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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on May 20, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Status of Claims
This office action is in reply to the Response filed on August 26, 2025. No claims have been amended. No additional claims have been added. No further claims have been cancelled. Claim interpretation previously made under 35 USC 112(f) is maintained. The previous 35 U.S.C. 103 rejections are maintained. Claims 1-23 are currently pending and have been fully examined.
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 1-3, 5-9, 12-20 and 22 are Finally rejected under 35 U.S.C. 103 as being unpatentable over Pigford et al. (6877402).
In reference to claim 1, Pigford et al. disclose a set of extraction tools (i.e. from various sockets 2, see Figure 9 and Column 5, Lines 49-64) configured to turn rounded, stripped, worn, or damaged fasteners (Column 5, Lines 40-43), the set of extraction tools comprising:
a first extraction tool (i.e. lowermost socket 2, as shown in Figure 9) of the set having a first fastener engagement recess (16, Figure 1) with first engagement ribs (22), the first fastener engagement recess having a first inner diameter that is a first integer length in millimeters (Column 5, Lines 60-61) to receive a first standard size of fastener (see Abstract) into the first fastener engagement recess for driving the first standard size of fastener via engagement with the first engagement ribs (Column 4, Lines 23-27);
a second extraction tool (i.e. formed as the third socket 2 located above the lowermost socket, as shown in Figure 9) of the set having a second fastener engagement recess (16, Figure 1) with second engagement ribs (22), the second fastener engagement recess having a second inner diameter that is a second integer length in millimeters (Column 5, Lines 60-61) and one millimeter less than the first integer length (note; the first inner diameter of the first fastener engagement recess can be formed with a size of 5/8in, which correlates to 15.8mm [Column 5, Lines 55-61] and the second inner diameter of the second fastener engagement recess can be formed with a size of 9/16in, which correlates to 14.2mm [Column 5, Lines 55-61] thereby meeting the limitation of being one millimeter less) to receive a second standard size of fastener (see Abstract) into the second fastener engagement recess for driving the second standard size of fastener via engagement with the second engagement ribs (Column 4, Lines 23-27); and
a first intermediate extraction tool (i.e. formed as the second socket 2 located above the lowermost socket, as shown in Figure 9) of the set having a third fastener engagement recess (16, Figure 1) with third engagement ribs (22), 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 (i.e. because second socket 2 has a “next smaller inner diameter” to the lowermost socket 2) and a next larger inner diameter to the second inner diameter of the second extraction tool in the set (i.e. because second socket 2 has a “next smaller larger diameter” to the third socket 2), the third inner diameter to receive, into the third fastener engagement recess, a fastener that has been rounded, stripped, worn down, or damaged (Column 5, Lines 40-43) to where the fastener's size is no longer a standard size (i.e. because a fastener's size can be one that is “rounded off or damaged”, see Column 5, Lines 42-43) for driving the fastener via engagement with the first engagement ribs (Column 4, Lines 23-27), the third inner diameter being smaller than the first inner diameter (i.e. again because second socket 2 has a “next smaller inner diameter” to the lowermost socket 2) having the first integer length in millimeters (Column 5, Lines 60-61).
Pigford et al. lack specifically disclosing that the;
the third inner diameter of the first intermediate extraction tool being smaller than the first inner diameter of the first extraction tool by a difference of about 0.35 millimeters (mm) to about 0.25 mm.
The examiner notes that Pigford et al. disclose that, As will be readily appreciated, the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) thereby providing a teaching of forming the sockets from “various sizes” in order to be used with “a wide range of fasteners” including all sizes that range “from about 1/8-inch to one inch”.
Next, the examiner notes that the applicant fails to provide any criticality in providing that the third inner diameter of the first intermediate extraction tool being smaller than the first inner diameter of the first extraction tool by a difference of about 0.35 millimeters (mm) to about 0.25 mm or that this particular range provides any Unexpected Result and where the general conditions of a claim are disclosed by the prior art discovering the optimum or workable ranges involves only routine optimization and experimentation to one of ordinary skill in the art. In re Aller, 105 USPQ, 233. In this situation, 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 third inner diameter of the first intermediate extraction tool such that it is smaller than the first inner diameter of the first extraction tool by a difference of about 0.35 millimeters (mm) to about 0.25 mm, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” MPEP 2144.04 IV A. In the instant case, Pigford et al. disclose a substantially identical set of extraction tools to that of applicant where the only difference is Pigford et al. do not indicate the specific size of the third inner diameter of the first intermediate extraction tool being smaller than the first inner diameter of the first extraction tool by a difference of about 0.35 millimeters (mm) to about 0.25 mm. Modifying the third inner diameter of the first intermediate extraction tool, of Pigford et al., such that it is smaller than the first inner diameter of the first extraction tool by a difference of about 0.35 millimeters (mm) to about 0.25 mm, is well within the level of skill in the art, again as further evidenced by Pigford et al. teaching that the, “fastener extractor may be machined to various sizes” including all sizes that range “from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) and it appears that the modification would not substantially change the operation of the Pigford et al. device.
