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 .
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 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2 and 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/796718. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a router having a dust collecting mouth/cap that attaches/mounts to a base portion having a base aperture of the tool via a clip. Claim pairing below-
19180118 (claims)
18/796718 (claims)
1 and 11-12
1-2 and 17
10
9
2
10
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 14 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 14 recites the limitation "the extraction chamber". There is insufficient antecedent basis for this limitation in the claim.
Claim Objections
Claims 1, 9, and 12 are objected to because of the following informalities: In claims 1, 9, and 12, the term “centre” is a British spelling/version of center in which “centre” should be replaced with - - center - - to avoid confusion since applicant’s use tends closer toward the term - - center - -.
Claim Rejections - 35 USC § 102
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.
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 and 10-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kraus (US 20040076485 A1/EP 1410875 B1).
Regarding claim 1 and 10-11, Kraus discloses a dust cap accessory for a power tool (1) having a base portion (4 and/or 13) with a base aperture (drive shaft 19 shown passing through aperture in base 4/13 for router bit 5), the dust cap accessory comprising: a dust cap body (18) configured to partially cover the base aperture (fig. 5); a base portion mounting mechanism (17/24) for removably mounting the dust cap accessory to the base portion; and
a dust cap centre hole (22 having brushes 23 to seal hole 22 [0034]) configured to receive a cutting tool (5) when the cutting tool is plunged into a workpiece, wherein the dust cap accessory (18) is configured to limit debris from the workpiece travelling through the base aperture wherein the dust cap accessory is configured for tool-free mounting and adjustment (adjust with 3 in direction 7 and can be attached “tool-free”), wherein the base portion comprises an extraction chamber (annular duct 14) in fluid communication (9/ suction duct 10/11) with a vacuum source [0025-0028] and the dust cap accessory is configured to partly form the extraction chamber when the dust cap accessory is mounted to the base portion ([0024-0036], claims 1-3 and 9, figs. 1-6).
Regarding claims 12 and 15, Kraus discloses a router power tool (1, abstract, claim 1, [0024]) comprising: a housing (2); a base portion (4 and/or 13) having a base aperture (drive shaft 19 shown passing through aperture in base 4/13 for router bit 5); a cutting tool (5); and
a dust cap accessory having a base portion with a base aperture and comprising:a dust cap body configured to partially cover the base aperture; a base portion mounting mechanism for removably mounting the dust cap accessory (18) to the base portion (4 and/or 13); and a dust cap centre hole (22 having brushes 23 to seal hole 22 [0034]) configured to receive a cutting tool (5) when the cutting tool is plunged into a workpiece,
wherein the dust cap accessory (18) is configured to limit debris from the workpiece travelling through the base aperture, and wherein the dust cap accessory is removably mounted to the base portion and configured to limit debris from a workpiece travelling through the base aperture when the cutting tool is plunged into the workpiece ([0024-0036], figs. 1-6).
Regarding claim 13-14, Kraus discloses the base portion comprises a first guide post (3) having a first guide post conduit (15) in fluid communication with a vacuum source via a dust extraction conduit (10/12), wherein the extraction chamber (annular duct 14) is in fluid communication with the first guide post conduit (15, [0024-0036], figs. 1-6).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2-3 and 9 is/are rejected under 35 U.S.C. 103 as obvious over Kraus (US 20040076485 A1/EP 1410875 B1) in view of Witter et al. (US 20180056464 A1) and further in view of NAKAMURA et al. (US 20220168867 A1).
Regarding claims 2-3 and 9, Kraus discloses the base portion mounting mechanism comprises a dust cap release handle (24, [0024-0036], figs. 1-6) but fails to disclose a release clip configured for snap fit engagement with the base portion wherein the dust cap release clip comprises a projecting lip configured to engage a shoulder portion on a first base side of the base portion and wherein the dust cap centre hole comprises a centre hole lip configured to project downwards towards the base portion.
NAKAMURA et al. teaches an oscillating multi-tool (1) having a base portion (110/120) with groove 125 having a dust collecting attachment (70) with cap (80) with center hole (81) configured to receive a cutting tool and the cap (80) having a dust cap release elastically deformable clip (90) configured for snap fit engagement with the base portion wherein the dust cap release clip (90) comprises a projecting lip (91/92) configured to engage a shoulder portion on a first base side of the base portion. ([0069-0114], figs. 1-14).
Witter et al. also teaches having a router (10) with base plate (30), a dust collecting attachment (router hood tool 20) having a dust collecting attachment cap (22) with center hole (23) configured to receive a cutting tool mounted into the central opening of the base plate (30) in a “indexing fashion” [0030], “arcuate rib 37 that extends around the wide part of the dome 22 and serves to fit into the circular or annular groove or channel formed between the upper and lower disks 42, 40 at the central opening 32 of the base plate 30” [0033] and teaches having a dust cap release clip (cuff retainer spring arms 48, 48 and/or cuff connector 38) configured for snap fit engagement with a cuff member (24) and wherein the dust cap centre hole (23) comprises a centre hole lip (25) configured to project downwards towards the base portion ([0030-0034], figs. 1-8).
