DETAILED ACTION
This office action is responsive to the amendment filed August 25, 2025. By that amendment, claims 1, 5-7, 11 and 12 were amended; and claim 23 was canceled. Claims 1, 4-8, 10-14, and 16-21 stand pending.
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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 4-8, 10-14 and 16-21 have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The newly presented rejections were necessitated by the amendments of August 25, 2025.
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.
Claim(s) 1, 4-7, 11 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown (US 8,955,827 B2).
Regarding claim 1, Brown teaches a tool 100, seen best at figs. 1 and 3, capable of use as a medical implant extractor comprising:
a handle (end 140 is capable of being handled and manipulated by a user’s hand);
a shank 110 extending from the handle 140;
a substantially S-shaped head 120/220/210 extending about an end of the shank 110 distal to the handle 140; and
a non-bifurcated tip 180/190/200 extending laterally from a distal end of the substantially S-shaped head 120/220/210,
wherein a longitudinal axis of the distal end of the substantially S-shaped head (seen in solid line above A—A in fig. 3, along 210) is substantially parallel to a longitudinal axis of the shank (seen in dashed line in fig. 3, A--A), and
wherein the tip 180/190/200 includes a proximally facing concave face (at least at an inner face of portion 200) and a curved free edge (at least at outer edge 200).
Regarding claim 4, the substantially S-shaped head includes a first curved section having an arc of about 90 degrees and a second curved section extending from the first curved section having an arc of about 90 degrees as seen best in fig. 3.
Regarding claim 5, a proximal end 120 of the substantially S-shaped head is spaced laterally and axially from the distal end 210 of the substantially S-shaped head.
Regarding claim 6, the proximal end 120 of the substantially S-shaped head is laterally spaced from the distal end 210 of the substantially S-shaped head about 12 mm to 52 mm. (See fig. 3, distance between axes is 12.5 mm; see col. 5, lines 56-58)
Regarding claim 7, the tip 180/190/200 is considered to be substantially ridge-shaped and has a distally facing curved face side (at least outer edge of 200).
Regarding claims 11 and 12, the tip 180/190/200 is offset from a longitudinal axis A-A of the shank 110 by about 12 mm to 52 mm. (See fig. 3, distance between axes is 12.5 mm; see col. 5, lines 56-58)
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) 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown.
Regarding claims 8 and 10, Brown teaches the limitations of claim 1, as above, and further, the proximally facing curved face side at 200 includes a radius of curvature as seen at fig. 3; and the curved free edge at 200 includes an arc length. However, the radius of curvature and arc length are not clearly specified by Brown. It is noted that Brown provides for differently designed curvatures and curve designs as at col. 3, line 60 – col 4., line 11, in which it is noted that the curve at 200 can be a plurality of angles, a continuous curve, or a single angle, such as a right angle. These designs indicate that a wide degree of radius of curvature and arc length at curve 200 are contemplated. It would have been obvious from this disclosure to form the curve 200 to include the claimed radius of curvature and arc length in order to design the tool to have a desired size and configuration, as well as desired material properties (e.g. strength/stiffness) to interact with a particular structure and be capable of manipulating that structure.
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown in view of Paul (US 2012/0004664 A1).
Regarding claims 13 and 14, Brown teaches the limitations of claim 1, above.
However, the handle 140 is not taught to include a distally facing strike plate which circumscribes the shank 110.
Paul teaches a tool as at fig. 15 in which the tool includes a handle 80 including a distally facing strike plate 87 which circumscribes a shank 81.
It would have been obvious to include a strike plate similar to that of 87 of Paul circumscribing the handle region 140 of Brown in order to provide the user of the Brown device with a larger area for impacting a tool against to provide for increased application of force and wider direction of the force applied to improve scraping by the Brown device. Even further, such a design would function to improve ergonomics of the Brown device, while additionally providing for a protective region to prevent the user of a mallet with the Brown device from inadvertently striking his own hand or the work piece as he holds the tool.
Claim(s) 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Buttler et al. (US 2006/0293679 A1) in view of Brown.
Regarding claims 16 and 17, Buttler teaches an impaction tool as at fig. 3A. The device includes a handle 10, a shaft 3b, and a head 2b. The head 2b includes a slot 6b capable of being attached to a guide means (such as a rod) [0042].
Brown teaches the device of claim 1, as above.
It would have been obvious to one with ordinary skill in the art at the time of the invention to utilize the Buttler mallet to impact a structure retained by the Brown device. One would have done so in order to increase the amount of force applied to structures by the Brown device, and/or permit use of the Brown device as a guide means for the Buttler mallet in a situation where it is not desirable to impact delicate structures in the field of work. One would have done so by modifying the slot configuration 6b/8b/9b of Buttler to correlate to the Brown shaft at 110 such that the shaft can be received therein.
Regarding claims 18-21, Examiner notes that there is no particular advantage disclosed to be gained from providing separable weights within the head of the hammer. The entirety of disclosure related to this feature appears to be at originally presented [0036], and provides for enhanced force exerted by the hammer head against another device. It is examiner's position that forming the hammer head of a heavier material, in a solid form, will achieve this same result of increasing enhanced force. There additionally does not appear to be any disclosure to advantage achieved by having a particular chamber; having the weights be metal shot; or having multiple chambers of any particular configuration. These elements are considered to be formation of a previously integral device (a solid hammer head) in a separable construction (a head with a chamber with pieces of shot placed therein).
It would have been obvious to one with ordinary skill in the art at the time of the invention to form the Buttler hammer with a chamber with weights therein since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Configuration of the chambers, themselves, is considered to be a matter of design choice which is not disclosed to affect functionality of the hammer.
Examiner also takes official notice of the existence of “dead-blow hammers”, which are old and well known in the art of impact devices. (Many such hammers are known to include shot in a chamber in the head of a hammer to prevent a hammer from rebounding upon impact.) Such known hammers in the art will be used as a basis for indication of obviousness of the proposed modification, if this issue is argued by applicant.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Bates whose telephone number is (571)270-7034. The examiner can normally be reached Monday through Friday, 10AM-6PM
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If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571)272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID W BATES/Primary Examiner, Art Unit 3799