Assuming arguendo that Pigford et al. lack;
the second fastener engagement recess having a second inner diameter that is…exactly one millimeter less than the first inner diameter of the first fastener engagement recess.
Again, the examiner notes that Pigford et al. disclose that, As will be readily appreciated, the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) thereby providing a teaching of forming the sockets from “various sizes” in order to be used with “a wide range of fasteners” including all sizes that range “from about 1/8-inch to one inch”.
Thus, 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 second inner diameter of the second extraction tool such that it is exactly one millimeter less than the first inner diameter of the first extraction tool, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” MPEP 2144.04 IV A. In the instant case, Pigford et al. disclose a substantially identical set of extraction tools to that of applicant where the only difference is Pigford et al. do not indicate the specific size of the second inner diameter of the second extraction tool such that it is exactly one millimeter less than the first inner diameter of the first extraction tool. Modifying the second inner diameter of the second extraction tool, of Pigford et al., such that it is exactly one millimeter less than the first inner diameter of the first extraction tool, is well within the level of skill in the art, again as further evidenced by Pigford et al. teaching that the, “fastener extractor may be machined to various sizes” including all sizes that range “from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) and it appears that the modification would not substantially change the operation of the Pigford et al. device.
In reference to claim 2, Pigford et al. disclose that each extraction tool comprises:
a drive end (6, Figure 1) configured to interface with a fastener, and a body portion (body of 6) extending from the drive end about an axis (i.e. longitudinal axis of 2, Figure 1), wherein the drive end comprises a fastener engagement recess (16) extending into the body portion and coaxial with the body portion (Figure 1);
wherein the first inner diameter is at the drive end of the first extraction tool (Figure 1);
wherein the second inner diameter is at the drive end of the second extraction tool (because the second extraction tool is similar to the first extraction tool just at a different size, Figure 1), the first standard size of fastener being sequentially adjacent to the second standard size of fastener for standard sizes of fasteners such that no standard size of fastener is between the first standard size and the second standard size (Figure 9); and
wherein the third inner diameter is at the drive end of the first intermediate extraction tool (again because the first intermediate extraction tool is similar to the first extraction tool just at a different size, Figure 1).
In reference to claim 3, Pigford et al. disclose that for each of the extraction tools, the inner diameter of the fastener engagement recess tapers (at A in Figures 4 or 6) as the fastener engagement recess extends from the drive end into the body portion so that the inner diameter of the fastener engagement recess is smaller within the body portion than the inner diameter of the fastener engagement recess at the drive end of the extraction tool (Column 4, Lines 32-39 and Figures 4 and 6).
In reference to claim 5, Pigford et al. disclose that the first standard size of fastener is a first standard metric size (Column 5, Lines 60-64) and the second standard size of fastener is a second standard metric size adjacent to the first standard metric size (Column 5, Lines 60-64) and because Pigford et al. further disclose that, “The examiner notes that Pigford et al. disclose that, “As will be readily appreciated, the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) thereby providing a teaching of forming the sockets from “various sizes” in order to be used with “a wide range of fasteners” including all sizes that range “from about 1/8-inch to one inch”.
In reference to claim 6, Pigford et al. obviously disclose that the first standard metric size is 8 mm and the second standard metric size is 7 mm because any size could be provided, again see Pigford et al. disclosing that, “As will be readily appreciated, the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) thereby providing a teaching of forming the sockets from “various sizes” in order to be used with “a wide range of fasteners” including all sizes that range “from about 1/8-inch to one inch”.
In reference to claim 7, Pigford et al. obviously disclose that the first fastener engagement recess is sized to interface with a standard Society of Automotive Engineers (SAE) size of fastener (see Column 5, Lines 55-60) and a standard metric size of fastener (Column 5, Lines 60-64), but the second fastener engagement recess is sized to interface only with a standard metric size of fastener, again because any size could be provided, see Pigford et al. disclosing, “As will be readily appreciated, the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) thereby providing a teaching of forming the sockets from “various sizes” in order to be used with “a wide range of fasteners” including all sizes that range “from about 1/8-inch to one inch”.
