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). The drawings must show every feature of the invention specified in the claims. It is unclear whether the present drawings illustrate the features of claims 1 and 3 because no tapered portion, facing edges, or tip of the projection are indicated with a reference character in the present drawings. Therefore, the features of claims 1 and 3 should be shown in the present drawings or the feature(s) canceled from the claim(s). If the features of claims 1 and 3 are shown in the drawings, then the tapered portion, facing edges, and the tip of projection should be indicated with reference characters to make clear that these features are illustrated (see MPEP 608.01(o), explaining that in mechanical cases the meaning of every term used in any of the claims should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies). 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.
Specification
The abstract of the disclosure is objected to because it exceeds 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1 and 3 are objected to because of the following informalities:
Claim 1:
at line 11, “a projection is formed as the positioning portion on one of facing edges of the slit” should be amended to read “a pair of projections is formed as a positioning portion on a facing edge of the slit”
at line 12, “an inner surface side” should be amended to read “an inner surface side of the positioning member”
at line 13, “the projection is formed at two places with an axis” should be amended to read “the pair of projections is formed with an axis”
Claim 3:
at line 2, “a tip of the projection” should be amended to read “a tip of each of the pair of projections”
at lines 2-3, “an arc-shaped portion of the projection” should be amended to read “the arc-shaped tips of the pair of projections”
Appropriate correction is required.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
• “positioning member” as recited in at least claim 1 (first, “member” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “positioning”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “positioning” preceding the generic placeholder describes the function, not the structure, of the member)
• “elastic member” as recited in at least claim 1 (first, “member” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “elastic”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “elastic” preceding the generic placeholder describes the function, not the structure, of the member)
• “positioning portion” as recited in at least claim 1 (first, “portion” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “positioning”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “positioning” preceding the generic placeholder describes the function, not the structure, of the portion)
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 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 and 3 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.
Regarding claims 1 and 3, it is unclear what is intended by the limitations “when viewed from above” and “when viewed from an axial direction”. First, since the device is handheld, a term such as “above” is dependent on the orientation the device is held. Second, “when viewed from an axial direction” is unclear because the axial direction has not been clearly defined. Because the blade member is a three-dimensional object, it has multiple axes, any of which could reasonably define the axial direction. Examiner recommends utilizing terms that are true regardless of orientation to describe the position and orientation of structures relative to one another.
Regarding claim 1, it is unclear what is intended by the limitation “the projection is formed at two places” is unclear – how can one projection be formed in two places? Based on fig. 5A, it appears there are actually two distinct projections. Examiner recommends amending claim 1 to recite a pair of projections.
Regarding claim 3, as noted above, it appears that the device includes two projections. Therefore, it is unclear what is intended by the limitation “a tip of the projection is formed in an arc shape” – which projection does this limitation refer to? It is presumed to be intended that a tip of at least one projection is formed in an arc shape, and has been treated as such for purposes of examination.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki (US 20180272552) in view of Kurino (US 20170235050).
Regarding claim 1, Sasaki discloses a cutting device for cutting an optical fiber (optical fiber cutter 1; see fig. 1), the cutting device comprising: a base (base 10; see fig. 1); a disc-shaped blade member (blade member 13 is disk-shaped; see paragraph [0036] and fig. 1); a positioning member for restricting a position of the blade member (fixing member 41 and hold-down member 47 are configured to sandwich blade member 13 to prevent rattling in the axial direction; see paragraphs [0071-0072] and fig. 4), the positioning member being provided on the base (fixing member 41 and hold-down member 47 are coupled to base 10; see fig. 1); wherein the positioning member includes a slit (a slit is formed between fixing member 41 and hold-down member 47; see fig. 4); a projection is formed as the positioning portion on one of facing edges of the slit so as to project toward an inner surface side (projected portion 45 and protrusion 51 are formed where the slit is located; see fig. 4); the projection is formed at two places with an axis of the blade member therebetween when viewed from above (projected portion 45 is formed on one side of an axis (which extends along the plane of blade member 13, parallel to shaft 32; see fig. 5), with protrusion 51 located on the other side; see fig. 4); the blade member is stored inside the positioning member (blade member 13 is sandwiched between fixing member 41 and hold-down member 47; see paragraphs [0071-0072]); one surface of the blade member is in surface-contact with an inner surface of the positioning member (a surface of blade member 13 contacts an inner surface of fixing member 41 and hold-down member 47; see fig. 4).
Sasaki does not explicitly disclose a support part for supporting the blade member, the support part being disposed so as to be variable in height with respect to the base; and a first elastic member that presses the support part to a positioning portion of the positioning member with respect to the base.
Kurino discloses a support part for supporting the blade member (blade holding portion 41 is configured to hold blade member 14; see paragraph [0073] and fig. 10), the support part being disposed so as to be variable in height with respect to the base (blade holding portion 41 can be lifted by moving adjusting lever 45; see paragraph [0073]); and a first elastic member that presses the support part to a positioning portion of the positioning member with respect to the base (compression springs are provided at portions 10B2, 10B3 so that blade holding portion 41 is urged upwardly; see paragraph [0075] and figs. 9, 11).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Sasaki in view of Kurino to include a support part and a first elastic member. Kurino discloses a system in which elastic members (compression springs that act on adjusting lever 45) are positioned to vary a height of the support part (blade holding portion 41) relative to the base of the device (see figs. 9-11). Kurino further discloses that this system allows for fine adjustment of the position of blade member 14 relative to the workpiece (see paragraph [0074]). As modified to include this structure, Sasaki would receive the same benefit of a blade adjustable in the height direction. Further, the elastic member would then be able to press the support part against the positioning member (fixing member 41, hold-down member 47). Therefore, in order to provide the means for fine adjustment of the blade relative to the workpiece, such a modification would be obvious.
