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 .
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.
Claim 73 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.
Regarding claim 73, “the compression surfaces” lack antecedent basis and it is unclear what it is referring to.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-5, 9, 11, 70-73 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US 2017/0027658 to Black et al. (Black).
Regarding claim 1, Black discloses a disposable cover system (Fig 1) for a power tool, the system comprising a cover (11) comprising a sterile outside surface, the cover defining an inner cavity, an opening (14) through which the power tool (12) is insertable into the inner cavity, an aperture (Fig 3, €0041) through which a pass-through (20) to transmit movement generated by the power tool from inside the inner cavity to outside the cover is extendable, a closing mechanism (16) to close the opening, a compressible gasket (22) surrounding the aperture and extending radially from the aperture along the cover (11), the compressible gasket (22) configured for compression in an axial direction between compression surfaces at opposite side of the cover such that portions of the gasket are configured to extend axially into the aperture to form a compression seal around the aperture (€0043, €0079). In particular, the gasket (22) forms a compression seal around the aperture when sealed to the cover and can be compressed by compression surfaces at opposite sides of the cover since it has the structure as recited. Note that statements of intended use are given little patentable weight.
Regarding claim 2, Black further discloses the compressible gasket (22) attached to the cover (11).
Regarding claim 4, Black further discloses the compressible gasket (22) comprising a sterile compressible gasket disposed on the sterile outside surface of the cover (11) (Fig 4, €0067-0068).
Regarding claim 5, Black further discloses a further compressible gasket (24) disposed on inside surface of the cover (11) inside the inner cavity surrounding the aperture (Fig 4).
Regarding claim 9, Black further discloses closing mechanism (16) attached to the cover (10).
Regarding claim 11, Black further discloses closing mechanism (16) arranged to permanently close the opening since it has the structure as recited.
Regarding claim 70-72, Black further discloses the cover system of claim 1 capable of functioning with the recited compression surfaces since it has the structure as recited.
Regarding claim 73, Black further discloses the gasket configured to extend in length when compressed such that a portion of the gasket is configured to extend beyond the compression surfaces since it has the structure as recited and depending on the dimensions of the surfaces being used.
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Black in view of US Patent No. 6,716,215 to David et al. (David).
Regarding claim 7, the modified Black teaches the system of claim 1 and Black further teaches compressible gasket (22) further extending radially from the aperture along the sterile outside surface of the cover (11) (Fig 4).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Black in view of US 2018/0200014 to Bonny et al. (Bonny).
Regarding claim 14, Black teaches the cover system of claim 1 but does not teach a cover fitting mechanism. However, Bonny discloses a cover system (Fig 1) and in particular discloses cover fitting mechanism (54) operable to fit a portion of the cover to a shape of a power tool, wherein the cover fitting mechanism (54) is attached to the cover (22) or cover comprises the cover fitting mechanism (54). One of ordinary skill in the art would have found it obvious to incorporate a cover fitting mechanism to Black as suggested by Bonny in order to facilitate covering of the tool.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Black in view of Bonny and US 2019/0099232 to Soto et al. (Soto).
Regarding claim 17, the modified Black teaches the cover system of claim 14 but does not teach the cover fitting mechanism comprising a strap. However, Soto discloses a cover system (Fig 6) and in particular discloses a cover fitting mechanism comprising a strap (56), the strap comprising a detachable end operable to be detached from the cover, wrapped around the portion of the cover and reattached to the cover to fit the portion of the cover to the shape of the power tool (Fig 6). One of ordinary skill in the art would have found it obvious to substitute the cover fitting mechanism of the modified Black with a functionally equivalent cover fitting mechanism comprising a strap as suggested by Soto in order to fit the cover onto the tool since it has been held that simple substitution of one known element for another would have been obvious. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA 1982).
Claim(s) 25-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Black in view of US 2017/0000361 to Meyering et al. (Meyering).
Regarding claims 25-27, Black discloses the cover system of claim 1 but does not teach a one-way air valve on the cover. However, Meyering discloses a cover (160, Fig 3b) and in particular discloses the cover comprising a one-way air valve with a filter (168, €0035). One of ordinary skill in the art would have found it obvious to incorporate a valve and filter to the Black cover as suggested by Meyering in order to enable flow of air between the inside and outside of the cover (Meyering, €0035).
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive. Initially, it is noted that applicant does not argue the rejection of the dependent claims. Applicant argues that the claims are amended as discussed in the examiner interview held 12/22/2025. This is not persuasive because examiner suggested positively reciting that portions of the gasket extend axially into the aperture rather than the gasket configured to extending axially into the aperture because so long as prior art has the structure as recited, then it would be capable of performing the recited function.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT POON whose telephone number is (571)270-7425. The examiner can normally be reached Monday thru Friday, 8:30 am to 6:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571)272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT POON/Examiner, Art Unit 3735
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