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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on May, 21, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Status of Claims
This office action is in reply to the Response filed on August 25, 2025. Claims 1 and 3 have been amended. No additional claims have been added. No further claims have been cancelled. Claims 13-20 were previously withdrawn. Claim interpretation previously made under 35 USC 112(f) is maintained. The previous Drawing objection has been withdrawn. The previous 35 U.S.C. 112(b) rejection has been withdrawn. The previous 35 U.S.C. 103 rejection is maintained. Claims 1-12 are currently pending and have been fully examined.
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 1-6 and 10 are Finally rejected under 35 U.S.C. 103 as being unpatentable over Zhang (2021/0046626) in view of Mo (DE 202005007853, translation included herewith) and/or Kozak et al. (7007573).
In reference to claim 1, Zhang discloses an extractor insert (10) having a driven end (11) and a drive end (12), the extractor insert comprising:
a body (i.e. body of 10) extending along a central axis (i.e. longitudinal axis of 10) of the extractor insert and comprising a fastener engagement recess (13) and a drive surface assembly (14); and
a securing lip (18) coupled to the body (Figure 2), the securing lip extending radially away from the central axis such that the securing lip extends beyond an exterior of the body (Figure 2);
wherein the drive surface assembly comprises a plurality of external engaging surfaces (14) configured to interface with a driving tool (20) to permit a rotational force to be applied to the extractor insert (paragraph 18);
wherein the fastener engagement recess is an internal channel through the body extending along the central axis that is open at the driven end and the drive end (Figure 3), the fastener engagement recess being defined by internal sidewalls (i.e. not labeled but formed as the inner walls within 13) of the body (Figure 3);
wherein a plurality of engagement ribs (central portion of elements 13) extend from the internal sidewalls of the body towards the central axis, each engagement rib comprising an apex (i.e. at the central most tip portion thereof, see “dot” in figure below that represents one of the apexes) that extends (see double arrowed dotted line in figure below showing the extension of one apex) along a length (i.e. vertical length in figure below) of the engagement rib, each engagement rib having an opposing engagement rib such that apexes of opposing engagement ribs are disposed on a common plane with the central axis (note, since each apex of each rib extends vertically into the socket, opposing apexes would be disposed on a common plane [i.e. a plane extending into the socket] with the central axis).
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Zhang lacks,
each apex tapers at a taper angle relative to the central axis such that a distance between apexes of opposing engagement ribs is largest at the drive end and smallest at the driven end.
However, Mo teaches that it is old and well known in the art at the time the invention was made to provide a socket (20) with engagement ribs (24) that taper (see Figure 4) at a taper angle relative to a central axis (i.e. longitudinal axis of the socket 20) such that a distance between apexes of opposing engagement ribs is largest at a drive end (i.e. lower end of opening 22, in Figure 4) and smallest at a driven end (i.e. upper end of opening 22. Also, see following portion below taken from the translation and has been used for motivation).
“The invention relates to a socket, in particular a socket, the a tapered plug hole has, with a secure fixation of a screw head is possible.”
In addition, Kozak et al. also teach that it is old and well known in the art at the time the invention was made to provide engagement ribs (14) that taper (see Figures 4 and 6) at a taper angle relative to a central axis (i.e. longitudinal axis of the socket 12) such that a distance between apexes of opposing engagement ribs is largest (see bold double arrowed line in figure below) at a drive end (see figure below) and smallest at a driven end (see figure below) and wherein each engagement rib having an opposing engagement rib such that apexes of opposing engagement ribs are disposed on a common plane with the central axis (note, since each apex of each rib extends vertically into the socket, opposing apexes would be disposed on a common plane [i.e. a plane extending into the socket] with the central axis).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the apex of each plurality of engagement ribs, of Zhang, with the known technique of providing an apex of each plurality of engagement ribs that tapers at a taper angle relative to a central axis such that a distance between apexes of opposing engagement ribs is largest at a drive end and smallest at a driven end, as taught by Mo and/or Kozak et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively secures and engages with a screw head/fastener during normal operation (see underlined portion of translation, of Mo above) and/or that more effectively promotes the transfer of rotary motion from a hand tool to the fastener (see Column 6, Lines 29-32 of Kozak et al.).
