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 .
Election/Restrictions
Applicant's election with traverse of Invention I in the reply filed on 11/10/2025 is acknowledged. The traversal is on the ground(s) that:
In the present case, combination claim 13 requires all the specific characteristics of subcombination claim 1. The additional characteristics (e.g., wire contact and terminal block) recited in combination claim 13 does not change the fact that combination claim 13 includes all the specific characteristics of subcombination claim 1. However, the Restriction Requirement appears to restrict combination claim 13 from subcombination claim 1 because the subcombination "does not require any of the particulars recited in claims 2-12". Combination claim 13, not reciting any of the features of claims 2-12, is not germane to whether combination claim 13 is a combination including all the specific characteristics of the subcombination claim 1, which it is. At the very least, claim 13 should be included in Group I. Accordingly, Applicant asserts that Group I and claim 13 of Group II are not distinct for restriction purposes and requests withdrawal of the restriction requirement between Group I and at least claim 13 of Group II.
The examiner respectfully agrees with Applicant that claim 13 requires the specific characteristics of claim 1, which is why claim 1 was listed as a linking claim (see # in the Restriction Requirement). Invention I was properly listed as corresponding to claims 2-12, with claim 1 linking inventions I and II. Writing claims in dependent form is merely a shorthand way of drafting claims without unnecessarily repeating common limitations. When considering the restriction requirement, claim 13 was compared with claims 1-12 as if each of those claims were in independent form, to determine whether restriction is appropriate, and it was found that restriction would not be proper between claims 13 and 1, but would be proper between 13 and each of 2-12, as combination subcombination, as outlined in the Restriction Requirement. If claim 1 is found allowable, and claim 13 is amended to include the limitations of allowable claim 1, claims 13-17 would be rejoined.
Applicant further argues:
The Restriction Requirement also relates Groups I/II and Group III as product and process of use. More specifically, the Restriction Requirement finds, as basis for restriction between Groups I/II and Group III, that the product as claimed can be used in a process where the contact is retained a connector aperture, after being pushed into the connector aperture using the product (such that pulling off the entire product away from the connector does not result in removal of the of the contact from the connector aperture). In other words, the Restriction Requirement is identifying a process, of inserting a wire contact into a connector aperture using a product and retaining the wire contact in the connector aperture when the product is pulled away from the connector, to be materially different than the process of Group III. However, the process of Group III is directed to insertion of a wire contact into an object where the wire contact is effectively retained in the object, via operation of the apparatus, when the apparatus is pulled away from the object. Accordingly, the process of Group III is not materially different than the hypothetical process identified in the Restriction Requirement.
The examiner respectfully maintains restriction is proper between Invention III and each of inventions I and II. Claim 18 requires pinning an inner-tip end of the inner tube against the insert end of the wire contact and siding the trigger in an extraction direction. In other words, the pinning of the inner tip end while sliding the trigger so as to move the outer tube away from the connector. The examiner meant that the claimed apparatus can also be used in a process in which the apparatus can just be pulled away, as a whole, without requiring pinning of the insert end while moving the outer tube away from the contact by sliding the trigger.
Further rationale is as follows: the apparatus can be used in a materially different process, such as to engage a guide pin so as to allow rotating it to torque it to the proper level, as shown by the Woodman reference discussed below. See Woodman Figs. 10-12B and [0043]-[0046], especially [0044] and 0045]. Moreover, the apparatus can be used in a materially different process, such as for example to extract a contact from a connector. Further, the apparatus can be used to practice a materially different process, such as for installing a snap spring into an electrical connector, as taught by the Zhang reference discussed below (Zhange uses the tool to install a spring 22 into a connector. See [0026] of translation).
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/10/2025.
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.
Claim(s) 1, 10 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Woodman (US2019/0176298A1).
