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 .
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a tool with a base, a guide member, an actuator coupled to the guide member, a coupling rod operable to linearly translate responsive to input from the actuator and having an attachment mounting surface, a spring supported by the guide member and contacting the coupling rod, configured to bias the coupling rod toward a first position and resiliently deform responsive to the actuator providing input to the coupling rod, and an attachment removably coupled to the attachment mounting surface of the coupling rod, classified in B21F1/004.
II. Claims 11-20, drawn to a cutter with a base, a guide member, an axle extending through the guide member perpendicular to a longitudinal axis defined by the guide member, an actuator rotatably coupled to the axle and configured to rotate relative to the guide member about an axis defined by the axle, a cam coupled to the axle and configured to rotate in response to rotation of the actuator, a blade supported by the guide member and configured to linearly translate along a blade axis parallel to the longitudinal axis in response to rotation of the cam, a wire support member supported by the base for positioning a wire proximate the blade, and a length stop member movably positioned adjacent to the blade so as to be linearly adjustable in a direction perpendicular [the] blade axis, classified in B23D29/002.
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related inventions. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed a materially different designs, do not overlap in scope and do not appear to be obvious variants of one another. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
• Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
• A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
• A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries), a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
This application contains claims directed to the following patentably distinct species: Species A – drawn to a cam actuator (e.g., fig. 8)
Species B – drawn to a pneumatic actuator (fig. 13). The species are independent or distinct because the claims to the different species recite the mutually exclusive characteristics of such species. For example, claim 2 requires only requires one of the two species; conversely, claim 3 only includes features directed specifically to the cam. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, none of the claims appear to be generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: --the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification; --the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and/or --the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Jonathan Webb (Reg. No. 75,990) on September 9, 2026 provisional election was made without traverse to prosecute the invention of Group I, claims 1-10 and Species A. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 2 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 2 recites, “the actuator includes one of a cam and a pneumatic actuator.” It is unclear if Applicant intends for claim 2 to be interpreted as requiring one of a cam or a pneumatic actuator or requiring one cam and one pneumatic actuator. For purposes of examination, claim 2 will be interpreted as requiring one of a cam or a pneumatic actuator.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 5-8, 10, and as best understood, claim 2, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walker (US Patent 1,560,745). Regarding claim 1, Walker discloses a tool comprising; a base (21); a guide member (5, 6) supported by the base, the guide member defining a longitudinal axis (i.e., parallel to vertical axis); an actuator (23) coupled to guide member; a coupling rod (15) supported by the guide member (page 1, lines 83-85) and functionally coupled to the actuator (page 2, lines 18-22), wherein the coupling rod is operable to linearly translate (“for reciprocation in a vertical direction,” page 1, line 84) responsive to input from the actuator (page 2, lines 18-26 and lines 29-37), and wherein the coupling rod (15) includes an attachment mounting surface (page 1, lines 85-87); a spring (21) supported by the guide member (page 1, lines 99-102) and contacting the coupling rod (page 1, lines 102-104), wherein the spring (21) is configured to bias the coupling rod toward a first position and configured to resiliently deform responsive to the actuator providing input to the coupling rod; and an attachment (16) removably coupled to the attachment mounting surface of the coupling rod (page 1, lines 85-87), wherein the attachment linearly translates in response to linear translation of the coupling rod (page 2, lines 69-71).
Regarding claim 2, Walker discloses wherein the actuator includes a cam (32).
Regarding claim 5, Walker discloses wherein the guide member defines a lumen (20), wherein the coupling rod is positioned at least partially within the lumen (page 1, lines 93-97).
Regarding claim 6, Walker discloses wherein the base (21) includes an aperture (13) positioned proximate the lumen of the guide member (fig. 1).
Regarding claim 7, Walker discloses a workpiece support member (lower die 11, pair of jaws 33) coupled to the base (page 1, lines 74-76), wherein the workpiece support member is positioned proximate to the attachment (e.g., fig. 1).
Regarding claim 8, Walker discloses wherein the base includes an interface member (4) configured to removably couple to a surface (page 1, lines 55-64).
Regarding claim 10, Walker discloses wherein the attachment includes one of a die punch (16) or forming member (page 2, lines 29-40).
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 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Walker (US Patent 1,560,745) in view of Murphy (US Patent 1,664,480). Regarding claim 3, Walker discloses the actuator includes an axle (24) coupled to the guide member (at top of standard 5) substantially perpendicular to the longitudinal axis of the guide member, a cam (32) coupled to the axle (figs. 1 and 7), and an input member (operating lever 23) coupled to the axle (page 1, lines 105-111). Walker fails to specifically disclose the input member is configured to rotate the axle upon actuation of the input member. However, Murphy teaches it is known in the art of mechanisms for transferring one form of motion to another to provide an input member (driving pulley 7) coupled to an axle (3) and configured to rotate the axle (3) to transmit motion to an eccentric bearing (8) which converts rotational motion to linear motion of piston (9). Notably, Murphy teaches axle is supported by bearings (4). It would have been obvious to one having an ordinary skill in the art before the effective filing date of the invention to modify the tool of Walker with the teaching of Murphy such that the input member is configured to rotate the axle upon actuation of the input member rather than rotating freely on axle (24) in order to reduce rotational friction.
Regarding claim 4, the modified tool of Walker substantially disclosed above includes wherein the coupling rod (16) includes a contact surface (anti-friction ball 31), the contact surface configured to be actuated by the cam (page 2, lines 18-26 and lines 29-37).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Walker (US Patent 1,560,745) in view of Churchill (US Patent 340,659). Regarding claim 9, Walker includes a stop member (e.g., 33) adjustably coupled to one of the guide member and the base (page 2, lines 44-48). Walker fails to specifically disclose the stop member includes a stop surface configured to limit extension of an object into the guide member beyond the stop surface. However, Churchill teaches it is known in the art of tools with actuating levers pivotally attached to a base to actuate a coupling rod (G) to which an attachment (J) is attached to provide a stop member (X, Y) with a stop surface (e.g., vertical surface on side of arm(s) Y) configured to limit extension of an object (workpiece sheet) into the guide member (E, D, R; figs. 1 and 2) beyond the stop surface (page 2, lines 47-55). It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the tool of Walker with the teaching of Churchill such that the stop member is provided with a stop surface configured to limit extension of an object into the guide member beyond the stop surface in order to allow the operator to easily align the workpiece in the tool prior to performing the intended forming/ punching operations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. • Thierry (US Patent 241,092) disclose a seaming machine for pipe elbows. • Weil (US Patent 458,510) discloses a lever-actuated, spring-biased tool. • Yates (US Patent 464,410) discloses a lever-actuated, spring-biased embossing tool. • Boyce (US Patent 939,468) discloses a die forming device with a stop (37). • Goldberg et al (US Patent 1,187,141) discloses a ring-forming machine. • Mallory (US Patent 1,504,771) discloses a machine for forming forks. • Murphy (US Patent 1,664,480) discloses an input member (driving pulley 7) coupled to an axle (3) and configured to rotate the axle (3) to transmit motion to an eccentric bearing (8) which converts rotational motion to linear motion of piston (9). • Häll (US Patent 3,468,355) discloses a food processing machine with a pusher actuated by a lever. • Golub (US Patent 3,796,201) discloses a lever actuated tool for forming lead wires. • Stephens et al (US Patent 10,272,484) discloses an actuating lever (12) that rotates an axle (14) to move an attachment (30).
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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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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/SAMUEL A DAVIES/Patent Examiner, Art Unit 3724 September 23, 2026
/BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
