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 .
Drawings
The drawings are objected to because there are multiple views shown in FIG. 1. When a portion of a view is enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views, 37 CFR 1.84(h)(2). Based on the description in the Specification, Figs. 3 and 4 should likely be amended to remove “1A” and instead include--1B--. Also, in Figs. 3 and 4, “115” pointing to the spring should likely be replaced with --150--.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: paragraph [008] should be reviewed since it is unclear how the supporting member limits its own movement. (As a note, claim 27 should be similarly reviewed.) In paragraph [0044], line 4 should likely be amended to recite --the biasing member [[130]]150--. On page 9, line 13 should likely be amended to recite --the in-use lower end [[1A]]1B--. Throughout the Specification, reference character “185” is defined as the second upper groove location, the internal abutment structure and a second location. However, each reference character should only be defined using one term throughout the entirety of the Specification. Appropriate correction is required.
Claim Objections
Claims 25-27, 39, 40, 43 and 44 are objected to because of the following informalities: in claim 25, the second to last line should likely be amended to recite --within [[an]]the internal volume--. In claim 26, line 4 on page 6 should likely be amended to recite --during use; and--. Claim 27 is unclear due to the repetitive language: “a supporting member for limiting in-use upward and downward movement of the supporting member” (emphasis added) (As a note, paragraph [008] should be similarly reviewed). In claim 39, line 2 should likely be amended to recite --coupled to the handle--. In claim 40, line 6 should likely be amended to recite --the in-use lower end by magnetization--. In claim 43, the second to last line should likely be amended to recite --to push the attachment member--. In claim 44, line 1 of page 10 should likely be amended to recite --within [[an]]the internal volume--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 USC 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.
Claims 25-44 are rejected under 35 USC 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 25 recites the limitation "the internal volume" in lines 7-8 and the limitation “the supporting member” in line 11. Claim 26 recites the limitation "the second hollow tube" in line 3 and the limitation “the internal volume” in line 3 of page 6. Claim 32 recites the limitation "the magnet supporting member" in line 3. Claim 33 recites the limitation "the overall length" in line 2. Claim 36 recites the limitation "the ingress" in line 3. Claim 37 recites the limitation "the magnet supporting assembly" in lines 1-2. Claim 43 recites the limitation "the lower end part" in the last 2 lines. Claim 44 recites the limitation "the internal volume" in lines 5-6 and the limitation “the hollow tube” in line 6.
There is insufficient antecedent basis for these limitations in the claims. Consequently, claims 27-31, 34, 35 and 38-42 are also rejected under 35 USC 112(b) as being indefinite since they depend from claims that are rejected under 35 USC 112(b) as being indefinite.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 USC 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 USC 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.
Claims 25-27, 35, 39-42 and 44 are rejected under 35 USC 102(a)(1) as being anticipated by Crawford, Jr. et al. (US 5,288,119) (“Crawford”).
Referring to claim 25: Crawford teaches a picking tool assembly for picking up ferrous metal debris, nails, screws, sheet metal fragments, staples, rivets, and other ferrous metal objects from an environmental surface, the assembly comprising:
a magnetic member 65 movably disposed within a hollow tube assembly 10 extending between an in-use upper end and in-use lower end;
wherein the magnetic member is mounted on a movable supporting assembly 55,
the supporting assembly being configured for being movably disposed within the internal volume defined by the hollow tube (column 8, lines 1-28; FIG. 4), and
a handle 35, 52 positioned at or adjacent the upper end of the hollow tube (FIG. 4), the handle being coupled with the supporting assembly by an elongate connector 59 such that upward and downward movement of the handle effects movement of the supporting member (column 8, lines 1-28);
wherein the hollow tube assembly comprises: an inner shielding sleeve 72 such that axial movement of the magnetic member into an internal volume of the shielding sleeve prevents ferrous metal objects from being attracted towards the hollow tube assembly (column 9, line 61 - column 10, line 14), and an insulating sleeve 61 adapted to be positioned within an internal volume of the shielding sleeve to prevent direct contact between the magnetic member and internal walls of the shielding sleeve (FIG. 8).
Referring to claim 26: Crawford teaches the hollow tube assembly comprises a two-part configuration with a first hollow tube 35 comprising said in-use upper end and the second hollow tube 15 comprising said in-use lower end and wherein an in-use lower portion 30 of the first hollow tube is adapted to be coupled to an in-use upper portion 25 of the second hollow tube during use to allow axial movement of the supporting assembly within the internal volume of said first and second hollow tubes during use and
wherein the in-use lower portion of the first hollow tube is telescopically coupled with the in-use upper portion of the second hollow tube (via the threading).
Referring to claim 27: Crawford teaches the supporting assembly comprises a supporting member 60 for limiting in-use upward and downward movement of the supporting member.
Referring to claim 35: Crawford teaches the magnetic member is mounted to an end portion of the supporting member (FIG. 4).
Referring to claim 39: Crawford teaches the elongate connector is coupled to handle by an attachment member 53 and wherein a body portion of the first hollow tube defines a groove to allow movement of the attachment member (FIG. 4).
Referring to claim 40: Crawford teaches the groove is configured to retain the attachment member in two operable configurations such that:
in a first operable configuration, the attachment member is retained in the groove at a first location such that the magnetic member, coupled to the attachment member via the elongate connector, is positioned at or adjacent the in-use lower end of the hollow tube assembly to attract ferrous objects to the in-use lower by magnetization (FIG. 8); and
in a second operable configuration, the attachment member is positioned in the groove at a second location such that the magnetic member, coupled to the attachment member via the elongate connector, is positioned within the shielding sleeve to prevent ferrous objections from being attracted to the hollow tube by magnetization (FIG. 4); and
wherein the groove is shaped to allow axial movement of the attachment member between the first location and the second location on the groove.
