand tool according to Claim 1, wherein a guiding pulley (91) is dedicated to at least one deflection pulley, so that the pulling means takes an S-shaped course between the guiding pulley and the corresponding deflection pulley (Figure 7 and Paragraphs 0041-0043 noting the cord path wherein the path extends between the deflection pulley 82 and extends towards the pulley 81, and back again, thus creating an “S” shaped path).
Regarding claim 13, the modified device of Lee teaches the telescopic hand tool according to claim 1, wherein the back handle is formed as a circular- shaped handle (Lee Figures 1-3).
The modified device of Lee does not provide wherein the back handle is formed as a T- shaped handle.
It would have been an obvious matter of design choice to make the different portions of the back handle of whatever form or shape was desired or expedient, including an omega shaped handle to allow for better gripping. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 14, the modified device of Lee teaches the telescopic hand tool according to Claim 1, Lee provides the pole may be a fixed length, or an extendable length (paragraph 0026) but does not provide wherein a maximum length of the telescopic hand tool is between 3 m and 5 m, in particular about 4 m, while a minimum length of the telescopic hand tool is between 1.5 m and 2.0 m, in particular about 1.7 m.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Lee to have a a maximum length of the telescopic hand tool is between 3 m and 5 m, in particular about 4 m, while a minimum length of the telescopic hand tool is between 1.5 m and 2.0 m, in particular about 1.7 since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984).
In the instant case, the device of Lee would not operate differently with the claimed diameter and since the tube elements/Pole sections are intended to telescope as modified, and the device would function appropriately having the claimed maximum and minimum lengths. Further, applicant places no criticality on the range claimed, indicating simply that the lengths may be within the claimed ranges (specification pp. [0023]).
Regarding claim 15, the modified device of Lee teaches the telescopic hand tool according to Claim 1, including multiple different pulleys and tube elements that work together to telescope the pole as needed and allows for the cable within to provide a cutting function. The modified device of Lee does not specifically provide wherein the telescopic hand tool comprises one or more further intermediate tubes, wherein the further intermediate tube includes at least two deflection pulleys arranged at the front end and back end, respectively, of the said further intermediate tube, and wherein the further intermediate tube is arranged between the outer tube and intermediate tube and/or between the intermediate tube and the inner tube.
In light of Lee and Sun, modifying Lee with any reasonable number of intermediate tubes and deflection pulleys, would be a mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. In the instant case, the device of Lee would not operate differently with the claimed additional intermediate tubes and deflection pulleys, as the device already requires a plurality of pulleys and tubes to provide for a telescoping pole function, and a plurality of pulleys to appropriately guide and tension the internal cord to allow for the desired cutting function. As such, the device would function appropriately having the claimed limitations of one or more further intermediate tubes, wherein the further intermediate tube includes at least two deflection pulleys arranged at the front end and back end, respectively, of the said further intermediate tube, and wherein the further intermediate tube is arranged between the outer tube and intermediate tube and/or between the intermediate tube and the inner tube.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2011/0113635) in view of Sun (US 2005/0081387) as applied to claims 1-3 and 11 above, and further in view of Keller (US 5,718,050).
Regarding claim 12, the modified device of Lee teaches the telescopic hand tool according to any one of the Claim 3, but does not provide wherein a plastic tube encloses partially the outer tube and covers a part of the at least one channel, wherein preferably the plastic tube extends between the first telescopic interface and the stop cam.
Keller teaches it is known in the art of handheld pruners to provide a hand tool (10) with a plastic tube (16a) enclosing an outer tube (15)(Figures 1 and 14; Col. 4, Lines 33-38).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have further modified the device of Lee to incorporate the teachings of Keller to provide the outer tube with a plastic cover. In doing so, it allows for a plastic sleeve to act as a handle element on the exterior of the tubing.
The modified device of Lee in view of Keller does not provide for a specific location of the plastic tube, such as the plastic tube encloses partially the outer tube and covers a part of the at least one channel, wherein preferably the plastic tube extends between the first telescopic interface and the stop cam.
It would have been an obvious matter of design choice to a person of ordinary skill in the art to have the plastic tube in various positions throughout the pole (tube elements) because rearranging parts with specific locations would have been a mere design consideration based on the desired handling of the pole (tube elements). Such a modification would have involved only routine skill in the art to accommodate the aforementioned requirement(s) as Lee and Keller have set forth it is known to have plastic tube(handle portions) in different locations on a handheld saw. Also, it has been held that rearranging parts of an invention involves only routine skill in the art.
Related Prior Art
Below is an analysis of the relevance of references cited but not used
- "892 cited references B-J, on page 1 establish the state of the art with a variety of telescopic poles and hand tools
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD D CROSBY JR whose telephone number is (571)272-8034. The examiner can normally be reached Monday-Friday 8:00-4:00.
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/RICHARD D CROSBY JR/ 06/26/2026Examiner, Art Unit 3724
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