DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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, 3, and 11 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 “extending the central opening through the portion of the shaft into proximity to the drive adapter until a proximal end of the central opening is distal from a proximal end of the shaft by a distance being between one-half of a diameter and one full diameter of the central opening.”
These limitations are new matter as they do not appear in the originally filed Specification. The originally filed Specification uses the term “diameter” three times. The specification teaches at page 3, “the internal diameter of the hollow shank is sized to provide clearance for a threaded rod of the size to be serviced by the socket at the distal end.” The specification further teaches at page 4, “Also, the diameter of the rods is variable, including other embodiments, such as, for example, using standard 5/16" or 3/8" hex nuts.” And last the specification teaches at page 6, “Figure 3 is a side elevation view of a family of three nut drivers of this invention of the same diameter but with three different lengths.” The specification does not provide support for a comparison of the central opening depth with the central opening diameter.
Also, claim 1 recites, “forming the central opening with a diameter being greater than a standard diameter of the threaded shank of the j-bolt.”
There is no description of this step in the originally filed specification.
Claim 11 recites: a proximal end of said drive adapter being positioned at a distance away from a proximal end of said shaft by a distance being between one-half of a diameter and one full diameter of said central opening.
The specification does not provide support for a comparison of the distance of the drive adapter with the central opening diameter.
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.
Claim 1 recites, “forming the central opening with a diameter being greater than a standard diameter of the threaded shank of the j-bolt.”
The term “standard” in the limitation of claim 1 above is a relative term which renders the claim indefinite. The term “standard” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear which standard is being referred to. It appears Applicant is referred to a ‘commonly used’ size of threaded rod, however, Examiner notes that different sized threaded rods are used in different applications and in different parts of the world. It appears that each artisan would have a different understanding of which a “standard” size of threaded rod is.
The metes and bounds of this claim limitation are unclear. Later limitations in claim 1 require second and third nut drivers to be “the same as the first nut driver except for forming the shaft … longer.” That means all three nut drivers have the same diameter central opening. The step of forming must be related in some way to the manufacture of the nut driver.
The claim requires the forming to depend on a diameter of a j-bolt, thus a reasonable interpretation is that the manufacturing of the nut driver happens only after the j-bolt has been embedded. Even though Applicant has amended the claim to require “a standard size… of the j-bolt,” this still requires the j-bolt to be embedded prior to forming the central opening of the nut driver. The claim is unclear on this point as this would be an extremely unusual method step. Examiner’s best art does not appear to teach this limitation. However, as explained in the rejection under 112(a) above, Applicant does not appear to have support for this interpretation of the limitation.
Claims 1 and 3 constantly refer to the singular form of a tool’s structure, however, claim 1 requires at least three tools. Thus, there is uncertainty about which of the three tools is being referred to after the introduction of a second and third nut driver, regarding any recitation of a singular portion of a tool such as “the shaft,” “the socket member,” or “the drive adapter.”
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 9 and 11-12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Klein Tools: Screwdrivers, Nut Drivers & Accessories Catalog 2006 and Huang (DE 20 2006 016 721).
As to claim 9, Klein Tools teaches a nut driver, for use in bolting down a single nut upon a threaded rod (Hollow-Shank nut drivers are introduced on Klein Tools Page 87. The shank “Fits over long bolts and studs”).
Klein Tools does not teach the nut drivers are power nut drivers. Rather, the hollow-shank nut drivers are hand tools.
However, Huang teaches a main head 20 of a tool shaft 10 is useful in both hand tools (as illustrated in Figs 1 and 5) and also for use in power tools (as illustrated in Fig 6). Notably, the shaft 10 is embedded in the tool handle of Fig 1 which is analogous to the hand tool of having a handle shown on Klein Tools Pages 87-88. Also, the shaft 10 of Huang Fig 6 includes a connecting section 12 useful for attachment to a power tool.