Woodman discloses the claimed invention as follows (refer to Figs. 1, 2, 3A, 3B, 9A and 9B):
Claim 1. An apparatus for inserting a wire contact into an object, the apparatus comprising:
a handle portion (106 with 101);
a trigger (108) slidably engaged with the handle portion;
an inner tube (103) comprises an inner-tip end (6001, Fig. 6A) that is open and has an exterior diameter (across from one 605 to the other, in Fig. 6A), wherein the inner tube is fixed to the handle portion (by means of pin 200 passing through both tube 103 and plunger 101), such that the inner tube does not move relative to the handle portion; and
an outer tube (portion of 100 other than the trigger 108) is concentric with and slidably movable relative to the inner tube and comprises an outer-tip end (right end of 100 in Fig. 9A) that is open and has an interior diameter, wherein the interior diameter of the outer-tip end is greater than the exterior diameter of the inner-tip end and the outer tube is fixed to the trigger, such that the outer tube does not move relative to the trigger;
wherein:
the trigger is configured to move along the handle portion between, and inclusive of, a first position and a second position;
when the trigger is in the first position (as shown in Fig. 12B; this is a different embodiment, but only the handle is different), the inner-tip end of the inner tube is retracted within the outer tube; and
when the trigger is in the second position (see Fig. 10A), the inner-tip end of the inner tube is extended from the outer-tip end of the outer tube.
Claim 10. The apparatus of claim 1, wherein the interior diameter of the outer-tip end is greater than or equal to 0.08 inches. See [0031]. Since the guide pin is 0.113 inches, the interior diameter of the outer-tip end is greater than 0.08 inches.
Claim 11. The apparatus of claim 1, wherein the exterior diameter of the inner-tip end is less than or equal to 0.08 inches. See “0.005 inches” in [0032], though this is interpreted as referring to 0.05 inches, as 0.005 inches would be too thin for a tube, and appears to be a typographical error.
Claim 12. The apparatus of claim 1, wherein the trigger comprises a finger grip (108) that extends from an exterior surface of the trigger and is configured to assist a user when moving the trigger between, and inclusive of, the first position and the second position.
Claim(s) 1 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (CN112117624A).
Zhang discloses the claimed invention as follows:
Claim 1. An apparatus for inserting a wire contact into an object, the apparatus comprising:
a handle portion (11);
a trigger (right half of 16m in Fig. 1) slidably engaged with the handle portion;
an inner tube (15) comprises an inner-tip end (by 151) that is open and has an exterior diameter (e.g., generalized diameter), wherein the inner tube is fixed to the handle portion, such that the inner tube does not move relative to the handle portion (15 is attached to 11 via interference fit; see [0025]); and
an outer tube (left half of 16, Fig. 1) is concentric with and slidably movable relative to the inner tube (see [0025]) and comprises an outer-tip end (165) that is open and has an interior diameter (e.g. generalized diameter; Fig. 6 show a top end view of the slider; the generalized diameter is the length of one diagonal of the narrower portion of the slider), wherein the interior diameter of the outer-tip end is greater than the exterior diameter of the inner-tip end and the outer tube is fixed to the trigger, such that the outer tube does not move relative to the trigger;
wherein:
the trigger is configured to move along the handle portion between (as in Fig. 1), and inclusive of, a first position and a second position (i.e., when the slider 16 is moved toward the handle 11);
when the trigger is in the first position, the inner-tip end of the inner tube is retracted within the outer tube; and
when the trigger is in the second position, the inner-tip end of the inner tube is extended from the outer-tip end of the outer tube.
Claim 12. The apparatus of claim 1, wherein the trigger comprises a finger grip _wider part of 16) that extends from an exterior surface of the trigger and is configured to assist a user when moving the trigger between, and inclusive of, the first position and the second position.
Claim(s) 1, 8, 9 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kilsdonk (US5161301A).
