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 § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Marini et, al. US 8641049.
Regarding claim 1, Marini discloses a mandrel assembly, comprising: a collar (Marini; 30; fig 2) including a collar first end (Marini; 32; fig 2), a collar second end (Marini; end of 30 opposite 32; fig 2) that is opposite the first end, and a sidewall (Marini; 36; fig 2) that extends between the collar first end and the collar second end, the sidewall including an inner surface that defines a bore (Marini; 34; fig 2), the bore opening at the collar first end and the collar second end, the bore having a step change in diameter that defines a shoulder (Marini; Illustrated on fig 4), a mandrel disposed in the bore (Marini; 16; fig 2), the mandrel including a mandrel first end that protrudes from the collar first end (Marini; end of 16 opposite 12; fig 2), the mandrel first end having a mandrel clamping element (Marini; 18; fig 2), a mandrel second end that is opposite the mandrel first end (Marini; 12; fig 2), the mandrel second end protruding from the collar second end, a longitudinal axis that extends through the mandrel first end and the mandrel second end, a retention washer fixed to the mandrel (Marini; 80; fig 2) and a spring that surrounds the mandrel (Marini; 78; fig 2), the spring extending between the retention washer and the shoulder, a slot (Marini; 48; fig 2; column 4, line 48) that is spaced apart from the collar first end and the collar second end; and a pin (Marini; 52; fig 2; column 4, line 50) being disposed between the mandrel first end and the mandrel second end, the pin protruding from the mandrel in a direction perpendicular to the longitudinal axis and extending into the slot (Marini; 52 clearly seen extending into slot; fig 1; column 4, line 56); a retention washer (Marini; 80; fig 2; column 5, line 26) is fixed to the mandrel between the pin and the mandrel second end; wherein the slot is configured to permit the mandrel to move relative to the collar in both rotation about the longitudinal axis and translation along the longitudinal axis. (Marini; column 6, lines 4-16)
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.
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.
Claim(s) 1 and 13-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dirnberger et, al. CA 2536128 and Marini et, al. US 8641049.
Regarding claim 1, Dirnberger discloses a mandrel assembly, comprising: a collar (Dirnberger; 16; fig 3; section [0031]) including a collar first end (Dirnberger; A on annotated figure below; 16; fig 3; section [0031]), a collar second end (Dirnberger; B on annotated figure below; 16; fig 3; section [0031]) that is opposite the first end, and a sidewall (Dirnberger; 32; fig 3; section [0034]) that extends between the collar first end and the collar second end, the sidewall including an inner surface that defines a bore (Dirnberger; 34; fig 6; section [0034]), the bore opening at the collar first end and the collar second end, the bore having a step change in diameter that defines a shoulder (Dirnberger; 30; fig 3; section [0034]), a mandrel disposed in the bore (Dirnberger; 14; fig 6; section [0034]), the mandrel including a mandrel first end that protrudes from the collar first end (Dirnberger; 21; fig 3; section [0033]), the mandrel first end having a mandrel clamping element (Dirnberger; 24 and 26; fig 3; section [0032]), a mandrel second end that is opposite the mandrel first end (Dirnberger; 22; fig 3; section [0033]), the mandrel second end protruding from the collar second end, a longitudinal axis that extends through the mandrel first end and the mandrel second end, a retention washer fixed to the mandrel (Dirnberger; 48; fig 3; section [0037]) and a spring that surrounds the mandrel (Dirnberger; 46; fig 3; section [0037]), the spring extending between the retention washer and the shoulder.
Dirnberger does not explicitly disclose the sidewall including a slot that is spaced apart from the collar first end and the collar second end; and a pin being disposed between the mandrel first end and the mandrel second end, the pin protruding from the mandrel in a direction perpendicular to the longitudinal axis and extending into the slot; a retention washer being fixed to the mandrel between the pin and the mandrel second end; wherein the slot is configured to permit the mandrel to move relative to the collar in both rotation about the longitudinal axis and translation along the longitudinal axis.