In reference to claim 2, Zhang discloses that the plurality of external engaging surfaces of the of the drive surface assembly form a male hex assembly (paragraph 18) for engaging with a drive tool (20) having a female hex assembly (23),
wherein a maximum width (see figure below) across the male hex assembly through the central axis is larger than a height (i.e. height of 18, see figure below. Note, since only “a height” is claimed, any height of the tool could be used) of the extractor insert to limit a depth that the extractor insert extends into the drive opening of the drive tool.
[AltContent: textbox (Maximum width across the male hex assembly )][AltContent: connector][AltContent: textbox (A height of the extractor tool)][AltContent: connector][AltContent: arrow][AltContent: arrow]
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Assuming arguendo, that Zhang lacks specifically disclosing that,
a maximum width across the male hex assembly through the central axis is larger than a total/overall height of the extractor insert to limit a depth that the extractor insert extends into the drive opening of the drive tool.
However, the examiner notes that the applicant fails to provide any criticality in providing the range of the maximum width across the male hex assembly through the central axis being larger than a total/overall height of the extractor insert or that this particular range provides any Unexpected Result and where the general conditions of a claim are disclosed by the prior art discovering the optimum or workable ranges involves only routine optimization and experimentation to one of ordinary skill in the art. In re Aller, 105 USPQ, 233. In this situation, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the maximum width across the male hex assembly such that it is larger than a total/overall height of the extractor insert, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” MPEP 2144.04 IV A. In the instant case, Zhang discloses a substantially identical socket to that of applicant where the difference is Zhang does not indicate that a maximum width across the male hex assembly is larger than a total/overall height of the extractor insert. Modifying the width across the male hex, of Zhang, to have a maximum width that it is larger than a total/overall height of the extractor insert would not substantially change the operation of the Zhang device and would allow one to more effectively drive fasteners of different sizes and to allow the socket/insert to be used with tools (20) having various sized openings (23) depending on the particular size of the workpiece.
In reference to claim 3, Zhang discloses that the plurality of external engaging surfaces of the drive surface assembly form a male hex assembly (paragraph 18) for engaging with a drive tool (20) having a female hex assembly (23);
wherein a width of the securing lip (see figure below) through the central axis is larger than a maximum width (see figure below) across the male hex assembly through the central axis such that the securing lip operates as a catch on a top edge of a drive opening of the drive tool (see figure below).
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In reference to claim 4, Zhang discloses that a width of the securing lip (see figure below) through the central axis is larger than a height (i.e. height of 18, see figure below. Note, since only “a height” is claimed, any height of the tool could be used) of the extractor insert such that the securing lip operates as a catch on a top edge (22) of a drive opening (23) of a drive tool (20) that is a wrench (Figure 2) and the driven end (11) of the extractor insert does not extend (see position of driven end 11 in Figure 4) beyond a bottom edge o(i.e. upper edge in Figure 4) of the drive opening of the wrench.
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Assuming arguendo, that Zhang lacks specifically disclosing that,
a width of the securing lip through the central axis is larger than a total/overall height of the extractor.
However, the examiner notes that the applicant fails to provide any criticality in providing the range of the width of the securing lip through the central axis is larger than a total/overall height of the extractor or that this particular range provides any Unexpected Result and where the general conditions of a claim are disclosed by the prior art discovering the optimum or workable ranges involves only routine optimization and experimentation to one of ordinary skill in the art. In re Aller, 105 USPQ, 233. In this situation, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the width of the securing lip such that it is larger than a total/overall height of the extractor, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” MPEP 2144.04 IV A. In the instant case, Zhang discloses a substantially identical socket to that of applicant where the difference is Zhang does not indicate that a width of the securing lip is larger than a total/overall height of the extractor. Modifying the width of the securing lip, of Zhang, to have a width that is larger than a total/overall height of the extractor would not substantially change the operation of the Zhang device and would allow one to more effectively drive fasteners of different sizes and to allow the socket/insert to be used with tools (20) having various sized openings (23) depending on the particular size of the workpiece.
In reference to claim 5, Mo discloses that the taper angle is between 1 and 3 degrees or 1 and 5 degrees (see portion of the translation below disclosing that the taper is, “less than 10°” thereby teaching that the taper angle ranges from ≈0-10°, which includes the claimed range of, “between 1 and 3 degrees or 1 and 5 degrees”).