Referring to claim 41: Crawford teaches the groove comprises a first groove portion with a length extending between the first groove location and the second groove location and a second groove portion with a second length and bridging groove portion to connect the first and second groove portions to allow movement of the attachment member between the first and second groove portions (FIG. 6).
Referring to claim 42: Crawford teaches the first location of the groove is positioned at an in use lower end part of the first groove portion and the second location of the groove is positioned at an in-use upper end part of the first groove portion (Figs. 4, 6 and 8).
Referring to claim 44: Crawford teaches a tool assembly comprising:
a magnetic member 65 movably disposed within a hollow tube assembly 10 extending between an in-use upper end and in-use lower end; wherein the magnetic member is mounted on a movable supporting assembly 55;
the supporting assembly being configured for being movably disposed within the internal volume defined by the hollow tube (column 8, lines 1-28);
wherein the hollow tube assembly further comprises: an inner shielding sleeve 72 located within an internal volume of the hollow tube assembly such that axial movement of the magnetic member into an internal volume of the shielding sleeve prevents ferrous metal objects from being attracted towards the hollow tube assembly (column 9, line 61 - column 10, line 14), and an insulating sleeve 61 adapted to be positioned within an internal volume of the shielding sleeve to prevent direct contact between the magnetic member and internal walls of the shielding sleeve (FIG. 8).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 USC 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 USC 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 31, 32 and 36 are rejected under 35 USC 103 as being unpatentable over Crawford and in view of Gordin (US 3,789,336).
Referring to claim 31: Crawford does not specifically teach the shielding sleeve is located in a spaced arrangement relative to the in-use lower end of the hollow tube assembly. Gordin teaches a picking tool assembly comprising a magnetic member 29 movably disposed within a hollow tube assembly 10 extending between an in-use upper end and in-use lower end;
wherein the magnetic member is mounted on a movable supporting assembly 24,
the supporting assembly being configured for being movably disposed within the internal volume defined by the hollow tube (Figs. 2 and 3), and
a handle 41, 42 positioned at or adjacent the upper end of the hollow tube (FIG. 2), the handle being coupled with the supporting assembly by an elongate connector 26 such that upward and downward movement of the handle effects movement of the supporting member (column 3, lines 3-9);
wherein the hollow tube assembly comprises: an inner shielding sleeve 14 such that axial movement of the magnetic member into an internal volume of the shielding sleeve prevents ferrous metal objects from being attracted towards the hollow tube assembly (column 2, lines 42-51), wherein the shielding sleeve is located in a spaced arrangement relative to the in-use lower end of the hollow tube assembly (Figs. 2-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the shielding sleeve taught by Crawford to be in a spaced arrangement relative to the in-use lower end of the hollow tube assembly as taught by Gordin with a reasonable expectation of success in order to assist the system further into a magnetically neutralized position.
Referring to claim 32: Crawford does not specifically teach wherein the insulating sleeve comprises a guiding portion. Gordin teaches the insulating sleeve comprises a guiding portion 18 extending from an in-use lower end of the insulating sleeve for guiding the magnet supporting member into the internal volume of the shielding sleeve. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the insulating sleeve taught by Crawford to include a guiding portion as taught by Gordin with a reasonable expectation of success in order to better assist the system between magnetically neutralized and magnetically activated positions.
Referring to claim 36: Crawford does not specifically teach a cap member. Gordin teaches the lower end of the hollow tube comprises a cap member 18 for retaining the magnetic member in the hollow tube and for preventing the ingress of debris into the hollow tube assembly. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the hollow tube taught by Crawford to include a cap member as taught by Gordin with a reasonable expectation of success in order to better ensure the magnet doesn’t fall out of the tool, and to keep the system cleaner.
Claims 33, 34, 37 and 38 are rejected under 35 USC 103 as being unpatentable over Crawford, alone.
Referring to claim 33: While Crawford teaches an overall length of the shielding sleeve is greater than the overall length of the magnetic member, Crawford does not specifically teach an overall length of the shielding sleeve is at least two times the overall length of the magnetic member. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the relative lengths of the shielding sleeve and magnetic member taught by Crawford so that the overall length of the shielding sleeve is at least two times the overall length of the magnetic member with a reasonable expectation of success since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Referring to claim 34: Crawford does not specifically teach the shielding sleeve comprises a metallic material for disrupting eddy currents in the shielding sleeve as the magnetic member moves through the shielding sleeve. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the shielding sleeve taught by Crawford to comprise a metallic material for disrupting eddy currents with a reasonable expectation of success since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Referring to claims 37 and 38: Crawford teaches the magnet supporting assembly is biased by a biasing member 70 coupled with the supporting assembly for biasing the magnetic member in an in-use direction, wherein the biasing member comprises a spring 70 having two ends with a first end of the spring being coupled with the supporting assembly and a second end of the spring being coupled with an internal portion 17 of the hollow tube assembly. Crawford does not specifically teach the biasing member biasing the magnetic member in an in-use downwardly direction. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the biasing member taught by Crawford to bias the magnetic member in a downward direction with a reasonable expectation of success since one would be choosing from a finite number of identified, predictable solutions (namely, biasing upwardly or downwardly).
Allowable Subject Matter
Claims 28-30 and 43 would be allowable if rewritten to overcome the rejection(s) under 35 USC 112(b) or 35 USC 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Slusar et al. (US 5,261,714) also teaches a telescopic magnetic picking tool comprising a magnetic member 50, a handle 20 and an insulating feature 51.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A LOIKITH whose telephone number is (571)270-7822. The examiner can normally be reached M-F 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Catherine Loikith/Primary Examiner, Art Unit 3674
20 February 2026