Marini teaches a mandrel assembly (Marini; 10; fig 2; column 4, line 15) and a collar (Marini; 30; fig 2; column 4, line 32) with a first end (Marini; 32; fig 2; column 4, line 34) and a second end (Marini; end of 30 opposite first end surface 32; fig 2; column 4, line 32-35) with a sidewall (Marini; outside surface of 30; fig 2; column 4, line 32) including a slot (Marini; 48; fig 2; column 4, line 48) that is spaced apart from the collar first end and the collar second end; and a pin (Marini; 52; fig 2; column 4, line 50) being disposed between the mandrel first end and the mandrel second end, the pin protruding from the mandrel in a direction perpendicular to the longitudinal axis and extending into the slot (Marini; 52 clearly seen extending into slot; fig 1; column 4, line 56); a retention washer (Marini; 80; fig 2; column 5, line 26) is fixed to the mandrel between the pin and the mandrel second end; wherein the slot is configured to permit the mandrel to move relative to the collar in both rotation about the longitudinal axis and translation along the longitudinal axis. (Marini; column 6, lines 4-16)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the sleeve and mandrel configuration of Dirnberger to configuration present in Marini, as Marini states “although plunger rods or structure may be utilized which are other than the circular cross-section.” The plunger rod of Dirnberger being suitably cylindrical.
Regarding claim 13, Dirnberger, in combination with Marini, discloses the mandrel assembly of claim 1.
Marini teaches a slot extending through a thickness of the sidewall. (Marini; slot 48; fig 2; column 4, lines 55-58)
Regarding claim 14, Dirnberger, in combination with Marini, discloses the mandrel assembly of claim 1, wherein the mandrel clamping element comprises a plate that extends in a plane that is perpendicular to the longitudinal axis (Dirnberger; first end of shaft 14; figs 4A-4D; section [0040]), the plate having an irregular profile that defines a central hub (Dirnberger; center portion of first end of shaft 14; figs 4A-4D; section [0040]) and pair of arms that protrude from opposite sides of the hub (Dirnberger; 24 and 26 of shaft 14; figs 4A-4D; section [0040]).
Regarding claim 15, Dirnberger discloses a mandrel assembly, comprising: a collar (Dirnberger; 16; fig 3; section [0031]) including a collar first end (Dirnberger; A on annotated figure below; 16; fig 3; section [0031]), a collar second end (Dirnberger; B on annotated figure below; 16; fig 3; section [0031]) that is opposite the first end, and a sidewall (Dirnberger; 32; fig 3; section [0034]) that extends between the collar first end and the collar second end, the sidewall including an inner surface that defines a bore (Dirnberger; 34; fig 6; section [0034]), the bore opening at the collar first end and the collar second end, the bore having a step change in diameter that defines a shoulder (Dirnberger; 30; fig 3; section [0034]), a mandrel disposed in the bore (Dirnberger; 14; fig 6; section [0034]), the mandrel including a mandrel first end that protrudes from the collar first end (Dirnberger; 21; fig 3; section [0033]), the mandrel first end having a mandrel clamping element (Dirnberger; 24 and 26; fig 3; section [0032]), a mandrel second end that is opposite the mandrel first end (Dirnberger; 22; fig 3; section [0033]), the mandrel second end protruding from the collar second end, a longitudinal axis that extends through the mandrel first end and the mandrel second end, a retention washer fixed to the mandrel (Dirnberger; 48; fig 3; section [0037]) and a spring that surrounds the mandrel (Dirnberger; 46; fig 3; section [0037]), the spring extending between the retention washer and the shoulder, wherein the collar first end includes a collar end surface (Dirnberger; top of 30; fig 3; section [0034]), posts that protrude from the collar end surface in a direction parallel to the longitudinal axis (Dirnberger; 36 and 38; figs 4A-4D; section [0038]), each post having a post end face (Dirnberger; tops of 36 and 38; figs 4A-4D; section [0038]), and lands corresponding to portions of the collar end surface disposed between the posts (Dirnberger; areas to the sides of 36 and 38; fig 8 has clearest representation of it; section [0038]), the mandrel is configured to move relative to the collar between an insertion position in which the mandrel clamping element is aligned with and abutting the end faces of the posts, and a clamping position in which the mandrel clamping element is aligned with the lands and the lands are urged toward the clamping element via the spring. (Dirnberger; 24 and 26 on mandrel and 36 and 38 on sleeve; figs 4A-4D; section [0038])
Dirnberger does not explicitly disclose the sidewall including a slot that is spaced apart from the collar first end and the collar second end; and a pin being disposed between the mandrel first end and the mandrel second end, the pin protruding from the mandrel in a direction perpendicular to the longitudinal axis and extending into the slot; a retention washer being fixed to the mandrel between the pin and the mandrel second end; wherein the slot is configured to permit the mandrel to move relative to the collar in both rotation about the longitudinal axis and translation along the longitudinal axis.
