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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 30, 2025 has been entered.
Response to Arguments
Applicant's amendments filed on August 4, 2025 did not alleviate all 35 U.S.C. 112 issues and in some cases these amendments introduced new 35 U.S.C. 112 issues, please see below for current rejections.
Claim Objections
Claim 1 is objected to because of the following informalities:
Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
Appropriate correction is required.
Drawings
The drawings were received on July 30, 2025. These drawings are unacceptable.
Figure 11 is not entered because it contains new matter. It is noted that Figure 11 was not previously presented and the subject matter is not found in the specification as originally filed.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 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: “wherein the handle (3) contains an octagonal slot (8) for connection with the octagonal nipple (2), and a spring-ball latch (9) mounted within the octagonal slot (8)…wherein the spring-ball latch (9) is configured to engage a groove (23) formed on the nipple (2) to provide a detachable snap-on connection between the handle (3) and the nipple (2).”
The claim contains subject matter i.e. “a spring-ball latch (9)” 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. Instead, the specification and drawings set forth “a spring-ball (9).” The specification does recite the term “nipple latch” once on page 3, but does not provide any additional information via drawings or further discussion of that element. Therefore, for purpose of examination, the “spring-ball latch” element will be considered a “spring-ball” as is supported by the specification as originally filed.
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 5-6 and 9-11 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 5 recites: “wherein the tip (1) with a cross-sectional diameter of 0.3 cm and 0.4 cm is knurled with rollers with a stroke of 1.2 mm.”
Claim 6 recites: “wherein the tip (1) with a cross-sectional diameter of 0.5 cm, 0.6 cm or 0.7 cm 1s knurled with rollers with a stroke of 1.6 mm.”
Claim 1 already recited “tip having…a diameter ranging from …”
Therefore it is unclear in claims 5 and 6 if the “cross-sectional diameter” is meant to refer to the diameter set forth in claim 1 or if it is meant to introduce something new. For purposes of examination, the “cross-sectional dimeter” is the same as the “diameter.”
It is further noted that claims 4, 8, 9, 10 and 11 recite either “the spring-ball” or “a spring ball.” In accordance with the interpretation that claim 1 as currently claimed “a spring-ball latch” is actually meant to be “a spring-ball” as stated above -claims 4 and 8 are proper reciting “the spring-ball;” however, claims 9-11 are not - claims 9-11 each recites “a spring-ball” should actually be “the spring-ball” and will be examined as such.
Also, with respect to claim 11, “wherein the head includes an octagonal slot oriented transversely to the tool grip axis” – an octagonal slot was already set forth in claim 1 it is not clear if this is an additional slot or meant to refer to the previously recited slot.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Todd et al. (hereafter “Todd”)(US 2018/0104797) in view of Fredenburg et al. (hereafter “Fredenburg”) (US 2005/0252271).
With regards to claim 1, Todd discloses a tool, comprising:
an interchangeable working tip (44) having a round shape, as seen in Figure 1);
a sleeve (32) mounted on the working tip (44);
a nipple (10); and
a replaceable handle (17) detachably connected to the nipple (10);
wherein the handle (17) contains a slot for connection with the nipple (10), as seen in Figure 1, and a spring-ball (17.5) mounted within the slot (16), paragraph 0030,
wherein the sleeve (32) includes a hole (42)with a diameter corresponding to that of the working tip (44) and is clamped onto a base portion, as seen in Figure 1 and paragraph 0029;
wherein the spring-ball (17.5) is configured to engage a groove (16) formed on the nipple (10) to provide a detachable snap-on connection between the handle (17) and the nipple (10).
The following limitation is considered a recitation of intended use: “for repairing dents in a car body using a paintless dent repair (PDR) method.” A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963).
Todd discloses the invention substantially as claimed except for wherein the tip has a diameter ranging from approximately 0.3 cm to 0.7 cm; (claim 5: 0.3 cm -0.4 cm), (claim 6: 0.5 cm, 0.6 cm or 0.7 cm). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed tip diameter, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Todd discloses a hex nipple (hex shaped shaft 14) a handle with a hex slot, as seen in Figure 1. Todd discloses the invention substantially as claimed except for an octagonal nipple and the handle with an octagonal slot. It is considered to be well-known that hand tool connections can have many different shapes including square, hex, octagonal, or star. It would have been obvious for one of ordinary skill in the art to use octagonal shape instead of hex shape, since it would have been obvious to try this technique when choosing from a finite number of identified, predictable solutions for connections, with a reasonable expectation of success. SR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP 2143(I)(E).
Todd discloses the invention substantially as claimed except for wherein the working tip is knurled at a base portion over a length of approximately 1 cm and wherein the working tip, together with the clamped sleeve, is press-fitted into a corresponding hole in the nipple to a depth of approximately 1 cm and is welded to the nipple with a thin weld. Fredenberg is relied upon to teach that its well-known for hand tools can have its elements attached by multiple means as described in paragraph 0077: “Welding" should be interpreted broadly to include similar processes such as soldering, brazing, and glueing. Other attachment methods are anticipated, such as casting, forging, swaging, and various interference press fits including upsets such as knurling and splines.” Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to knurl the tip for connection and weld the nipple to the sleeve since it would have been obvious to try these techniques when choosing from a finite number of identified, predictable solutions for connections, with a reasonable expectation of success. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)]. See MPEP 2143(I)(E).
With additional regards to claims 5 and 6, it is noted that the method is which the elements are knurled (i.e. with rollers with a stroke of 1.2 mm/1.6mm) is considered a product-by-process limitation. As such process limitations do not result in any patentably defining structure and such are not germane to the end result product.
With regards to claims 2-4 and 7, Todd discloses the invention substantially as claimed except for wherein the tip is made of a non-weldable alloy; wherein the sleeve is made of a soft weldable alloy and wherein the spring-ball is made of a steel spring with the force D=M06, L=14 and wherein the tip, sleeve, and nipple are chrome-plated. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the particularly claimed material composition of the elements since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of mechanically efficiency. In re Leshin, 125 USPQ 416.
With additional regards to claim 7, it is noted that the method is which the elements are chrome-plated (i.e. martensitically hardened and then oxidized in a bath chemically) is considered a product-by-process limitation. As such process limitations do not result in any patentably defining structure and such are not germane to the end result product.
With regards to claim 8, Todd discloses wherein the handle (17) is oriented longitudinal longitudinally relative to the working tip (44) and is detachably connected to the nipple (10) by means of the spring-ball (17.5) screwed into the slot being oriented perpendicularly to the axis a guiding of the working tip (44) and screwed into a slot of the handle, as seen in at least Figure 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and further show the state of the art: US Patents 2,903,932 and US 2017/0014883.
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/TERESA M EKIERT/Primary Examiner, Art Unit 3725