In reference to claim 8, Pigford et al. disclose that the first engagement ribs and the third engagement ribs taper at a first angle (at A in Figure 4); and wherein the second engagement ribs taper at a second angle (at A in Figure 6) that is different from the first angle (see A in Figure 6 as being larger than in Figure 4.). Also, since the draft angle (A) can be in the range from 1-8 degrees (Column 4, Lines 36-37), one could obviously form the first engagement ribs and the third engagement ribs with a first angle of 1 degree and form the second engagement ribs with a second angle of 2 degrees thereby allowing the kit to “to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55).
In reference to claim 9, Pigford et al. disclose that at least one of the extraction tools is sized to only interface with a standard Society of Automotive Engineers (SAE) size of fastener and at least one of the extraction tools is sized to only interface with a standard metric size of fastener, again because any size could be provided for any of the extraction tools, see Pigford et al. disclosing, “the fastener extractor may be machined to various sizes in order “to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55).
In reference to claim 12, Pigford et al. disclose that the set is configured to interface with fasteners sized between and including ¼ inch (or about 6mm) and 3/4 inch (19 mm, see Column 5,Line 55 disclosing the range of 1/8 inch to 1 inch). In addition, Pigford et al. teach that, “the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55), thus any size of fastener could be used obviously including ¼ inch (or about 6mm) and 3/4 inch.
In reference to claim 13, Pigford et al. disclose that the set comprises twenty-eight different sizes of extraction tools because any amount of extraction tool can be provided (see Column 5, Line 64). In addition, 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 include twenty-eight different sizes of extraction tools, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ. In this situation, one could provide any number of extraction tools, including twenty-eight different sizes of extraction tools, as needed by the user depending on the particular numbers and sizes of fastener being worked on during normal operation.
In reference to claim 14, Pigford et al. disclose that each of the extraction tools comprises a driven end (4) configured to receive drive power from a driving tool (Column 3, Lines 34-36), and wherein the driven end comprises a hexagonal exterior (8) to receive power from a wrench or a drive cavity configured to receive a square drive of a ratchet, impact wrench, or other drive tool (Column 3, Lines 34-36).
In reference to claim 15, Pigford et al. disclose at least four different sized extraction tools (2, see Figure 9), wherein at least two of the extraction tools (uppermost tool 2 and tool 2 located directly below uppermost tool 2 in Figure 9) have a first size of driven end, and wherein at least two of the other extraction tools (lowermost tool 2 and tool 2 located directly above lowermost tool 2 in Figure 9) have a second size of driven end, the second size of driven end being larger than the first size of driven end (Figure 9).
In reference to claim 16, Pigford et al. disclose that wherein the driven end of each of the extraction tools comprises the hexagonal exterior (8, Figure 1),
wherein the set of extraction tools comprise at least eight different sized extraction tools and four different types of extraction tools, because 3-13 extractor tools (2) are disclosed (Column 5, Lines 61-62);
wherein each of the four different types of extraction tools has a different combination of drive cavity size and hexagonal exterior size, because Pigford et al. teach that, “the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55), thus any size of extractors could be provided; and
wherein the at least eight extraction tools is comprised of at least two different sized extraction tools for each of the four types of extraction tools, again because Pigford et al. teach that, “the fastener extractor may be machined to various sizes in order “to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55), thus any size of extractors could be provided.
In reference to claim 17, Pigford et al. disclose that “As will be readily appreciated, the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) thereby providing a teaching of forming the sockets from “various sizes” in order to be used with “a wide range of fasteners”. In addition, the examiner notes that the applicant fails to provide any criticality in providing that the first type of extraction tool comprises a ¼ inch drive cavity and a 5/8 inch (16 mm) hexagonal exterior size, wherein the second type of extraction tool comprises a 3/8 inch drive cavity and a 5/8 inch (16 mm) hexagonal exterior size, wherein the third type of extraction tool comprises a 3/8 inch drive cavity and a 3/4 inch (19 mm) hexagonal exterior size, and wherein the fourth type of extraction tool comprises a 3/8 inch drive cavity and a 7/8 inch (22 mm) hexagonal exterior size or that any of these particular ranges provides any Unexpected Result and where the general conditions of a claim are disclosed by the prior art discovering the optimum or workable ranges involves only routine optimization and experimentation to one of ordinary skill in the art. In re Aller, 105 USPQ, 233. In this situation, 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 first type of extraction tool to comprise a ¼ inch drive cavity and a 5/8 inch (16 mm) hexagonal exterior size, the second type of extraction tool to comprise a 3/8 inch drive cavity and a 5/8 inch (16 mm) hexagonal exterior size, the third type of extraction tool to comprise a 3/8 inch drive cavity and a 3/4 inch (19 mm) hexagonal exterior size, and the fourth type of extraction tool comprises a 3/8 inch drive cavity and a 7/8 inch (22 mm) hexagonal exterior size, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” MPEP 2144.04 IV A. In the instant case, Pigford et al. disclose a substantially identical set of extraction tools to that of applicant where the only difference is Pigford et al. do not indicate the specific sizes of the first, second, third and fourth extraction tools. Modifying the sizes of the first, second, third and fourth extraction tools, of Pigford et al., such that the first type of extraction tool comprises a ¼ inch drive cavity and a 5/8 inch (16 mm) hexagonal exterior size, the second type of extraction tool comprises a 3/8 inch drive cavity and a 5/8 inch (16 mm) hexagonal exterior size, the third type of extraction tool comprises a 3/8 inch drive cavity and a 3/4 inch (19 mm) hexagonal exterior size, and the fourth type of extraction tool comprises a 3/8 inch drive cavity and a 7/8 inch (22 mm) hexagonal exterior size, is well within the level of skill in the art, again as further evidenced by Pigford et al. teaching that the, “fastener extractor may be machined to various sizes” including all sizes that range “from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) and it appears that the modification would not substantially change the operation of the Pigford et al. device.