“…the plug hole ( 22 ) the socket ( 20 ) has a taper of less than 10 °.”
In reference to claim 6, Zhang discloses that edges of the drive surface assembly where each external engaging surface meets an adjacent external engaging surface are chamfered (i.e. at 15) or rounded (paragraph 18 and Figure 2).
In reference to claim 10, Zhang discloses that an underside (see figure below) of the securing lip extends to the body at lip angle of greater than 5 degrees (note, the figure below shows that the underside of securing lip 18 extends at an angle of 90 degrees to the body).
[AltContent: arrow][AltContent: textbox (Underside)][AltContent: arrow][AltContent: textbox (90 degree angle)][AltContent: connector][AltContent: connector]
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Claims 7-9 are Finally rejected under 35 U.S.C. 103 as being unpatentable over Zhang (2021/0046626) in view of Mo (DE 202005007853, translation included herewith) and/or Kozak et al. (7007573) and further in view of Chen (2008/0163730).
In reference to claim 7, Zhang discloses the claimed invention as previously mentioned above, and further discloses that the securing lip prevents the extractor insert from falling from a drive tool (20) in a first falling direction (i.e. leftward direction in Figure 5), but lacks,
a magnet configured to form a magnetic bias between the insert and the driving tool to maintain the insert in engagement with the driving tool;
and the magnet prevents the extractor insert from falling from the drive tool in a second falling direction that is opposite the first falling direction.
However, Chen teaches that it is old and well known in the art at the time the invention was made to provide an extractor insert (10) with a magnet (20) configured to form a magnetic bias between the insert and a driving tool (40) to maintain the insert in engagement with the driving tool; and the magnet prevents the extractor insert from falling from the drive tool in a second falling direction (i.e. a rightward direction in Figure 56 of Zhang) that is opposite the first falling direction.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the insert, of Zhang, with the known technique of providing the extractor insert including the magnet, as taught by Chen, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device having a magnet provided inside thereof to increase the stability of fixing, so that the objective of tight elastic engagement is attained (see paragraph 6).
In reference to claim 8, Chen discloses that the magnet is disposed in a magnet recess (110) in an external engaging surface (i.e. surface of 11) of a drive surface assembly (11, Figure 1).
In reference to claim 9, modified Zhang discloses the claimed invention as previously mentioned above, but lacks,
a depth of the magnet recess is less than half of a thickness of the body between the internal sidewall and the external engaging surface at the magnet recess for torque strength at the magnet recess.
However, the examiner notes that the applicant fails to provide any criticality in providing the range of the depth of the magnet recess being less than half of a thickness of the body between the internal sidewall and the external engaging surface at the magnet recess for torque strength at the magnet recess or that this particular range provides any Unexpected Result and where the general conditions of a claim are disclosed by the prior art discovering the optimum or workable ranges involves only routine optimization and experimentation to one of ordinary skill in the art. In re Aller, 105 USPQ, 233. In this situation, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the depth of the magnet recess being less than half of a thickness of the body between the internal sidewall and the external engaging surface at the magnet recess for torque strength at the magnet recess, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” MPEP 2144.04 IV A. In the instant case, Zhang discloses a substantially identical socket to that of applicant where the difference is that modified Zhang does not indicate that a depth of the magnet recess being less than half of a thickness of the body between the internal sidewall and the external engaging surface at the magnet recess for torque strength at the magnet recess. Modifying the depth of the magnet recess, of Zhang, to have a depth that is less than half of a thickness of the body between the internal sidewall and the external engaging surface at the magnet recess would not substantially change the operation of the Zhang device and would increase the stability of fixing, so that the objective of tight elastic engagement is attained.
Claim 11, is Finally rejected under 35 U.S.C. 103 as being unpatentable over Zhang (2021/0046626) in view of Mo (DE 202005007853, translation included herewith) and/or Kozak et al. (7007573) and further in view of Arnold (5819606).
In reference to claim 11, Zhang discloses the claimed invention as previously mentioned above, but lacks,
a first indicia indicative of a fastener size for use with the extractor insert disposed on a surface at the drive end of the extractor insert.
