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 .
Claim Objections
Claims 1, 2, and 6 are objected to because of the following informalities:
Claim 1, line 18, “for moving locking mechanism” should be – for moving the locking mechanism.--
In regards to claim 2, “a rod is connected” should be -- a rod connected--.
Claim 6, “The miter saw of Claim 3” should be – The miter saw of Claim 4--. Claim 6 has been examined as depending from claim 4.
Appropriate correction is required.
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,337,499 . Although the claims at issue are not identical, they are not patentably distinct from each other because it appears that U.S. Patent No. 12,337,499 includes all of the features of claims 1-12 of the instant application 11/891544. Therefore, the U.S. Patent No. 12,337,499 in effect anticipates the instant invention claims. It is clear that all elements of claims 1-11 of the instant invention are to be found in claims 1-7 of U.S. Patent No. 12,337,499. The differences between claims 1-11 of the instant application and claims 1-7 of U.S. Patent No. 12,337,499 lies in the fact that U.S. Patent No. 12,337,499 includes many more features and thus is more specific. Thus, the invention of claims 1-11 is in effect a "species" of the "generic" invention of claims 1-7 of U.S. Patent No. 12,337,499. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-11 is anticipated by claims 1-7, it is not patentably distinct from claims 1-7 of U.S. Patent No. 12,337,499.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,951,643. Although the claims at issue are not identical, they are not patentably distinct from each other because it appears that U.S. Patent No. 11,951,643 includes all of the features of claims 1-11 of the instant application 11/891544. Therefore, the U.S. Patent No. 11,951,643. in effect anticipates the instant invention claims. It is clear that all elements of claims 1-11 of the instant invention are to be found in claims 1-10 of U.S. Patent No. 11,951,643. The differences between claims 1-11 of the instant application and claims 1-10 of U.S. Patent No. 11,951,643 lies in the fact that U.S. Patent No. 11,951,643. includes many more features and thus is more specific. Thus, the invention of claims 1-11 is in effect a "species" of the "generic" invention of claims 1-10 of U.S. Patent No. 11,951,643.. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-11 is anticipated by claims 1-10, it is not patentably distinct from claims 1-10 of U.S. Patent No. 11,951,643.
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, 3-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brault et al. (U.S. Patent 6016732), herein referred to as Brault
In regards to claim 1 Brault discloses a miter saw comprising: a base (14) having a detent notch (42); a table (turntable 58) rotatably connectable to the base, the table being rotatable about a substantially vertical miter axis and having a substantially horizontal workpiece-supporting plane (top of turntable); a pivoting assembly (bevel support 298) connected to the table; a saw assembly (cutting unit 294) supported by the pivoting assembly, the saw assembly comprising a blade (614), the blade being movable for a cutting operation downwardly from a first position where the blade is above the workpiece-supporting plane to a second position where a portion of the blade is below the workpiece-supporting plane; a fence (74) connected to the base assembly, the fence defining a fence plane perpendicular to the workpiece-supporting plane; a locking mechanism (222) disposed on the table, the locking mechanism being movable between an unlocked position and a locked position for selectively unlocking and locking the table for rotational movement relative to the base about the miter axis, the locking mechanism comprises a lock lever (218) rotatably connected to the table (threadingly connected), the lock lever having a handle (222) for moving locking mechanism between the locked and unlocked positions; and a miter detent assembly ((90) for selectively engaging and disengaging the detent notch.
In regards to claim 3, Brault discloses wherein the miter detent assembly (90) is pivotably attached to the table (at 94)
In regards to claim 4, Brault discloses wherein the miter detent assembly (90) comprises a body (spring member 90) attached to the table, the body having a detent portion (detent 106), and a detent override assembly (138) for moving the detent portion from a first position engaging the detent notch (fig. 2) and a second position not engaging the detent notch (fig. 3), the detent override assembly comprising a lever (134) pivotally attached to the table (at hinge pin 154) and contacting the body, and an actuator (138) pivotally attached to the table (at 154) and contacting the lever (134).
In regards to claim 5, Brault discloses wherein the actuator (138) has a handle (138).
In regards to claim 6, Brault discloses wherein the miter detent assembly further comprises a detent override mechanism (138) for maintaining the body (90) in the second position (fig. 3) when the detent override mechanism is activated.
In regards to claim 7, Brault discloses wherein the actuator (138) is pivotably connected to the table via a pin (154).
In regards to claim 8, Brault discloses wherein the detent override mechanism (134/138) is pivotably disposed on the pin (154).
In regards to claim 9, Brault discloses wherein the detent override mechanism has a handle (138).
In regards to claim 10, Brault discloses wherein the detent override mechanism contacts the lever (134).
In regards to claim 11, Brault discloses a plurality of guide rails (226) slidingly disposed on the pivoting assembly and connected to the saw assembly.
Allowable Subject Matter
Claim 2 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA M LEE whose telephone number is (571)272-8339. The examiner can normally be reached M-F 8a.m.- 5p.m..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAURA M LEE/Primary Examiner, Art Unit 3724
Prosecution Insights