In reference to claim 18, Pigford et al. disclose that the set is configured to be used for both metric and Society of Automotive Engineers (SAE) sizes of fasteners (Column 5, Lines 55-64).
In reference to claim 19, Pigford et al. disclose that the set comprises at least three sizes selected from the following sizes, including at least one minus size (because the heads of the fasteners can be “rounded off or otherwise damaged” thereby providing fasteners with a smaller size then normal) that is between two standard sizes of fastener: ¼ inch minus, inch, 7 mm minus, 7 mm, 8 mm minus, 8 mm, 3/8 inch minus, 3/8 inch, 10 mm minus, 10 mm, 11 mm minus (7/16 inch minus), 11 mm (7/16 inch), 12 mm minus, 12 mm, 2 inch minus, 13 mm minus (1/2 inch), 13 mm, 14 mm minus, 14 mm (9/16 inch minus), 9/16 inch, 16 mm minus (5/8 inch minus), 16 mm (5/8 inch), 17 mm minus, 17 mm, 11/16 inch minus, 11/16 inch, 19 mm minus (3/4 inch minus), and 19 mm (3/4 inch). In addition, the examiner notes that the applicant fails to provide any criticality in providing that the minus size that is between two standard sizes includes: ¼ inch minus, inch, 7 mm minus, 7 mm, 8 mm minus, 8 mm, 3/8 inch minus, 3/8 inch, 10 mm minus, 10 mm, 11 mm minus (7/16 inch minus), 11 mm (7/16 inch), 12 mm minus, 12 mm, 2 inch minus, 13 mm minus (1/2 inch), 13 mm, 14 mm minus, 14 mm (9/16 inch minus), 9/16 inch, 16 mm minus (5/8 inch minus), 16 mm (5/8 inch), 17 mm minus, 17 mm, 11/16 inch minus, 11/16 inch, 19 mm minus (3/4 inch minus), and 19 mm (3/4 inch) or that any of these particular ranges provides any Unexpected Result and where the general conditions of a claim are disclosed by the prior art discovering the optimum or workable ranges involves only routine optimization and experimentation to one of ordinary skill in the art. In re Aller, 105 USPQ, 233. In this situation, 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 minus size that is between two standard sizes and includes: ¼ inch minus, inch, 7 mm minus, 7 mm, 8 mm minus, 8 mm, 3/8 inch minus, 3/8 inch, 10 mm minus, 10 mm, 11 mm minus (7/16 inch minus), 11 mm (7/16 inch), 12 mm minus, 12 mm, 2 inch minus, 13 mm minus (1/2 inch), 13 mm, 14 mm minus, 14 mm (9/16 inch minus), 9/16 inch, 16 mm minus (5/8 inch minus), 16 mm (5/8 inch), 17 mm minus, 17 mm, 11/16 inch minus, 11/16 inch, 19 mm minus (3/4 inch minus), and 19 mm (3/4 inch), since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” MPEP 2144.04 IV A. In the instant case, Pigford et al. disclose a substantially identical set of extraction tools to that of applicant where the only difference is Pigford et al. do not indicate the specific sizes of the “rounded off or otherwise damaged” fasteners. Modifying the sizes of the “rounded off or otherwise damaged” fasteners, of Pigford et al., such that the minus size that is between two standard sizes and includes: ¼ inch minus, inch, 7 mm minus, 7 mm, 8 mm minus, 8 mm, 3/8 inch minus, 3/8 inch, 10 mm minus, 10 mm, 11 mm minus (7/16 inch minus), 11 mm (7/16 inch), 12 mm minus, 12 mm, 2 inch minus, 13 mm minus (1/2 inch), 13 mm, 14 mm minus, 14 mm (9/16 inch minus), 9/16 inch, 16 mm minus (5/8 inch minus), 16 mm (5/8 inch), 17 mm minus, 17 mm, 11/16 inch minus, 11/16 inch, 19 mm minus (3/4 inch minus), and 19 mm (3/4 inch), is well within the level of skill in the art, as further evidenced by Pigford et al. teaching that the “fastener extractor may be machined to various sizes” (see Column 5, Lines 46-48) and it appears that the modification would not substantially change the operation of the Pigford et al. device.