Sasaki as modified discloses wherein the first elastic member presses the blade member toward the slit so that a tapered portion on the other surface of the blade member is positioned by being in point-contact with each projection and a tip of the blade member protrudes to a surface side of the slit (as modified, the first elastic member presses blade member 14 towards the slit, projection portion 45 and protrusion 51 contact a tapered portion of blade member 13 (insertion portion 46), and a tip of blade member 13 protrudes past the surface of the slit; see paragraph [0045] and figs. 4, 5).
Regarding claim 2, Sasaki as modified discloses the limitations of claim 1 as described in the rejection above.
Sasaki as modified further discloses wherein a pair of the projections are disposed at positions that are symmetrical with respect to a vertical centerline passing through the axis of the blade member (projection portion 45 and protrusion 51 are positioned symmetrically with respect to a vertical centerline positioned along the plane of blade member 13, perpendicular to the axis; see figs. 4 and 5).
Regarding claim 3, Sasaki as modified discloses the limitations of claim 1 as described in the rejection above.
Sasaki as modified further discloses wherein when viewed from an axial direction of the blade member, a tip of the projection is formed in an arc shape (at least projected portion 45 has a portion that is formed in the shape of an arc; see fig. 5) and an arc-shaped portion of the projection is in point-contact with the tapered portion of the blade member (projected portion 45 is in contact with a tapered portion of blade member 13; see fig. 4).
Assuming arguendo, if Applicant does not agree with the above rejection of claim 3, and specifically if Applicant does not agree that Sasaki discloses a tip of the projection formed in an arc shape, the following rejection is also presented.
Sasaki as modified does not explicitly disclose wherein when viewed from an axial direction of the blade member, a tip of the projection is formed in an arc shape and an arc-shaped portion of the projection is in point-contact with the tapered portion of the blade member.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Sasaki to make the tip of the projection formed in an arc shape since it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (see In re Seid, 161 F.2d 229, 73 USPQ 431). In the instant case, it does not appear that modifying Sasaki to have the recited configuration would impede the device of Sasaki from performing its intended function. In other words, the tip of the projection would still be capable of contacting the tapered portion of the blade member. Therefore, such a modification would be obvious since it appears that the specific shape of the tip of the projection is mere design choice.
Regarding claim 4, Sasaki as modified discloses the limitations of claim 1 as described in the rejection above.
Sasaki as modified further discloses a second elastic member that presses the blade member in a direction of the support part (as modified, spring member 50 is capable of pressing blade member 13 towards the support part; see paragraph [0072]), which is the axial direction of the blade member, wherein the second elastic member presses the one surface of the blade member to the inner surface of the positioning member (spring member 50 is configured to urge blade member 13 toward fixing member 41; see paragraph [0072] and fig. 4).
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 actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 19/236,203 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 4 are anticipated by claims 1 and 7 of ‘203.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
19/220,920 (instant application)
19/236,203 (reference application)
1. A cutting device for cutting an optical fiber, the cutting device comprising: a base; a disc-shaped blade member; a positioning member for restricting a position of the blade member, the positioning member being provided on the base; a support part for supporting the blade member, the support part being disposed so as to be variable in height with respect to the base; and a first elastic member that presses the support part to a positioning portion of the positioning member with respect to the base, wherein the positioning member includes a slit; a projection is formed as the positioning portion on one of facing edges of the slit so as to project toward an inner surface side; the projection is formed at two places with an axis of the blade member therebetween when viewed from above; the blade member is stored inside the positioning member; one surface of the blade member is in surface-contact with an inner surface of the positioning member; and the first elastic member presses the blade member toward the slit so that a tapered portion on the other surface of the blade member is positioned by being in point-contact with each projection and a tip of the blade member protrudes to a surface side of the slit.
4. The cutting device according to claim 1 further comprising: a second elastic member that presses the blade member in a direction of the support part, which is the axial direction of the blade member, wherein the second elastic member presses the one surface of the blade member to the inner surface of the positioning member.
1. A cutting device for cutting an optical fiber, the cutting device comprising: a base; a disc-shaped blade member; a positioning member that is provided on the base and restricts a position of the blade member; a support part that is disposed so as to be changeable in height with respect to the base and supports the blade member; a first elastic member that presses the support part to a positioning portion of the positioning member with respect to the base; a support part lowering mechanism that is provided on the main body and can push down the support part in a direction opposite to the positioning portion; and a rotation mechanism that allows the blade member to rotate, wherein: the positioning member includes a slit; the blade member is stored inside the positioning member; the first elastic member presses the blade member toward the slit so that a tapered portion of the blade member is positioned by coming into contact with the positioning portion on an inner surface side of the slit; a tip of the blade member protrudes to a surface side of the slit; and when the support part lowering mechanism lowers the support part to release the contact between the tapered portion of the blade member and the positioning portion, the rotation mechanism can rotate the blade member.
7. The cutting device according to claim 1, the cutting device further comprising a second elastic member that presses the blade member toward the support part in an axial direction of the blade member, wherein: a projection is formed as the positioning portion on one of facing edges of the slit so as to project toward an inner surface side, and the projection is formed at two places with an axis of the blade member therebetween when viewed from above; the second elastic member presses the blade member such that one surface of the blade member is in surface-contact with the inner surface of the positioning member; and the first elastic member presses the blade member toward the slit so that a tapered portion on the other surface of the blade member is positioned by being in point-contact with each projection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 20100044406 to Ohmura, drawn to an optical fiber cutting apparatus and optical fiber cutting method.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HALEIGH N WATSON whose telephone number is (571)272-3818. The examiner can normally be reached M-Th 530AM-330PM 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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/HALEIGH N WATSON/Examiner, Art Unit 3724
/BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
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