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 § 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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Bauman (US 20080226407) in view of Smith (US 3740063).
Regarding claim 1, Bauman discloses a tool shank holder 9500 for connecting a tool to a chuck of an impact drive. The tool shank holder comprises a body comprising a shank-receiving end and a bit-receiving end. The shank-receiving end 9518 is configured to operably receive a shank of a tool 36 and the bit-receiving end 9502 is configured to operably receive a driver bit 9400. A first connector comprising a ball 9904 and a spring band 9912 (Fig. 93) that extends around the body, the spring band is recessed into the body within an opening/recess between opposite sides of the spring band and is configured to apply a biasing force through the body and against a ball located in the bit-receiving end to bias the ball against the driver bit located in the bit-receiving end. A second connector is provided at the shank-receiving end and is configured to directly connect the shank-receiving end to the shank of the tool The second connector is configured as a set screw 76 which engages the shank of the tool inserted therein, through the body in other embodiments (e.g. see Fig. 6) and is disclosed as being suitable/useful for various other configurations of adapters (Paragraph [0160]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to provide a set screw to the shank-receiving end 9518 as taught earlier in Bauman, in order to provide a way to secure the tool into the shank-receiving end. Bauman does not explicitly disclose the spring band being flush with the body on both opposite ends thereof.
Smith discloses a similar tool shank holder, wherein a spring band encloses balls 19 in an annular recess, and the spring band is oriented in the recess such that the spring band is flush with the body 12 on both opposite ends thereof (see Fig. 1).
It would have been obvious to one having ordinary skill in the art at the time of filing to provide such a recess taught by Smith to the body of Bauman in order to prevent the spring band from falling off the body during operation.
Regarding claim 2, Bauman discloses a tool comprising a shank received within the shank-receiving end, the second connector directly contacting the shank-receiving end to the shank of the tool (Paragraph [0195]).
Regarding claim 3, Bauman discloses various tools in the shank-receiving end, but does not explicitly disclose a tap.
Smith discloses a similar tool shank holder, wherein various tools are utilized, including a tap (Col. 3, Line 67 – Col. 4, Line 2).
It would have been obvious to one having ordinary skill in the art at the time of filing to replace the tool of Bauman with a tap, as taught by Smith, depending on the operation that is desired.
Regarding claim 5, Bauman discloses the body comprising a flip socket portion comprising the bit-receiving end and a tool holder portion comprising the shank-receiving end.
Regarding claim 6, Bauman discloses the flip socket portion and the tool holder portion being formed as a single, monolithic piece of material.
Regarding claim 7, Bauman does not explicitly disclose the flip socket portion and tool holder portion being formed separately, then permanently connected together. However, Bauman discloses the invention having all of the structural limitations set forth above with respect to claim 7, and specifically discloses a device whose component members could have been made by two separate pieces formed separately and permanently connected together. However, if Applicant does not agree that Bauman anticipates the process of how the device’s members were made, it would have been obvious to one having ordinary skill in the art at the time of filing to make the device using any known manufacturing process, such as welding the flip socket portion to the tool holder portion, to create a tool shank holder out of two specific components instead of machining both ends of a tool shank holder. Furthermore, “formed separately and permanently connected together” is considered a Product-by-Process limitation. See MPEP 2113, Paragraphs 17-18 of the Non-Final Rejection of 06/02/2025, Paragraph 14 of the Final Rejection of 10/20/2025 and Paragraph 10 of the Non-Final Rejection of 03/06/2026.
Response to Arguments
Applicant’s arguments with respect to claims 1-3 and 5-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 Alan Snyder whose telephone number is (571)272-4603. The examiner can normally be reached M-R 7:00a - 5:00p.
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/Alan Snyder/Primary Examiner, Art Unit 3722
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