Marini teaches a mandrel assembly (Marini; 10; fig 2; column 4, line 15) and a collar (Marini; 30; fig 2; column 4, line 32) with a first end (Marini; 32; fig 2; column 4, line 34) and a second end (Marini; end of 30 opposite first end surface 32; fig 2; column 4, line 32-35), a slot (Marini; slot 48 configured to allow 90° of movement; fig 2; column 6, lines 4-16) being configured to permit the mandrel to move relative to the collar.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the sleeve and mandrel configuration of Dirnberger to configuration present in Marini, as Marini states “although plunger rods or structure may be utilized which are other than the circular cross-section.” The plunger rod of Dirnberger being suitably cylindrical.
Regarding claim 16, Dirnberger, in combination with Marini, discloses the mandrel assembly of claim 15, and an accessory configured to be connected to the mandrel assembly (Dirnberger; 18/19; figs 4A-4D; section [0039]), the accessory including a body having a central opening (Dirnberger; 56; figs 4A-4D; section [0039]), wherein the central opening has a profile, and at least a portion of the profile has a shape and dimensions that correspond to the shape (Dirnberger; 58 and 59; figs 4A-4D; section [0039]), dimensions and spacing of the posts such that the collar first end can be inserted into the central opening in a tolerance fit (Dirnberger; 24 and 26 of 14 into 58 and 59 of 18; figs 4A-4D; section [0039]).
Regarding claim 17, Dirnberger, in combination with Marini, discloses the mandrel assembly of claim 15, and an accessory configured to be connected to the mandrel assembly, wherein a portion of the accessory is clamped between the lands and the mandrel clamping element. (Dirnberger; 36 and 38 of 16/30 into 58 and 59 of 18; figs 4A-4D; section [0040])
Regarding claim 18, Dirnberger, in combination with Marini, discloses the mandrel assembly of claim 15, and an accessory (Dirnberger; 18; figs 4A-4D; section [0040]) configured to be connected to the mandrel assembly, wherein the mandrel clamping element comprises a plate that extends in a plane that is perpendicular to the longitudinal axis (Dirnberger; first end of shaft 14; figs 4A-4D; section [0040]), the plate having an irregular profile that defines a central hub (Dirnberger; center portion of first end of shaft 14; figs 4A-4D; section [0040]) and arms from opposite sides of the hub (Dirnberger; 24 and 26 of shaft 14; figs 4A-4D; section [0040]), and a portion of the accessory is clamped between the lands of the collar and the arms of the mandrel clamping element. (Dirnberger; 24 and 26 of shaft 14 and 36 and 38 of collar 16/30 into openings 58 and 59 of accessory 18; figs 4A-4D; section [0041])
Claim(s) 4-6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dirnberger et, al. CA 2536128 and Marini et, al. US 8641049 as applied to claim 1 above, and further in view of Harris et. al. DE 102020216563.