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to have modified Klein Tools’ Hollow-Shank nut driver hand tool to have swapped the handle for a connection for a power tool, thus making the hand tool into a power tool. Such a person would have been motivated to do so with a reasonable expectation of success in order to allow Klein Tool’s tool shank to be used with power tools, rather than just hand tools. Power tools, it would be appreciated by an artisan having ordinary skill, are an improvement over hand tools since they spin faster than hand tools, thus reducing the time spent performing a screwing task.
Klein Tools in view of Huang further teaches: said power nut driver, comprising: said threaded rod extending outwardly from a base surface and having a free length above said base surface and terminating in a free end above said base surface (this is merely an intended use of the claimed power nut driver, the power nut driver of Klein Tools in view of Huang is capable of being used in this way), said power nut driver comprising an uninterrupted elongated hollow shaft (as shown on Klein Tools page 88) of sufficient length to fully enclose said length of the threaded rod (Klein Tools page 88 describes nut drivers having lengths of 1 ½” to 18”), said power nut driver having a closed proximate end (Klein Tools teaches the end of the shank embedded in the handle. Huang teaches the right-most end of Fig 5, for example) with a drive shank mounted with respect to said closed proximate end (rear end connecting section 12 of Huang is a drive shank mounted on the right-most end of Huang’s tool), said drive shank having an axially aligned drive adapter associated therewith (the rear end connection section 12 is an axially aligned drive adapter associated therewith); said power nut driver having an open distal end with a hollow one piece socket mounted on said open distal end (as illustrated in Klein Tools’ Hollow Shank drivers, the open distal end faces the left, the one-piece socket is at the far left end); wherein said one piece socket and said drive adapter are integrally formed with said drive shank as a single unitary part (as shown in Klein Tools, the socket and shank are formed as a single unitary part. As shown in Huang, the drive adapter and shank are formed as a single unitary part. Thus, when practiced by an artisan having ordinary skill, all three portions are obviated to be formed as a single unitary part); said uninterrupted elongated hollow shaft being in excess of three inches in length (as taught on page 88, Klein Tools teaches hollow shafts of up to 18” in length); said selected driver having a smooth, continuous, uninterrupted portion between said drive shank at said closed proximate end and said hollow one piece socket mounted thereon (this limitation pertains solely to the shank portion. Klein Tools is not explicit regarding the smoothness, continuousness, or whether the shank is uninterrupted. Neither there is reason to consider the hollow shank that is useful for “facilitating work on long bolt and stud applications” should not be smooth or continuous or be interrupted.); wherein the single nut engages the threaded rod while seated in said socket (This is an intended use of the product. See MPEP § 2114. The tool of Klein Tools in view of Huang is capable of being used in this way.); said hollow shaft receiving therewithin said extended threaded rod (This is an intended use. Klein Tools teaches a long bolt or shaft fits inside the shank), and said threaded rod extending into said hollow shaft and through the single nut, said threaded rod threadable through said single nut along a length thereof (this is an intended use), and wherein a proximal end of said extended threaded rod within said hollow shaft is spaced apart from said closed proximal end of said hollow shaft (this is an intended use of which the obviated tool is capable of performing); a power tool engaging said drive shank to deliver full applied torque with no slippage through said hollow one piece mounted socket to said nut (this is an intended use of the tool of Klein Tools in view of Huang. The tool is capable of being used in this way), said power tool having a chuck engaged with said drive shank (this is an intended use); wherein, in a single tightening step, said power tool being adaptable to said drive adapter, said power tool driving said drive shank and delivering said drive shank applying full applied torque with no slippage through said hollow one piece mounted socket at said distal end to said single nut (this is an intended use of the tool); said drive shank tightening down said single nut on said threaded rod in said single tightening step without stopping to separately tighten any other further nut to said threaded rod (this is an intended use of the tool); and, said power nut driver threading the single nut on the free end of said threaded rod over the full free length thereof where long threaded rods are a design necessity all the way down to said base surface and tightening said single nut on said threaded rod against the base surface (this is an intended use of the tool).
As to claim 11, Klein Tools teaches nut driver, for use in bolting down, a single nut upon an eternally threaded rod (Hollow-Shank nut drivers are introduced on Klein Tools Page 87. The shank “Fits over long bolts and studs”).
