DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 29, 2026 has been entered.
Status of Claims
This office action is in reply to the request for continued examination filed on April 29, 2026. Claims 1, 4, 21 and 23 have been amended. Claims 24 and 25 have been added. Claims 6 and 11 have been cancelled. Claim interpretation previously made under 35 USC 112(f) is maintained. The previous 35 U.S.C. 103 rejection has been overcome however a new rejection is presented herewith and is discussed in further detail below. Claims 1-5, 7-10 and 12-25 are currently pending and have been fully examined.
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.
Claims 1-5, 7-10 and 12-25 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. Any remaining claims are rejected based on their dependency to a rejected base claim.
Claims 1, 22 and 23 all disclose similar limitations pertaining to a “diameter that is about 0.35 millimeters (mm) to about 0.25 mm less than the standard size diameter of a respective standard size extraction tool.” However, it is unclear whether the diameter range above is the same range for extraction tools of different sizes. In other words, if a diameter of a standard size extraction tool is ¼ inch or if a diameter of a standard size extraction tool is ½ inch, would the diameter range of about 0.35 millimeters (mm) to about 0.25 mm be used for both of the different sized extraction tools? Also, where is the support for the diameter range? Applicant previously disclosed that paragraphs 41, 47 and Figure 11 supported such a limitation however the examiner has reviewed these sections and Figures but cannot find such support. Thus, the examiner respectfully requests further clarification on where in Figure 11 such a feature is shown or where in paragraphs 41 or 47 (or any other paragraph) support for such a limitation can be found.
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 22, is rejected As Best Understood under 35 U.S.C. 103 as being unpatentable over Pigford et al. (6877402) in view of Horobec (2005/0183548).
In reference to claim 22, As Best Understood, Pigford et al. discloses a set of extraction tools (i.e. at 2 in Figure 9) configured to turn rounded, stripped, worn, or damaged fasteners (see Column 1, Lines 8-12), the set of extraction tools comprising:
a plurality of standard size extraction tools (2, see Column 5, Lines 54-60), wherein each standard size extraction tool within the plurality of standard sized extraction tools has a standard size engagement recess (28) with a standard size diameter (Column 5, Lines 54-60).
Pigford et al. lack,
a plurality of minus-size extraction tools, wherein, for each standard size extraction tool, the plurality of minus-size extraction tools includes a respective minus-size extraction tool having a minus-size engagement recess with a minus-size diameter that is about 0.35 millimeters (mm) to about 0.25 mm less than the standard size diameter of a respective standard size extraction tool.
However, Horobec teaches that it is old and well known in the art at the time the invention was made to provide a set of extraction tools (10, see paragraphs 38 and 39) in different sizes (paragraph 38), each extraction tool including a tapered engagement recess (28, Figure 5) having an inner diameter (Figure 5), wherein the tapered engagement recess “allows the tool to be placed over damaged fasteners that no longer have a standard size” (paragraph 17) such that the tapered engagement recess is “configured and correlated with respect to various damaged fastener sizes” (paragraph 38). Since, the damaged fasteners “no longer have a standard size, the tapered engagement recess of each of the set of extraction tools (10) that are “configured and correlated with respect to various damaged fastener sizes” must also not have a standard size (otherwise they could not engage with the damaged fasteners) and thus obviously have a minus-size engagement recess with an inner diameter (Figure 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the set of extraction tools, of Pigford et al., with the known technique of including the additional set of extraction tools having the minus-size engagement recess configured and correlated with respect to various damaged fastener sizes that no longer have a standard size, as taught by Horobec, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that provides an improved set of extraction tools that more effectively remove damaged fasteners, such as nuts, bolts and studs and nuts or fasteners from long threaded studs (paragraph 15).
Furthermore, the Pigford et al. as modified by Horobec do not explicitly disclose that;
the minus-size diameter that is about 0.35 millimeters (mm) to about 0.25 mm less than the standard size diameter of a respective standard size extraction tool.
However, there is no evidence of record that establishes that changing the diameter range of the engagement recess to be about 0.35 millimeters (mm) to about 0.25 mm less than the standard size diameter of a respective standard size extraction tool, would result in a difference in function of the Pigford et al. device. Further, a person having ordinary skill in the art, being faced with modifying the diameter of Pigford et al., would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed diameter range. Lastly, applicant has not disclosed that the claimed range solves any stated problem, indicating that the diameter “may be selected” within the claimed range (see paragraphs 34, 38, 51, 58 and Figure 11), and offering other acceptable ranges (see Figure 11) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the diameter of the engagement recess of Pigford et al. to have a diameter that is about 0.35 millimeters (mm) to about 0.25 mm less than the standard size diameter of a respective standard size extraction tool, as an obvious matter of design choice within the skill of the art.
Allowable Subject Matter
Claims 1-5, 7-10, 12-21 and 23-25 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner's statement of reasons for allowance: The present invention pertains to a set of extraction tools. It is the examiner's opinion that the art of record considered as a whole, alone or in combination, neither anticipates nor renders obvious of providing that; a smallest inner diameter of the first fastener engagement recess within the tapered region is substantially equal to a largest inner diameter of the third fastener engagement recess such that a range of inner diameters of the third fastener engagement recess is continuous from a range of inner diameters of the first fastener engagement recess” (as in claims 1, 23 and 24), together in combination with the rest of the limitations of the independent claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see pages 9-12, filed April 29, 2026, with respect to 1-5, 7-10 and 12-25 have been fully considered and are persuasive. The previous rejection of claims 1-5, 7-10 and 12-25 has been withdrawn.
Applicant’s arguments with respect to claims 1-5, 7-10 and 12-25 have been considered but are moot because the new ground of rejection above does not rely on any reference applied in the prior rejection of record for any teaching or matter as specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Stephanian (1321776) teaches that it is old and well known in the art at the time the invention was made to provide a plurality of extraction tools/socket heads (see figure below) including;
a first extraction tool/socket head (see figure below) having a first fastener engagement recess (see figure below) with first engagement ribs (see figure below), the first fastener engagement recess having a first inner diameter (see figure below);
a second extraction tool (see figure below) of the set having a second fastener engagement recess (see figure below) with second engagement ribs (see figure below), the second fastener engagement recess having a second inner diameter (see figure below) that is less than the first inner diameter (see Figure 2);
a first intermediate extraction tool (see figure below) of the set having a third fastener engagement recess (see figure below) with third engagement ribs (see figure below), the third fastener engagement recess having a third inner diameter that is a next smaller inner diameter to the first inner diameter of the first extraction tool in the set and a next larger inner diameter to the second inner diameter of the second extraction tool in the set (see Figure 2); and
wherein the first fastener engagement recess and the third fastener engagement recess each have a tapered region (i.e. side walls within each engagement recess see page 1, Column 1, Line 20) in which the respective inner diameter tapers includes a smallest inner diameter (i.e. see bold dotted line in Figure below) and a largest inner diameter (i.e. lowermost opening in Figure 2 below).
Stephanian lacks,
a smallest inner diameter of the first fastener engagement recess within the tapered region of the first fastener engagement recess being substantially equal to a largest inner diameter of the third fastener engagement recess such that a range of inner diameters of the third fastener engagement recess is continuous from a range of inner diameters of the first fastener engagement recess.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723
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