Given the teachings of Kraus to have a base portion mounting mechanism comprises a dust cap with a release handle, it 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 to modify the dust cap with having a release clip configured for snap fit engagement with the base portion wherein the dust cap release clip comprises a projecting lip configured to engage a shoulder portion on a first base side of the base portion and wherein the dust cap centre hole comprises a centre hole lip configured to project downwards towards the base portion to have a detent secure attachment, sealing attachment with lip, easy install/remove quick attach/detach dust cover, and/or for indexing/adjusting purposes (snap into adjusted position) as taught by NAKAMURA et al. and Witter et al.
Claim(s) 6 and 8 is/are rejected under 35 U.S.C. 103 as obvious over Kraus (US 20040076485 A1/EP 1410875 B1) in view of Akkala et al. (US 20050244227 A1).
Regarding claims 6 and 8, Kraus teaches having release handle (24, [0024-0036], figs. 1-6) but fails to discloses a dust cap projecting arm configured to pivotally mount the dust cap accessory to the base portion, wherein the dust cap projecting arm comprises a projecting arm clip configured to engage a cap engagement recess on the base portion.
Akkala et al. teaches a cap accessory (12) attached to a base portion (14) having a cap projecting arm (18/20/42) configured to pivotally mount the cap accessory (12) to the base portion (14), wherein the cap projecting arm (62/42) comprises a projecting arm clip (42/36 or 71) configured to engage a cap engagement recess (38/40) on the base portion ([0024-0033], figs. 1-6) and teaches ball/socket joint connections for grate covers/caps ([0034-0039], figs. 7-11).
Given the teachings of Kraus to have a base portion mounting mechanism comprises a dust cap with a release handle, it 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 to modify the dust cap with a projecting arm configured to pivotally mount the dust cap accessory to the base portion, wherein the dust cap projecting arm comprises a projecting arm clip configured to engage a cap engagement recess on the base portion to have a easy open/close lid, easy install/remove quick attach/detach dust cover, and/or for access for maintenance/cleaning purposes as taught by Akkala et al.
Allowable Subject Matter
Claims 4-5 and 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if a proper and if a Terminal Disclaimer is filed for US 11014224 B2.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Reasons for Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: the prior art of record fails to teach or render obvious a dust cap accessory for a power tool comprising all the structural and functional limitations and further comprising, amongst other limitations/features the power tool having a base with an aperture for the working tool, a dust cap body configured to partially cover the base aperture; a base portion mounting mechanism for removably mounting the dust cap accessory to the base portion; and a dust cap center hole configured to receive a cutting tool when the cutting tool is plunged into a workpiece, wherein the dust cap accessory is configured to limit debris from the workpiece travelling through the base aperture, wherein the base portion mounting mechanism comprises a dust cap release clip configured for snap fit engagement with the base portion; wherein the dust cap release clip comprises a projecting lip configured to engage a shoulder portion on a first base side of the base portion with a dust cap projecting arm that comprises a pivot recess configured to engage and pivot about a base aperture lip on the base portion. Though Kraus (US 20040076485 A1/EP 1410875 B1) teaches a router power tool with a dust cap accessory that attaches to the base of the power tool, the dust cap accessory lacks a base portion mounting mechanism that comprises a dust cap release clip configured for snap fit engagement with the base portion; wherein the dust cap release clip comprises a projecting lip configured to engage a shoulder portion on a first base side of the base portion with a dust cap projecting arm that comprises a pivot recess configured to engage and pivot about a base aperture lip on the base portion and it would not be obvious to modify the Kraus’s clip/handle with having a clip having a projection that engages shoulder with a release lever that releases the projection lip when depressed and one of ordinary skill would recognize that a clip with a protrusion engaging a shoulder portion with a depressible release portion is not obvious modify a conventional spring biased clip not having projecting lip. Having the efficiency and speed of the a snap fit clip having a projection that engages shoulder with a release lever that releases the projection lip when depressed provides an effective easy install and removal of a protective dust cap shield on a power tool generating dust/debris.
While various features of the claimed subject matter are found individually in the prior art, a skilled artisan would have to include knowledge gleaned only from the applicant's disclosure to combine or modify the teachings of the prior art to produce the claimed subject matter, and thus obviousness would not be proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). There is no teaching, suggestion, or motivation found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art to combine or modify the teachings of the prior art to produce the claimed invention, and thus obviousness would not be proper. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Additional prior art considered pertinent: see form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST).
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/ROBERT F LONG/Primary Examiner, Art Unit 3731
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