Regarding claims 4-6, Dirnberger, in combination with Marini, discloses the mandrel assembly of claim 1 wherein the collar first end includes a collar end surface (Dirnberger; top of 16; fig 3; section [0031]), posts that protrude from the collar end surface in a direction parallel to the longitudinal axis (Dirnberger; 36 and 38; figs 4A-4D; section [0038]), each post having a post end face, and lands that correspond to portions of the collar end surface that are disposed between the posts (Dirnberger; areas to the sides of 36 and 38 on the top of the collar; fig 3; section [0038]) in the first position the mandrel clamping element is aligned with the posts (Dirnberger; 24 and 26 aligned with 36 and 38 in one position; figs 4A-4D; section [0038]), in the second position the mandrel clamping element is aligned with the lands and the spring urges the mandrel clamping element toward the lands (Dirnberger; 24 and 26 rotated 90° with respect to 36 and 38 in another position and resting beside them; figs 4A-4D; section [0038]). Dirnberger, in combination with Marini, further discloses the mandrel assembly of claim 4 wherein in one position the mandrel clamping element is aligned with the posts and abuts the end faces of the posts, in a second position the mandrel clamping element is aligned with the posts and is axially spaced relative to the posts, in a third position the mandrel clamping element is aligned with the lands and is axially spaced apart relative to the lands, and in a fourth position the mandrel clamping element is aligned with the lands and abuts the lands. (Dirnberger; 24 and 26 can be rotated 360° with respect to 36 and 38 and can be aligned with them and resting beside them as well as the axial movement of the collar only being limited by the spring and retention washer; figs 4A-4D; section [0038]) as required by claims 5 and 6.
Dirnberger does not explicitly disclose the slot including a first slot portion that permits pin travel between a first location of the collar and a second location of the collar where the second location of the collar is closer to the collar first end than the first location of the collar, a second slot portion that permits pin travel between the second location of the collar and a third location of the collar, a third slot portion that permits pin travel between the third location of the collar and a fourth location of the collar where the third location of the collar is closer to the collar first end than the fourth location of the collar and where the first location of the collar is closer to the collar first end than the fourth location of the collar, a pin being in the first slot portion, a pin being in the third slot portion, the pin being at the first location of the collar, the pin being at the second location of the collar, the pin being at the third location of the collar, the pin being at the fourth location of the collar and a pin being in the second slot portion.
Marini teaches a slot including a first slot portion (Marini; slot portion 50 from bottom of 50 to beginning of 48; fig 2; column 6, lines 4-16) that permits pin travel between a first location of the collar and a second location of the collar where the second location of the collar is closer to the collar first end than the first location of the collar (Marini; slot 48; fig 2; column 6, lines 4-16), a second slot portion that permits pin travel between the second location of the collar and a third location of the collar (Marini; second slot portion 48 configured to allow 90° of movement from second location to third location; fig 2; column 6, lines 4-16), a pin being in a first slot portion (Marini; slot portion 50; fig 2; column 6, lines 4-16). Marini further teaches the pin being at the first location of the collar, the pin being at the second location of the collar the pin being at the third location of the collar (Marini; first pin slot portion 50 leading from first location to the second pin slot portion 48 configured to allow 90° of movement from second location to third location; fig 2; column 6, lines 4-16). Marini teaches a pin being in the second slot portion. (Marini; second slot portion 48; fig 3)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the sleeve and mandrel configuration of Dirnberger to configuration present in Marini, as Marini states “although plunger rods or structure may be utilized which are other than the circular cross-section.” The plunger rod of Dirnberger being suitably cylindrical.
Marini in combination with Dirnberger does not explicitly disclose a third slot portion that permits pin travel between the third location of the collar and a fourth location of the collar where the third location of the collar is closer to the collar first end than the fourth location of the collar and where the first location of the collar is closer to the collar first end than the fourth location of the collar and the pin being at the fourth location of the collar.
Harris teaches a collar (Harris; 22a; fig 7) with a first end (Harris; 24a; fig 7) and a second end (Harris; end of 22a opposite 24a; fig 7) and a third slot portion that permits pin travel between the third location of the collar and a fourth location of the collar where the third location of the collar is closer to the collar first end than the fourth location of the collar and where the first location of the collar is closer to the collar first end than the fourth location of the collar (Harris; the switching unit 30a comprising the guide element 162a which is fixed to the actuating element 34a and is guided in the link guide 174a which is intended to guide and/or movably mount the actuating element 34a during a movement along the at least two different movement paths and includes 174b that has 5 pin positions and 4 pin sections; fig 11). Harris further teaches the pin being at the fourth location of the collar. (Harris; 174b includes 4 slot portions and 5 pin locations; fig 11).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Dirnberger to include the shape of the slot configuration from Marini as modified by Harris in the collar of Dirnberger as Harris states “Advantageously, user-intuitive movement paths can be predetermined mechanically. Twisting or canting of the actuating element during actuation can advantageously be prevented.”