Kilsdonk discloses the claimed invention as follows:
Claim 1. An apparatus for inserting a wire contact into an object, the apparatus comprising:
a handle portion (12);
a trigger (32) slidably engaged with the handle portion;
an inner tube (14) comprises an inner-tip end (100) that is open and has an exterior diameter wherein the inner tube is fixed to the handle portion (by means of 20 and 16), such that the inner tube does not move relative to the handle portion; and
an outer tube (22) is concentric with and slidably movable relative to the inner tube and comprises an outer-tip end (85) that is open and has an interior diameter, wherein the interior diameter of the outer-tip end is greater than the exterior diameter of the inner-tip end and the outer tube is fixed to the trigger (at 34), such that the outer tube does not move relative to the trigger;
wherein:
the trigger is configured to move along the handle portion between, and inclusive of, a first position (as in Fig. 3) and a second position (as in Fig. 2);
when the trigger is in the first position, the inner-tip end of the inner tube is retracted within the outer tube; and
when the trigger is in the second position, the inner-tip end of the inner tube is extended from the outer-tip end of the outer tube (see Fig. 2).
Claim 8. The apparatus of claim 1, wherein:
the outer tube has an outer-tube opening (25) extending from the outer-tip end along a portion of a length of the outer tube;
the outer tube is configured to grip an insert end of the wire contact with the outer-tip end (the outer tube is capable of gripping an insert of end of a suitably-sized wire contact with the outer-tip end);
the inner tube has an inner-tube opening (72) extending from the inner-tip end along a portion of a length of the inner tube; and
the outer-tube opening is concentric with the inner-tube opening such that when the outer-tip end is gripping the insert end of the wire contact, a wire, extending from the wire contact, exits through the outer-tube opening and the inner-tube opening (see Figs. 6 and 7).
Claim 9. The apparatus of claim 8, wherein:
the insert end of the wire contact has an insert diameter;
the interior diameter of the outer-tip end is greater than the insert diameter2; and
the exterior diameter of the inner-tip end is less than the insert diameter.
Claim 12. The apparatus of claim 1, wherein the trigger comprises a finger grip (knurled surface 112) that extends from an exterior surface of the trigger and is configured to assist a user when moving the trigger between, and inclusive of, the first position and the second position.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Woodman.
Woodman discloses the claimed invention. The examiner interprets Woodman as referring to the outer diameter of tube 103 being 0.05 inches (see above discussion of “0.05” vs “0.005”). However, if Applicant disagrees, it would have, nevertheless, been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the same tool but in a different size, for use with guide pins of other dimensions, such as pins of a size requiring the inner tube to be less than or equal to 0.08 inches in outer diameter, and the outer tube greater than 0.08 inches in diameter, as changes in size without changing the mode of operation of the device are deemed to require only routine skill in the art and have predictable results.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kilsdonk.
Kilsdonk discloses the claimed invention, except for the limitations of claims 10 and 11.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to resize the tool to work with any size contacts having the same structure as those of Klisdonk, including contacts sized such that the resulting tool would have the claimed dimensions. Resizing a device without changing how it functions is deemed obvious and to have predictable results.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kilsdonk in view of Gibbins (US3325884A).
Kilsdonk discloses the claimed invention, except for the interior diameter of the outer-tip end being greater than or equal to 0.08 inches.
Gibbins shows connectors in which the insulated conductors attached to the contacts are 0.08 or 0.09 inches.
One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to size the tool of Kilsdonk to work with contacts connected to insulated conductors having a diameter as disclosed to be conventional in the art by Gibbins, with predictable results. Therefore, the inner diameter of the outer-tip end would also necessarily be more than 0.08 or 0.09 inches.
Allowable Subject Matter
Claims 2-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIVIUS R CAZAN whose telephone number is (571)272-8032. The examiner can normally be reached Monday - Friday noon-8:30 pm ET.
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, Thomas Hong can be reached at 571-272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LIVIUS R. CAZAN/Primary Examiner, Art Unit 3729
1 The end 600 is essentially a tubular portion in which two opposite slots are formed so as to define the two extensions 605. In the present application only one slot is formed.
2 The language in italics describes the structure of the wire contact, which is not part of the apparatus. This language does not further limit the structure of the apparatus.