However, Arnold teaches that it is old and well known in the art at the time the invention was made to provide an extractor insert (10) with a first indicia (i.e. at 34 in Figure 3) indicative of a fastener size for use with the extractor insert disposed on a surface (i.e. 32) at a drive end of the extractor insert (Figures 1 and 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the insert, of Zhang, with the known technique of providing the first indicia, as taught by Arnold, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that provides identification as an alpha numeric or a color code to identify either a fraction or metric system socket or a specific size socket of either system (Column 2, Lines 15-19).
Claim 12, is Finally rejected under 35 U.S.C. 103 as being unpatentable over Zhang (2021/0046626) in view of Mo (DE 202005007853, translation included herewith) and/or Kozak et al. (7007573), Arnold (5819606) and further in view of Hu (2016/0271760).
In reference to claim 12, Zhang discloses the claimed invention as previously mentioned above, but lacks,
a second indicia indicative of a size of driving tool opening for use the extractor insert disposed on one of the external engaging surfaces of the drive surface assembly.
However, Hu teaches that it is old and well known in the art at the time the invention was made to provide an extractor insert (10) with a second indicia (i.e. 34 in Figure 1) indicative of a size of driving tool opening (21, paragraph 38) for use the extractor insert disposed on one of external engaging surfaces (i.e. at 321 in Figure 2) of a drive surface assembly (32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the insert, of Zhang, with the known technique of providing the second indicia disposed on one of external engaging surfaces, as taught by Hu, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more clearly indicates the size of the polygonal hole (paragraph 38) and/or that allows a user to more clearly identify the insert among various similar inserts.
Response to Arguments
Applicant's arguments filed August 25, 2025 have been fully considered but they are not persuasive.
Applicant contends that, “Initially, while the Office Action doesn’t expressly state that Zhang fails to textually describe an engagement rib, as recited in claim 1, itis clear from the statement of the rejection that efforts must be made to interpret Zhang as teaching an engagement rib. Rather than cite to a description of an engagement rib in specification of Zhang, the Office Action attempts to rely on portions of the figures of Zhang to discover an alleged engagement rib. The Office Action, as described on page 5, annotates FIG. 3 of Zhang to include an apex of an engagement rib. Applicant notes that ends of an interior channel seem to have some rounding, but it is not clear that such rounding continues for the length of the channel or is only present at an end. Without a written description of the structure of the Zhang socket 10, we are left to guess about the structures in the internal channel of the socket 10. The Office Action conveniently selects an interpretation that assists with formulating the grounds for rejection. While the figures lack clarity as to the structure of the interior channel, the Office Action clearly relies on improper hindsight to interpret the figures in such a way that supports the grounds for rejection. Applicant submits that such interpretation is improper and, as such, Zhang cannot be relied upon for providing a foundation for combination with the other cited references, particularly because it is this specific feature (i.e., the alleged engagement ribs) that provides a basis for combination of Zhang with Mo and Kozak.”.
However, the examiner respectfully disagrees with this statement. The examiner has included annotated figures below showing the applicant’s invention in Figure 12b and Zhang in Figures 3 and 4.
First, with respect to the argument that, “Zhang fails to textually describe an engagement rib”, the examiner notes that Zhang clearly shows the same structure of the engaging rib as shown and as claimed by the applicant. The fact that Zhang does not use the specific words of “engagement ribs” is moot because the same structure of such an engagement rib is clearly shown (at 13) and is used for the same purpose of engaging a fastener (see paragraph 17). Since, all of the structural limitations of the claims have been met, the examiner believes that the rejection is proper.
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Next, with respect to the argument that, “…it is not clear that such rounding continues for the length of the channel or is only present at an end”, the examiner notes that in Figure 4 above, the rounding continues for the entire length of each engagement rib because it is present at both of upper and lower ends (Figure 4). Since, all of the structural limitations of the claims have been met, the examiner believes that the rejection is proper.
Finally, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this situation, since the structure of the engagement ribs is clearly shown, the examiner believes that there is no improper hindsight reasoning. Since, all of the structural limitations of the claims have been met and because proper motivation has been provided, the examiner believes that the rejection is proper.
