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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-16 and 18 in the reply filed on 18 May 2026 is acknowledged. Claims 17, 19, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
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 following must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
stop collar
micrometer ring
ratcheting detent
window
LED targeting ring
LED line
laser alignment pointer
threaded interface
bayonet coupling
magnetic retention feature
collet chuck
user interface with presets
sensors
control circuitry
user-adjustable depth control
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.
The drawings are further objected to because Figure 11 contains multiple figures. The figures should either be labeled as separate and distinct figures, or be bracketed to present as a single figure.
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 disclosure is objected to because of the following informalities:
The specification contains multiple abbreviations without explanation of their meaning, including at least PEEK, UHMW-PE, DLC, and PWM. While Applicant may use abbreviations, to ensure clarity, the specification should teach what these abbreviations stand for as meanings can change over time.
Further, the use of the term Bluetooth, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claims 5 and 7 are objected to because of the following informalities:
The claims contains multiple abbreviation without explanation of their meaning, including at least PEEK, UHMW-PE, DLC, and PWM.
Appropriate correction is required.
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.
Specifically, the phrase “one or more presets including” is unclear since it is in improper Markush grouping. It is unclear whether the choice actually has to be made from this grouping. The language “including” means the group that is chosen from includes these components, along with other unlisted components. Can those other unlisted components be chosen instead?
Further, the phrase “novice lockout” is unclear. What does this mean?
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 (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 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.
Claim(s) 1, 2, 5, 8, 12-16, and 18 is/are rejected, to the degree definite, under 35 U.S.C. 102(a)(1) as being anticipated by Xiao (12011564).
In regards to Claim 1, Xiao teaches a device (Detail 10) for decorating leather (intended use) comprising: a cartridge (Detail 300) that has a distal end;
a shaft that has a proximal portion and a distal portion, the distal portion has a distal tip configured to tool leather and the proximal portion extends from the distal portion in a longitudinal direction (see annotated figure below);
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a drive (Detail 160) that is configured to move the shaft in a reciprocating motion, and
a drive housing (Detail 180) configured to house the drive and be held by a user,
wherein if the device is assembled, the shaft is housed within the cartridge, the distal tip of the shaft extends distally beyond the distal end of the cartridge, and the cartridge is attached to the drive housing (Figure 4).
In regards to Claim 2, Xiao teaches the distal portion of the shaft is a first distal tip (Figure 4).
In regards to Claim 5, Xiao teaches the drive comprises an electric motor configured to reciprocate the shaft, and the drive housing comprises user controls to adjust voltage or PWM to change a rate of reciprocation (Column 9, lines 1-10, 31-50).
In regards to Claim 8, Xiao teaches the shaft is biased toward a retracted position by a biasing element selected from a compression spring, a torsion spring, an elastomeric member, a magnetic return, or a membrane (see annotated figure below).
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In regards to Claim 12, Xiao teaches the cartridge comprises a depth control feature including an adjustable depth stop collar, a micrometer ring to set maximum protrusion of the distal tip, or a ratcheting detent (see annotated figure below; can be cut or bent to adjust).
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In regards to Claim 13, Xiao teaches the cartridge comprises a window configured to allow a user to view the shaft and/or comprises an illumination feature including an LED targeting ring, an LED line, or a laser alignment pointer (see annotated figure below).
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In regard to Claim 14, Xiao teaches the device comprises a user interface providing one or more presets including leather weight, pattern modes comprising a continuous line or a dotted line at a fixed pitch, a novice lockout, or a burst mode with a predetermined number of impacts per trigger (Figures 14, 17A-17L; novice lockout could be not being able to checkout, or not able to connect Bluetooth).
In regards to Claim 15, Xiao teaches the device comprises one or more sensors selected from a tip position sensor, a force sensor, a contact detection sensor, or a temperature sensor, and control circuitry responsive to the one or more sensors (Abstract: touch sensor).
In regards to Claim 16, Xiao teaches the shaft has a length greater than a length of the cartridge (Figures 4 and 5).
In regards to Claim 18, Xiao teaches a user-adjustable depth control disposed on the cartridge and configured to set a maximum distal projection of the distal tip or the distal tip relative to the distal end of the cartridge (see explanation for Claim 12 above).
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.
Claim(s) 3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao in view of Xiao (20190217072).
In regards to Claim 3, while Xiao essentially teaches the invention as detailed, it fails to specifically teach a second and third distal tip. Xiao ‘072, however, teaches that multiple tips are well known in the art (Paragraph 43). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included multiple tips, so as to allow for different patterns to be formed with the device.
In regards to Claim 6, while Xiao essentially teaches the invention as detailed, including the shaft being of at least two coupled pieces, it fails to specifically teach the material and complete structure of the shaft. Xiao ‘072, however, teaches that it is well known to form the shaft of metal and have a solid radial cross-section (Paragraph 43, Figure 4D). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the shaft of metal with a solid cross section, so as to be adequately strong and capable of being used as intended. The shaft of Xiao must be capable of withstanding movement and impact, and the ordinarily skilled artisan would have appreciated this and known to form the shaft as taught.
Claim(s) 7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao in view of Sun (CN 205796242).
In regards to Claim 7, while Xiao essentially teaches the invention as detailed above, it fails to specifically teach the myriad materials the distal tip could be formed from. Sun, however, teaches that it is well known to form the distal tip from tungsten carbide (Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the distal tip from tungsten carbide, so as to ensure adequate strength during use.
In regards to Claim 9, Xiao teaches the shaft is operatively connected to an end-cap of the cartridge by a membrane configured to stretch when the drive moves the shaft distally and to return energy that pulls the shaft proximally (see annotated figure below).
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Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao in view of Knight et al (20210195870).
In regards to Claim 4, while Xiao essentially teaches the invention as detailed above, it fails to specifically teach the distal tip is blunt. Knight, however teaches that it is well known that needles can be blunt (Paragraph 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the distal tip as taught by Xiao would be blunt due to use, and eventually need to be replaced. Claim 4 simply states that the distal tip is blunt, and Knight teaches that tips are known to become blunt.
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao in view of Johansson (20190134371).
In regards to Claim 10, while Xiao essentially teaches the invention as detailed above, including the cartridge being removably attachable to the drive housing, it fails to specifically teach how this occurs. Johansson, however teaches that magnetic retention features are well known (Abstract: magnet). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included such magnetic retention features, so as to quickly and securely attach the cartridge. The ordinarily skilled artisan would have appreciated the benefits of being able to switch out the cartridge in a quick and secure manner, and known to provide the magnets of Johansson as taught.
In regards to Claim 11, Johansson also teaches projections (Details 54) are part of the removable attachment connection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Specifically, at least Grimmelbein (11642507) Figures, Jones (20160067739) Abstract, Peterson et al (4127063) Abstract, Figures 2 and 3, and Sweet (2384707) Figures teach elements similar to those as currently claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shaun R Hurley whose telephone number is (571)272-4986. The examiner can normally be reached Monday thru Friday, 8:00am - 3:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton T Ostrup can be reached at (571) 272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAUN R HURLEY/Primary Examiner, Art Unit 3732
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