Klein Tools does not teach the nut drivers [use] a power drill. Rather, the hollow-shank nut drivers are hand tools.
However, Huang teaches a main head 20 of a tool shaft 10 is useful in both hand tools (as illustrated in Figs 1 and 5) and also for use in power tools (as illustrated in Fig 6). Notably, the shaft 10 is embedded in the tool handle of Fig 1 which is analogous to the hand tool of having a handle shown on Klein Tools Pages 87-88. Also, the shaft 10 of Huang Fig 6 includes a connecting section 12 useful for attachment to a power tool.
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to have modified Klein Tools’ Hollow-Shank nut driver hand tool to have swapped the handle for a connection for a power tool, thus making the hand tool into a power tool. Such a person would have been motivated to do so with a reasonable expectation of success in order to allow Klein Tool’s tool shank to be used with power tools, rather than just hand tools. Power tools, it would be appreciated by an artisan having ordinary skill, are an improvement over hand tools since they spin faster than hand tools, thus reducing the time spent performing a screwing task.
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Klein Tools in view of Huang further teaches the tool: with a protruding portion being in excess of three inches long (as taught on page 88, Klein Tools teaches hollow shafts of up to 18” in length), said nut driver comprising: a socket member (as illustrated in Klein Tools’ Hollow Shank drivers, the open distal end faces the left, the one-piece socket is at the far left end); a shaft, said shaft beginning at a distal end of said socket member and extending axially away from said socket member (as illustrated in Klein Tools Page 88); a drive adapter (the drive adapter shown in Fig 6 of Huang), at least a portion of said drive adapter extending axially away from said shaft to a distal end (as illustrated in Fig 6 of Huang); wherein said socket member comprises: a socket section (as illustrated at Klein Tools Page 88), said socket section comprising: an opening defining a hexagonal perimeter surface being sized and configured to receive and engage a hexagonal shape of a particular hex nut (Klein Tools teaches the sockets may be sized to hex nuts of ¼” and/or 5/16”) having internal threads sized for threading onto the externally threaded rod (this is an intended use limitation of a device intended to be worked upon by the claimed tool. The tool is capable of working upon hex nuts having internal threads. Klein Tools teaches the shaft is hollow to “facilitate work on … long bolt applications” (page 89).); and a collar portion; wherein said collar portion is configured to transition said socket section into said shaft (as illustrated above); a central opening, said central opening configured to extend concentrically through said socket section, through said collar portion, and through said shaft (as indicated in the annotated image above); wherein said central opening is sized with an inner diameter being greater than the threads of the externally threaded rod (the rod is intended by Klein Tools to extend into the shaft. Thus the shaft must have an opening sized greater than the diameter of the threads); wherein a first portion of said drive adapter is configured for engagement within a chuck of a power drill and configured to thereby be driven to rotate (as shown by Huang in Fig 6, the drive adapter is configured for engagement with the power tool 70); wherein a second portion of said drive adapter is received within and fixedly secured with respect to said central opening (as illustrated above), wherein said central opening between said collar portion and said proximal end of said drive adapter comprises: a length configured to receive a free end of the protruding portion of the threaded rod in a clearance fit when the nut is fully torqued with the nut seated within said socket section (this limitation depends on the length of threaded rod. Klein Tools teaches shank lengths of from 1.5” to 18”. AN 18 inch shank length will meet the limitation for any length of threaded rod less than 18 inches long.); wherein said nut driver is thereby configured to spin the nut down an entire length of the protruding portion of the threaded rod, with the power drill always positioned distal from the free end of the threaded rod (the tool of Klein Tools in view of Huang is capable of performing these intended uses); and wherein said socket member, said shaft, and said drive adapter are integrally formed as a single unitary part (as obviated by Huang in the embodiment of Fig 6, the socket, shaft and adapter are a single unitary part).
Klein in view of Huang does not teach a proximal end of said drive adapter being positioned at a distance away from a proximal end of said shaft by a distance being between one-half of a diameter and one full diameter of said central opening.