Regarding claim 8, Marini, in combination with Dirnberger and Harris, discloses the mandrel assembly of claim 4 wherein the second slot portion extends along an arc length of ninety degrees. (Marini; slot 48 configured to allow 90° of movement; fig 2; column 6, lines 4-16).
Claim(s) 3, 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dirnberger et, al. CA 2536128, Marini et, al. US 8641049 as applied to claims 1 above, and further in view of Olszewski US 8931973.
Regarding claim 3, Dirnberger, in combination with Marini, discloses the mandrel assembly of claim 1 wherein the slot is configured to permit the rotational movement (Marini; second slot portion 48; fig 3)
Marini, in combination with Dirnberger, doesn’t explicitly disclose a slot being configured to permit the rotational movement and the translational movement to occur simultaneously.
Olszewski teaches a collar (Olszewski; 14; fig 1) with a slot (Olszewski; 18; fig 1) being configured to permit the rotational movement and the translational movement to occur simultaneously. (Olszewski; angled slot portion 34 of slot 18; fig 1)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Dirnberger to include the slot configuration of Olszewski in the collar of Dirnberger as modified by Marini as Olszewski states creates “a method for connecting an accessory part to an operating table, in which method the connection between the accessory part and the operating table can be easily established, and a play between the accessory part and the operating table is avoided.” Which is also advantageous to the device of Dirnberger.
Regarding claim 10, Dirnberger, in combination with Marini and Harris, discloses the mandrel assembly of claim 4 wherein there is a second slot portion (Marini; second slot portion 48; fig 3).
Dirnberger, in combination with Marini and Harris, does not explicitly disclose a second slot portion being nonlinear.
Olszewski teaches a collar (Olszewski; 14; fig 1) with a slot (Olszewski; 18; fig 1) and a second slot portion being nonlinear. (Olszewski; angled slot portion 34 of slot 18; fig 1)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Dirnberger to include the slot configuration of Olszewski in the collar of Dirnberger as modified by Marini as Olszewski states creates “a method for connecting an accessory part to an operating table, in which method the connection between the accessory part and the operating table can be easily established, and a play between the accessory part and the operating table is avoided…” which is also advantageous to the device of Dirnberger.
Regarding claim 11, Dirnberger, in combination with Marini and Harris, discloses the mandrel assembly of claim 4 wherein upon an axial relative movement between the collar and the mandrel (Dirnberger; Collar 16 can move axially; fig 3; section [0031]) , and is configured to permit the mandrel to move relative to the collar between a first position in which the mandrel clamping element is aligned with and abutting the end faces of the posts, and a second position in which the mandrel clamping element is aligned with the and urged toward the lands via the spring (Dirnberger; spring 46 moves collar 16 axially towards first end of mandrel 14; fig 3; section [0044]).
Dirnberger does not explicitly disclose a mandrel wherein upon an axial relative movement between the collar and the mandrel, the slot is configured to permit the mandrel to automatically move relative to the collar.
Marini teaches a slot being configured to permit the mandrel to move (Marini; first pin slot portion 50 leading from first location to the second pin slot portion 48 configured to allow 90° of movement from second location to third location; fig 2; column 6, lines 4-16)
Marini does not explicitly disclose the slot is configured to permit the mandrel to automatically move relative to the collar.
Olszewski teaches a collar (Olszewski; 14; fig 1) with a slot (Olszewski; 18; fig 1) and said slot being configured to permit the mandrel to automatically move relative to the collar. (Olszewski; angled slot portion 34 of slot 18 would allow automatic movement of mandrel relative to the collar; fig 1)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Dirnberger to include the slot configuration of Olszewski in the collar of Dirnberger as modified by Marini as Olszewski states creates “a method for connecting an accessory part to an operating table, in which method the connection between the accessory part and the operating table can be easily established, and a play between the accessory part and the operating table is avoided…” which is also advantageous to the device of Dirnberger.