In reference to claim 20, Pigford et al. disclose that, “As will be readily appreciated, the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) thereby providing a teaching of forming the sockets from “various sizes” in order to be used with “a wide range of fasteners” that obviously include the following sizes of extraction tools: ¼ inch minus, inch, 7 mm minus, 7 mm, 8 mm minus, 8 mm, 3/8 inch minus, 3/8 inch, 10 mm minus, 10 mm, 11 mm minus (7/16 inch minus), 11 mm (7/16 inch), 12 mm minus, 12 mm, 2 inch minus, 13 mm minus (1/2 inch), 13 mm, 14 mm minus, 14 mm (9/16 inch minus), 9/16 inch, 16 mm minus (5/8 inch minus), 16 mm (5/8 inch), 17 mm minus, 17 mm, 11/16 inch minus, 11/16 inch, 19 mm minus (3/4 inch minus), and 19 mm (3/4 inch). In addition, the examiner notes that the applicant fails to provide any criticality in providing the following sizes of extraction tools: ¼ inch minus, inch, 7 mm minus, 7 mm, 8 mm minus, 8 mm, 3/8 inch minus, 3/8 inch, 10 mm minus, 10 mm, 11 mm minus (7/16 inch minus), 11 mm (7/16 inch), 12 mm minus, 12 mm, 2 inch minus, 13 mm minus (1/2 inch), 13 mm, 14 mm minus, 14 mm (9/16 inch minus), 9/16 inch, 16 mm minus (5/8 inch minus), 16 mm (5/8 inch), 17 mm minus, 17 mm, 11/16 inch minus, 11/16 inch, 19 mm minus (3/4 inch minus), and 19 mm (3/4 inch) or that any of these particular ranges provides any Unexpected Result and where the general conditions of a claim are disclosed by the prior art discovering the optimum or workable ranges involves only routine optimization and experimentation to one of ordinary skill in the art. In re Aller, 105 USPQ, 233. In this situation, 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 sizes of extraction tools to include: ¼ inch minus, inch, 7 mm minus, 7 mm, 8 mm minus, 8 mm, 3/8 inch minus, 3/8 inch, 10 mm minus, 10 mm, 11 mm minus (7/16 inch minus), 11 mm (7/16 inch), 12 mm minus, 12 mm, 2 inch minus, 13 mm minus (1/2 inch), 13 mm, 14 mm minus, 14 mm (9/16 inch minus), 9/16 inch, 16 mm minus (5/8 inch minus), 16 mm (5/8 inch), 17 mm minus, 17 mm, 11/16 inch minus, 11/16 inch, 19 mm minus (3/4 inch minus), and 19 mm (3/4 inch), since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” MPEP 2144.04 IV A. In the instant case, Pigford et al. disclose a substantially identical set of extraction tools to that of applicant where the only difference is Pigford et al. do not indicate the specific sizes of the extraction tools. Modifying the sizes of the extraction tools, of Pigford et al., such that the sizes of extraction tools include: ¼ inch minus, inch, 7 mm minus, 7 mm, 8 mm minus, 8 mm, 3/8 inch minus, 3/8 inch, 10 mm minus, 10 mm, 11 mm minus (7/16 inch minus), 11 mm (7/16 inch), 12 mm minus, 12 mm, 2 inch minus, 13 mm minus (1/2 inch), 13 mm, 14 mm minus, 14 mm (9/16 inch minus), 9/16 inch, 16 mm minus (5/8 inch minus), 16 mm (5/8 inch), 17 mm minus, 17 mm, 11/16 inch minus, 11/16 inch, 19 mm minus (3/4 inch minus), and 19 mm (3/4 inch), is well within the level of skill in the art, as further evidenced by Pigford et al. teaching that the “fastener extractor may be machined to various sizes” (see Column 5, Lines 46-48) and it appears that the modification would not substantially change the operation of the Pigford et al. device.