However, as shown in Huang, the adapter is connected to the shaft, and there must inherently be some physical distance in the connection.
Applicant has not disclosed that having the distance between a proximal end of the shaft and a proximal end of the adapter solves any stated problem or is for any particular purpose. As noted in the rejection under 112(a) above, Applicant does not have written support for this limitation. Moreover, it appears that the shaft and adapter of Klein Tools in view of Huang, or applicant’s invention, would perform equally well with any reasonable distance between the shaft and the adapter, including distances between one half and one full diameter of said central opening.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Klein Tools in view of Huang such that the distance between the shaft and adapter is one half and to one full diameter of said central opening because such a modification would have been considered a mere design consideration which fails to patentably distinguish over Klein Tools in view of Huang.
As to claim 12, Klein Tools in view of Huang teaches the nut driver according to claim 11 wherein said nut driver is sized to accommodate a 3/8" diameter threaded rod, and wherein said socket section is configured to engage a 9/16" socket (as shown on Klein Tools page 89, hollow shank drivers were known to be useful for accommodating sockets of 9/16” size. While Klein Tools appears to be silent as to the specific inner diameter of the hollow shaft, Examiner asserts 3/8” was a common diameter thread used by nuts having 9/16” hex size, and thus it would have been prima facie for the hollow shaft of Klein Tools to accommodate this size of threaded rod given it is sized to accommodate the 9/16” size hex nut.).
Response to Arguments and Affidavit
On page 8, Applicant argues the concept of a washer is found in the drawings, specifically page 16. Examiner agrees and has removed the rejection of claim 1 pertaining to the lack of written description of the washer.
On Page 10, Applicant argues against the new matter rejection pertaining to equating a diameter to a distance of a central opening. For evidence, Applicant provides an annotated Figure 2. Examiner finds this argument unconvincing as the drawings are not described as being to scale, and even if scale-drawings are not required to show the ratio of two distances, it appears that Applicant chose the line of the proximal end of the central opening arbitrarily to fit within the newly claimed limitation.
On page 12, Applicant argues Examiner’s rejection of the limitation “sizing the central opening with a diameter being greater than a diameter of the threaded shaft of the j-bolt” under 112(a) is improper. As evidence, Applicant provides Figure 2 which shows that the central opening of a shaft is larger than an outer diameter of a J-bolt.
Examiner doesn’t disagree that Applicant has support for a tool having an inner diameter greater than the outer diameter of a threaded J-bolt. However, the claim limitation is much more specific than this. The claim requires forming the tool so that the inner diameter of the tool is larger than the outer diameter of the specific J-bolt found in the preamble (having the wooden frame, and concrete foundation). Stated differently, the artisan must encounter a J bolt in a construction site, and then form a tool to the specifications of that particular J-bolt.
Applicant’s originally filed specification does not have support for this particular method step. Rather, Applicant appears to form the tools prior to being on the job-site, as does all of the art found by the Examiner.
Applicant’s arguments on pages 13-14 pertaining to the difference between “sizing” and “forming” are moot as Applicant amended the claim to require “forming.”
On pages 15-18, Applicant attacks Huang for teaching an interchangeable head. Respectfully, Examiner asserts that Huang’s interchangeable head is not pertinent to the rejection. Rather, Huang is relied upon only insofar as it teaches that a tool was known to be modified from being a hand-driven tool (Huang Fig 1 and 5) having a handle into a power-driven tool (Fig 6) having a drive adapter rather than a handle.
Applicant’s arguments regarding Huang’s interchangeable head are not convincing as the structure of the interchangeable head does not affect the use of the tool as a hand tool or a power tool.
The remarks at pages 19-21 are directed to the inoperability of the combination of Klein Tools Hollow Shank Nut Drivers with Huang since Applicant contends that Klein Tools teaches the nut drivers are “pass through” drivers.