Regarding claim 12, Dirnberger, in combination with Marini, discloses the mandrel assembly of claim 1 wherein relative movement between the collar and the mandrel in a direction parallel to the longitudinal axis (Dirnberger; spring 46 moves collar 16 axially towards first end of mandrel 14; fig 3; section [0044]).
Dirnberger, in combination with Marini, does not explicitly disclose relative movement between the collar and the mandrel in a direction parallel to the longitudinal axis resulting in rotation of the mandrel about the longitudinal axis.
Olszewski teaches a collar with a slot (Olszewski; collar 14 slot 18; fig 1) relative movement between the collar and the mandrel in a direction parallel to the longitudinal axis resulting in rotation of the mandrel about the longitudinal axis. (Olszewski; angled slot portion 34 of slot 18 would allow automatic movement of mandrel relative to the collar; fig 1)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Dirnberger to include the slot configuration of Olszewski in the collar of Dirnberger as modified by Marini as Olszewski states creates “a method for connecting an accessory part to an operating table, in which method the connection between the accessory part and the operating table can be easily established, and a play between the accessory part and the operating table is avoided…” which is also advantageous to the device of Dirnberger.
Response to Arguments
Applicant's arguments filed 07/21/2025 have been fully considered but they are not persuasive.
Applicant’s argument that Marini fails to disclose a mandrel assembly is incorrect. Given the definition of mandrel (https://www.merriam-webster.com/dictionary/mandrel) Marini can readily be described by both definitions. The argument that the slot (18) of Marini is not a clamping element is not persuasive as figure 4 of Marini clearly shows the slot contributing to the clamping of tool (14) which fits the definition of a “clamping element” as the act of clamping only requires one element to be pressed against another element by an acting member and Applicant’s claims are not specific about the clamp in a way that meaningfully excludes the clamp of Marini. Applicant’s assertion that Marini fails to disclose “the spring extending between the retention washer and the shoulder” is incorrect. “Extending between” is vague and encompasses the spring (78) of Marini extending from the washer (80) along the mandrel. There is no requirement by the limitations set forth in the claims that the spring needs to be in contact with both the shoulder and the washer, merely that it “extends between” the shoulder and the washer, which it does.
Applicant argues that incorporation of the pin and collar assembly of Marini into the mandrel assembly of Dirnberger would render Dirnberger “unsatisfactory for its intended purpose” is incorrect in that the intended purpose of Dirnberger is to secure a rotating tool which incorporation of parts of Marini would not change. The teeth of Dirnberger operate to limit rotation which is also the goal of the pin and slot configuration of Marini just to different extents. In response to applicant's argument that bodily incorporation of Dirnberger and Marini would not function as expected, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's arguments against the references individually in regards to Claims 4-6 and 8, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Dirnberger and Marini taken together would suggest to one skilled in the art a collar that rotates in relation to the central mandrel and with no argument made to the addition of Harris outside of further argument around the combination of Dirnberger and Marini this argument is unpersuasive.
Applicant further restates the arguments above in relation to the arguments presented in the previous action. These arguments are unpersuasive for the reasons stated above. Marini fulfills all limitations of Claim 1 as written and will continue to do so until the limitations are rewritten in a way that excludes the disclosure of Marini. Combination of Dirnberger and Marini is not a matter of transplanting features un modified from one to the other, necessary modifications would be necessary assuming this was actually being done but the test is not that they need be successfully physically combined without change, it is that the suggestion of both references would teach the claimed limitations. Dirnberger and Marini are both mandrels with a collar, both function to clamp a tool in some way and both control rotation in some fashion. The purpose of both mandrels is not to limit rotation but to hold a tool and both disclosures when taken together as a reference to one skilled (i.e. knowledgeable) in the art would suggest that the mandrel of Dirnberger could be advantageously modified in view of Marini. All rejections are upheld.
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.
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/D.J.T./Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722