Applicant contends that, “Moreover, even if the figures of Zhang do show a feature with an apex that could be construed as an apex, there is no[t] basis for modifying Zhang to arrive at an extractor tool as recited in claim 1. The Office Action admits that Zhang fails to teach “each apex tapers at a taper angle...” and then indicates that one of skill in the art would be motivated to modify Zhang with the teachings of Mo, because Mo teaches “secure fixation of a screw head is possible.” However, this is not an apparent reason to modify Zhang. Zhang is completely unconcerned with the issue of driving a fastener in a particular manner as indicated by the statement that various general shapes of the interior channel can be used “as long as it is capable of driving a fastening element.” Zhang, 4 0017. Thus, there is no apparent reason to modify Zhang with the teachings of Mo, because Zhang in the absence of Mo provides for secure engagement with a fastening element.”.
However, the examiner respectfully disagrees with this statement. While, Zhang may be, “completely unconcerned with the issue of driving a fastener in a particular manner”, Zhang can still be modified such that the engagement ribs taper, as taught by Mo (and/or Kozak), especially since both sockets are used for the same purpose (i.e. engaging fasteners). Zhang uses the socket for engaging fasteners including nuts or bolts (see paragraph 17) and Mo also provides a tapered socket including tapered engagement ribs for engaging fasteners including nuts of screws (see Abstract). Again, by modifying the engagement ribs such that they taper, provides a more advantageous and versatile device that more effectively secures and engages with a screw head/fastener during normal operation (see underlined portion of translation, of Mo below).
“The invention relates to a socket, in particular a socket, the a tapered plug hole has, with a secure fixation of a screw head is possible.”
Since, both Zhang and Mo are concerned with the same problem of driving fasteners, one of skill in the art would be motivated to modify Zhang with the tapered engagement ribs of Mo to more effectively secure and engage with a screw/fastener. Since, all of the structural limitations of the claims have been met, the examiner believes that the rejection is proper.
Finally, while the applicant does not provide any specific arguments directed to the combination of Zhang and Kozak, the examiner notes that Kozak similarly teaches of providing tapered engagement ribs in order to more effectively promote the transfer of rotary motion from a hand tool to the fastener (see Column 6, Lines 29-32 of Kozak et al.) thus providing further motivation for such a combination. Since, all of the structural limitations of the claims have been met, the examiner believes that the rejection is proper.
Applicant contends that, “Moreover, the technical problem being considered in Zhang has no[t] relationship to extraction of fasteners that are rounded or worn. Rather, Zhang is directed to addressing the technical problem of accidental uncontrolled removal (e.g., leading to dropping, etc.) of the socket 10 due to the high force needed for removal. This has nothing to do with engaging a fastener or, more specifically, extracting a damaged fastener. As such, one of skill in the art would not look to Zhang to arrive at an extractor tool solution because the combination with Zhang offers no clear benefit or improvement relating to the purpose of Zhang. Additionally, incorporating the teachings of Mo and Kozak into the socket 10 of Zhang would require substantial redesign going well beyond what one of ordinary skill in the art would reasonably undertake. For this additional reason, the combination of Mo and Kozak with Zhang is improper.”.
However, the examiner respectfully disagrees with this statement. Zhang does not have to expressly disclose using the device on rounded or worn fasteners in order to be combined with Mo or Kozak. All three of the references (Zhang, Mo and Kozak) are socket type devices used for engaging various types of fasteners and thus are combinable with each other. One of ordinary skill in the art could look at Mo or Kozak for the teaching of providing the tapered engagement ribs in order to provide a more advantageous and versatile device that more effectively secures and engages with a screw head/fastener during normal operation (see underlined portion of translation, of Mo above) and/or that more effectively promotes the transfer of rotary motion from a hand tool to the fastener (see Column 6, Lines 29-32 of Kozak et al.). The examiner notes that by modifying the straight engagement ribs, of Zhang, with the tapered engagement ribs, as taught by Mo or Kozak would not require substantial redesign going well beyond what one of ordinary skill in the art would reasonably undertake because such a combination simply modifies straight engagement ribs with angled/tapered engagement ribs. Since, all of the structural limitations of the claims have been met, the examiner believes that the rejection is proper.
The examiner has reviewed the other arguments with respect to the dependent claims 7-9, 11 and 12, but notes, there are no specific arguments pertaining to those rejections and thus do not require further response.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723