In reference to claim 22, Pigford et al. disclose a set of extraction tools (see figure below and Column 5, Lines 49-64) configured to turn rounded, stripped, worn, or damaged fasteners (Column 5, Lines 40-43), the set of extraction tools comprising:
wherein each standard size extraction tool within the plurality of standard sized extraction tools has a standard size engagement recess (16) with a standard size diameter because Pigford et al. disclose that “As will be readily appreciated, the fastener extractor may be machined to various sizes in order “to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) thereby providing a teaching of forming the sockets from “various sizes” in order to be used with “a wide range of fasteners”; and
a plurality of minus-size extraction tools (see figure below), 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 (16, Figure 1).
[AltContent: arrow][AltContent: textbox (minus-size extraction tools)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (standard size extraction tools)]
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Pigford et al. lack specifically disclosing that the;
minus-size diameter is about 0.35 millimeters (mm) to about 0.25 mm less than the standard size diameter of a respective standard size extraction tool.
The examiner notes that Pigford et al. disclose that “As will be readily appreciated, the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) thereby providing a teaching of forming the sockets from “various sizes” in order to be used with “a wide range of fasteners”.
Next, the examiner notes that the applicant fails to provide any criticality in providing that the minus-size diameter is about 0.35 millimeters (mm) to about 0.25 mm less than the standard size diameter of a respective standard size extraction tool or that this particular range provides any Unexpected Result and where the general conditions of a claim are disclosed by the prior art discovering the optimum or workable ranges involves only routine optimization and experimentation to one of ordinary skill in the art. In re Aller, 105 USPQ, 233. In this situation, 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 minus-size diameter is about 0.35 millimeters (mm) to about 0.25 mm less than the standard size diameter of a respective standard size extraction tool, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” MPEP 2144.04 IV A. In the instant case, Pigford et al. disclose a substantially identical set of extraction tools to that of applicant where the only difference is Pigford et al. do not indicate the specific size of the minus-size diameter is about 0.35 millimeters (mm) to about 0.25 mm less than the standard size diameter of a respective standard size extraction tool. Modifying the smaller diameters of the plurality of minus-size extraction tools, of Pigford et al., such that the minus-size diameter is about 0.35 millimeters (mm) to about 0.25 mm less than the standard size diameter of a respective standard size extraction tool, is well within the level of skill in the art, again as further evidenced by Pigford et al. teaching that the, “fastener extractor may be machined to various sizes” including all sizes that range “from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) and it appears that the modification would not substantially change the operation of the Pigford et al. device.
Claims 1-3, 5-9, 12-20 and 22 are Also Finally rejected under 35 U.S.C. 103 as being unpatentable over Pigford et al. (6877402) in view of Ruzicka et al. (5219392).
In further reference to claim 1, Pigford et al. disclose a set of extraction tools (i.e. from various sockets 2, see Figure 9 and Column 5, Lines 49-64) configured to turn rounded, stripped, worn, or damaged fasteners (Column 5, Lines 40-43), the set of extraction tools comprising:
a first extraction tool (i.e. lowermost socket 2, as shown in Figure 9) of the set having a first fastener engagement recess (16, Figure 1) with first engagement ribs (22), the first fastener engagement recess having a first inner diameter that is a first integer length in millimeters (Column 5, Lines 60-61) to receive a first standard size of fastener (see Abstract) into the first fastener engagement recess for driving the first standard size of fastener via engagement with the first engagement ribs (Column 4, Lines 23-27);
a second extraction tool (i.e. formed as the third socket 2 located above the lowermost socket, as shown in Figure 9) of the set having a second fastener engagement recess (16, Figure 1) with second engagement ribs (22), the second fastener engagement recess having a second inner diameter that is a second integer length in millimeters (Column 5, Lines 60-61) and one millimeter less than the first integer length (note; the first inner diameter of the first fastener engagement recess can be formed with a size of 5/8in, which correlates to 15.8mm [Column 5, Lines 55-61] and the second inner diameter of the second fastener engagement recess can be formed with a size of 9/16in, which correlates to 14.2mm [Column 5, Lines 55-61] thereby meeting the limitation of being one millimeter less) to receive a second standard size of fastener (see Abstract) into the second fastener engagement recess for driving the second standard size of fastener via engagement with the second engagement ribs (Column 4, Lines 23-27); and
a first intermediate extraction tool (i.e. formed as the second socket 2 located above the lowermost socket, as shown in Figure 9) of the set having a third fastener engagement recess (16, Figure 1) with third engagement ribs (22), 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 (i.e. because second socket 2 has a “next smaller inner diameter” to the lowermost socket 2) and a next larger inner diameter to the second inner diameter of the second extraction tool in the set (i.e. because second socket 2 has a “next smaller larger diameter” to the third socket 2), the third inner diameter to receive, into the third fastener engagement recess, a fastener that has been rounded, stripped, worn down, or damaged (Column 5, Lines 40-43) to where the fastener's size is no longer a standard size (i.e. because a fastener's size can be one that is “rounded off or damaged”, see Column 5, Lines 42-43) for driving the fastener via engagement with the first engagement ribs (Column 4, Lines 23-27), the third inner diameter being smaller than the first inner diameter (i.e. again because second socket 2 has a “next smaller inner diameter” to the lowermost socket 2) having the first integer length in millimeters (Column 5, Lines 60-61).