Examiner disagrees. There is no evidence that the Nut Drivers of Klein Tools are “pass through” drivers. It may be true that the Klein Company produces “pass through” nut drivers (Applicant provides evidence at Remarks Page 19 screen shot of a Home Depot product listing), but this is not relevant to the Klein Tools catalog from 2006 used as the prior art in this Application. Confusingly, Applicant points to the magnet symbol as evidence the tool is a “pass through” nut driver. Moreover, Examiner points to Klein Tools page 89 which more explicitly illustrates a handle of a hollow shank nut driver, the shank clearly terminating about midway through the handle. This is not a “pass through” nut driver.
With regards to the Secondary Considerations, please see Examiner’s Response to Arguments in the Action mailed 2 June 2025. Where the arguments or Examiner’s response differs from that of 2 June 2025 are indicated below:
Applicant provides a new argument under long-felt need pertaining to proximity of the tool to the nut as shown in the image below.
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Examiner asserts that the proximity of the tool to the nut is not needed when using the 18” hand tool of Klein Tools. This hand tool is obviated to be modified into a power tool by Huang.
Regarding Nexus, Examiner notes that Nexus is only presumed in this Application for claim 11, as other claims are directed to a method, which is not the product “Big Willy / Hollow ShanX.”
The Affidavit filed 27 August 2025 is not persuasive. As described on pages 9—10 of the Non-Final Rejection mailed 2 June 2025, Examiner noted the Applicant had made no discussion regarding advertising, promotion, consumption by purchasers normally tie[d to applicant or assignee, or other business events extraneous to the merits of the claimed invention. Moreover, it is unclear whether the sales figures provided by Applicant are small, normal, or extraordinary for a tool, nor how the sales compare to the figures after similar tools were provided to the marke[t], normalized to the size of the market, and discounting any previously discussed business events.
Examiner appreciates Applicant’s affidavit declaring that no advertising was made, however, non-obviousness based on commercial success has still not been satisfied.
Applicant’s arguments in favor of non-obviousness in view of long-felt need are not convincing. Of particular note in an attempt to show a long-felt need is the evidence of “prior unsuccessful attempts” to achieve the result. In this case, Applicant has shown prior attempts at solving the same problem of screwing bolts on long threaded rods using power tools, and it appears that prior artisans were successful at this task.
Applicant erroneously states that “the ability to torque the nut from the distal top end of the threaded rod had never been solved” (p. 21) even though Applicant had provided several examples of power tools to perform this task on pages 14, 15, and 22. Applicant adds the caveat that tools can not perform this task “in tight spaces” but this is not claimed, nor is it definite (under 112(b)) since several of the examples provided by Applicant are relatively small.
Moreover, Applicant has not shown that artisans attempted and were unsuccessful at using power nut drivers of the particular shape invented by Applicant.
Applicant’s arguments pertaining to industry praise are not relevant as a secondary consideration unless coupled with pertinent industry skepticism. See Fox Factory, Inc. v. SRAM, LLC, 813 Fed. Appx. 539, 542-43, 2020 USPQ2d 10546 (Fed. Cir. 2020).
Applicant has not satisfied the requirements of showing that the several competitors engaged in copying since copying “… requires evidence of efforts to replicate a specific product, which may be demonstrated through internal company documents, direct evidence such as disassembling a patented prototype, photographing its features, and using the photograph as a blueprint to build a replica, or access to the patented product combined with substantial similarity to the patented product.” (Wyers v. Master Lock Co., 616 F.3d 1231, 1246, 95 USPQ2d 1525, 1537 (Fed. Cir. 2010))
Rather, that many competitors produce similar devices may weight in favor of a determination of obviousness considering the relative simplicity of the design of the device. That is, hand tools having long hollow shanks useful for threading nuts on long threaded rods were known at the time the invention was effectively filed. Also, it was known at the time the invention was effectively filed in the field of tool shanks to swap a handle for a power tool connection. See Examiner’s rejection of claim 11 above for the full text of the determination of obviousness.
Conclusion
THIS ACTION IS MADE FINAL. 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 JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K. Singh 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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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 12 November 2025