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
Claims 32 has been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Objections
Claim 1 is objected to because it appears to end with two periods. Appropriate correction required.
Previously withdrawn claims do not conform with 37 CFR 1.121. “If a withdrawn claim is currently amended, its status in the claim listing may be identified as ‘withdrawn— currently amended.’” (Id.). Appropriate correction is required.
Specification
The amendment filed November 10, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: recitations of a void and a secondary tool.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 11, 24 and 33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “magnets are positioned behind said rear terminal end surface” in Lines 13-14. It appears that support exists for on the end surface only. As such, the recitation contains new matter. Appropriate correction required.
Claim 1 refers to a tool in the cavity. Yet, the disclosure at the time of filing lacks support for a secondary tool. Appropriate correction required.
Claim 1 recites “a secondary tool is positioned on said arm between said midpoint and said distal end.” This recitation is new matter. While the scope of the secondary tool is unclear, Figure 5 shows the entire optical assembly spanning the midpoint of the arm. That is, the laser is on one side and the beam splitters and mirrors are on the other side of the arm midpoint. Appropriate correction required.
Claim 33 recites “a plurality of arms” in Lines 1-2. This recitation contains new matter. Claim 1 requires an arm. A further plurality to that arm (more than two arms) is new matter. Appropriate correction required.
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, 11, 24 and 33 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.
Claim 1 recites “said central core” in Lines 11-12. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 1 recites “magnet is positioned behind said rear terminal end surface of said core” in Lines 13-14. It is unclear how the magnet is considered behind the rear terminal surface of the core.1 It is unclear what constitutes the core, but also it is unclear how, if the terminal surface is the end of the core, the magnet is considered behind that surface. Additionally, there is insufficient antecedent basis for “said core” limitation. Appropriate correction required.
Claim 1 refers to “a secondary tool” in Line 15. Yet, there is no mention of a primary tool. As such, it is unclear whether there is a primary tool or how otherwise the tool is considered secondary. A tool is defined as “a handheld device used for accomplishing a task.” https://www.merriam-webster.com/dictionary/tool (last visited July 25, 2025). Furthermore, the metes and bounds of what constitutes a secondary tool in this context are unclear. Appropriate correction required.
Claim 24 recites “said central opening” in Line 2. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 24 recites “said annular magnet” in Line 3. There is insufficient antecedent basis for this limitation. Claim 11 recites “comprises an annular ring,” which is not tantamount to the magnet being annular. Appropriate correction required.
Claim 33 recites “a plurality of arms” in Lines 1-2. It is unclear whether the arm recited in claim 1 is part of the plurality or there is a plurality in addition to the arm previously recited. Appropriate correction required.
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.
Claims 1, 11, 24 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Cerwin (US Pub. No. 2019/0219384 A1) in view of Tieszen (US Patent No. 6,663,260 B1).
(Claim 1) Cerwin discloses a tool support for a rotary tool having a chuck (Figs. 30, 31). The tool support includes a central core section (surrounding aperture 3040). The central core section surrounds a circular opening (3040) and also includes a rear terminal end surface that defines a plane (surface visible in Fig. 30). The tool support includes an arm radially extending from said central core section and terminating in a distal free end (Fig. 30). The arm has a midpoint between the central core (presumably central core section) and said distal end (Fig. 30). Prior to moving to the next limitation, it is worth noting that a section is simply a part of a whole. Without more, the section may be arbitrarily identified. That said, the arm has a front side and a rear side (rear side visible in Fig. 30 with the front side being opposite thereof). As best understood, a secondary tool (3041, 3042) is positioned on said arm between said midpoint and said distal end (Fig. 30). There are two arms symmetrically disposed about a central axis of the tool support (Fig. 3). Cerwin discloses that the tool support is capable of being mounted to a rotary part of a tool/chuck, but does not explicitly disclose a magnetic connection.
Balding discloses a magnetic (24) connection in which a magnet within a recess portion on a ledge thereof with a cap to fit over the magnet (Fig. 3). The magnet may project behind a rear surface (Fig. 3; Page 2, Lines 45-53). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the tool support device disclosed in Cerwin with a magnet connection as suggested by Balding in order to provide a strong connection with quick disconnection (Page 1, Lines 56-68). See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness). While the magnet is not explicitly disclosed as being annular, examiner takes official notice that annular magnets are well-known. As such, one having ordinary skill in the art at a time prior to filing would have found it obvious to provide the tool support disclosed in Cerwin with an annular magnet in order to provide 360 degree holding contact between the tool support and an element in which the tool support is to be attached thereto.
Response to Arguments
Applicant’s arguments with respect to claim 1, 11 and 24 have been considered but are moot because of the new grounds of rejection.
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 RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Singh Sunil can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
1 Claim 24 further supports the indefiniteness rejection as it recites that the cap defines the rear terminal end surface. That is, the cap that covers the magnet defines the rear terminal end surface in which the magnet is somehow rearward thereof.