Pigford et al. lack specifically disclosing that the;
the second fastener engagement recess having a second inner diameter that is…exactly one millimeter less than the first inner diameter of the first fastener engagement recess; and
the third inner diameter of the first intermediate extraction tool being smaller than the first inner diameter of the first extraction tool by a difference of about 0.35 millimeters (mm) to about 0.25 mm.
The examiner notes that Pigford et al. disclose that, As will be readily appreciated, the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55) thereby providing a teaching of forming the sockets from “various sizes” in order to be used with “a wide range of fasteners” including all sizes that range “from about 1/8-inch to one inch”.
In addition, Ruzicka et al. teach that it is old and well known in the art at the time the invention was made to provide a wrench having a socket (see Figure 3 showing the socket at 17 and see Figure 5 showing the socket at 20, Column 12, Lines 56-65. Note, sockets 17 and 20 are similar to the socket/extractor, of Pigford et al., because both have internal surfaces used for engaging with a fastener) that “will fully and adequately engage the polygonal head of a threaded fastener” (Column 6, Lines 39-44).
Ruzicka et al. also provide Table 1 that shows various known sizes of fasteners. Again, the sockets, as taught by Ruzicka et al., “will fully and adequately engage” with the fasteners. An example of one size of fastener is shown as being 3mm and another example of a fastener size is shown as being 4mm (see Column 7).
Since, Pigford et al. disclose a kit (Column 5, Lines 49-50) including extractors of various sizes (see “the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55), the second extractor (i.e. formed as the third socket 2 located above the lowermost socket, as shown in Figure 9), of Pigford et al. can be formed with any size including one that is 3mm and the first extraction tool (i.e. lowermost socket 2, as shown in Figure 9), of Pigford et al., can be formed with any size including one that is 4mm thereby providing a second extraction tool having a second inner diameter of the second recess that is…exactly one millimeter less than the first inner diameter of the first fastener engagement recess of the first extraction tool.
Thus, 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 sizes of the first and second extraction tools, of Pigford et al., with the known technique of providing the second fastener engagement recess having a second inner diameter that is…exactly one millimeter less than the first inner diameter of the first fastener engagement recess, as taught by Ruzicka et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that will fully and adequately engage the polygonal head of a threaded fastener (Column 6, Lines 39-44).
Next, in Table 1, Ruzicka et al., it shows various known sizes of fasteners. Again, the sockets, as taught by Ruzicka et al., “will fully and adequately engage” with the fasteners. An example of one size of fastener is shown as being 3mm, which could be the size of the first inner diameter of the first extraction tool, of Pigford et al. Another example of a size of fastener is shown as being 3.2mm, which could be the size of the third inner diameter of the first intermediate extraction tool, thereby providing a difference of 0.2mm. A further example of one size of fastener is shown as being 3.2mm, which could be the size of the first inner diameter of the first extraction tool, of Pigford et al. And, another example of a size of fastener is shown as being 3.5mm, which could be the size of the third inner diameter of the first intermediate extraction tool, thereby providing a difference of 0.3mm. Thus, this teaching provides a difference between the third inner diameter of the first intermediate extraction tool being smaller than the first inner diameter of the first extraction tool by a difference of about 0.3 millimeters (mm) to about 0.2mm thereby meeting almost the entire range as claimed by the applicant (note there is a 0.05mm different between the entire range and the sizes shown by Ruzicka et al.
Thus, 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 size of the first intermediate extraction tool, of Pigford et al., such that is smaller than the first inner diameter of the first extraction tool by a difference of about 0.3 millimeters (mm) to about 0.25 mm, as taught by Ruzicka et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that will fully and adequately engage the polygonal head of a threaded fastener (Column 6, Lines 39-44).
Finally, the examiner notes that the applicant fails to provide any criticality in providing that the third inner diameter of the first intermediate extraction tool being smaller than the first inner diameter of the first extraction tool by a difference of about 0.35 millimeters (again Ruzicka et al. teach a difference ranging from 0.2mm-0.3mm) or that this particular range provides any Unexpected Result and where the general conditions of a claim are disclosed by the prior art discovering the optimum or workable ranges involves only routine optimization and experimentation to one of ordinary skill in the art. In re Aller, 105 USPQ, 233. In this situation, 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 third inner diameter of the first intermediate extraction tool being smaller than the first inner diameter of the first extraction tool by a difference of about 0.35 millimeters, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” MPEP 2144.04 IV A. In the instant case, Pigford et al. disclose a substantially identical set of extraction tools to that of applicant where the only difference is Pigford et al. do not indicate the specific size of the third inner diameter of the first intermediate extraction tool being smaller than the first inner diameter of the first extraction tool by a difference of about 0.35 millimeters. Modifying the third inner diameter of the first intermediate extraction tool, of Pigford et al., such that it is smaller than the first inner diameter of the first extraction tool by a difference of about 0.35 millimeters, is well within the level of skill in the art, as further evidenced by Pigford et al. teaching that the “fastener extractor may be machined to various sizes” (see Column 5, Lines 46-48) and it appears that the modification would not substantially change the operation of the Pigford et al. device.
In reference to claim 2, Pigford et al. disclose that each extraction tool comprises:
a drive end (6, Figure 1) configured to interface with a fastener, and a body portion (body of 6) extending from the drive end about an axis (i.e. longitudinal axis of 2, Figure 1), wherein the drive end comprises a fastener engagement recess (16) extending into the body portion and coaxial with the body portion (Figure 1);
wherein the first inner diameter is at the drive end of the first extraction tool (Figure 1);
wherein the second inner diameter is at the drive end of the second extraction tool (because the second extraction tool is similar to the first extraction tool just at a different size, Figure 1), the first standard size of fastener being sequentially adjacent to the second standard size of fastener for standard sizes of fasteners such that no standard size of fastener is between the first standard size and the second standard size (Figure 9); and
wherein the third inner diameter is at the drive end of the first intermediate extraction tool (again because the first intermediate extraction tool is similar to the first extraction tool just at a different size, Figure 1).
In reference to claim 3, Pigford et al. disclose that for each of the extraction tools, the inner diameter of the fastener engagement recess tapers (at A in Figures 4 or 6) as the fastener engagement recess extends from the drive end into the body portion so that the inner diameter of the fastener engagement recess is smaller within the body portion than the inner diameter of the fastener engagement recess at the drive end of the extraction tool (Column 4, Lines 32-39 and Figures 4 and 6).
In reference to claim 5, Pigford et al. disclose that the first standard size of fastener is a first standard metric size (Column 5, Lines 60-64) and the second standard size of fastener is a second standard metric size adjacent to the first standard metric size (Column 5, Lines 60-64) and because Pigford et al. further disclose that “the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55).
In reference to claim 6, Pigford et al. obviously disclose that the first standard metric size is 8 mm and the second standard metric size is 7 mm because any size could be provided, again see Pigford et al. disclosing, “the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55).
In reference to claim 7, Pigford et al. obviously disclose that the first fastener engagement recess is sized to interface with a standard Society of Automotive Engineers (SAE) size of fastener (see Column 5, Lines 55-60) and a standard metric size of fastener (Column 5, Lines 60-64), but the second fastener engagement recess is sized to interface only with a standard metric size of fastener, again because any size could be provided, see Pigford et al. disclosing, “the fastener extractor may be machined to various sizes in order to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55).
In reference to claim 8, Pigford et al. disclose that the first engagement ribs and the third engagement ribs taper at a first angle (at A in Figure 4); and wherein the second engagement ribs taper at a second angle (at A in Figure 6) that is different from the first angle (see A in Figure 6 as being larger than in Figure 4.). Also, since the draft angle (A) can be in the range from 1-8 degrees (Column 4, Lines 36-37), one could obviously form the first engagement ribs and the third engagement ribs with a first angle of 1 degree and form the second engagement ribs with a second angle of 2 degrees thereby allowing the kit to “to be used with a wide range of fasteners”…[and] “that range size from about 1/8-inch to one inch” (see Column 5, Lines 46-48 and Lines 54-55).
In reference to claim 9, Pigford et al. disclose that at least one of the extraction tools is sized to only interface with a standard Society of Automotive Engineers (SAE) size of fastener and at least on