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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 Oct 2025 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application Nos. 62/328102, PCT/IB2017/052453, 15/601864, PCT/IB2017/054379, 16/107842, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. None of the above-identified applications provide adequate support for a method of engaging a fastener which includes the use of a tubular sleeve pressing against the fastener. The earliest support for the claimed subject matter appears in provisional application 62/733507. Accordingly, the current claims are afforded the effective filing date of this application, which is 19 Sep 2018.
Claim Objections
Claims 21 and 22 are objected to because of the following informalities: “the torque force” in the 6th to last line of each of these claims should read “the rotational force” for consistency with the rest of the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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(s) 2-4, 6-7, 9-10, 13, 16-18, and 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackman (US 2121197, previously cited) in view of Miyazaki (JP 2017-042898, previously cited).
Regarding claim 21, Jackman teaches a method for engaging a fastener, the method comprising the following steps: providing an extractor tool, the extractor tool having a drive head (13; fig 6), a torque-tool body (5’), the torque tool-body comprising a plurality of laterally-bracing sidewalls (see annotated fig below), a plurality of engagement features (see annotated fig below), a first base (bottom of tool as viewed in fig 6), and a second base (at intersection of torque tool body 5’ and drive head 13 shown in fig 6); the plurality of engagement features extending from the first base towards the second base (as shown in fig 6, engagement features extend along length of torque tool body between first and second bases): the drive head being terminally connected to the second base opposite to the first base (as shown in fig 6): each of the plurality of laterally-bracing sidewalls comprising a first lateral edge, a second lateral edge, and a bracing surface (see annotated fig below); the first lateral edge and the second lateral edge being positioned opposite to each other across the bracing surface (see annotated fig below); the engagement feature being integrated into a specific sidewall among the plurality of laterally-bracing sidewalls (each sidewall forms an engagement feature); the engagement feature forming an engagement tooth on the bracing surface (as can be seen in fig 9); driving the torque-tool body of the extractor tool into an engagement recess (3) of a fastener (as shown in fig 9; p2, col 2, lines 25-27), wherein the outer diameter of the torque-tool body adjacent to the first base is greater than a diameter of the engagement recess (figs 6 and 7; p2, col 2, lines 27-31; diameter at apex of ribs is larger than diameter of recess); applying rotational force to the extractor tool to rotate the fastener, wherein the plurality of engagement features transfer the rotational force to the engagement recess (p2, col 2, lines 48-62).
Jackman does not teach the extractor tool having an external thread on a shank body between the torque tool body and drive head, or a tubular sleeve rotated into contact with fastener to remove the fastener from the extractor tool. Miyazaki teaches method for engaging a fastener using a fastener extractor tool including an external thread (10; fig 6), a shank body (fig 6; section of tool with thread 10) and a tubular sleeve (14; fig 7), a drive head (12) being terminally connected to the shank body (as shown in fig 6), the external thread extending along the shank body in between a torque tool body (section with engagement feature 11) and the drive head (as shown in fig 6), an internal thread (15) of the tubular sleeve being mechanically engaged to the external thread ([0053]), the shank body being terminally connected to a second base opposite a first base (fig 6; shank body at end portion of torque-tool body opposite to the engagement feature), the method including rotating the tubular sleeve along the external thread and into contact with a fastener and pressing the tubular sleeve against the fastener to remove the fastener from the extractor tool ([0053]; fig 8). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a shank body with an external thread terminally connected to the second base between the torque tool body and drive head of Jackman, and to rotate a tubular sleeve on the external thread into contact with the fastener to remove the fastener from the extractor tool, as this removal of the fastener allows the tool to be easily reused as taught by Miyazaki ([0029]).
Regarding claim 22, Jackman teaches a method for engaging a fastener, the method comprising the following steps: providing an extractor tool, the extractor tool having a drive head (13; fig 6), a torque-tool body (5’), the torque tool-body comprising a plurality of laterally-bracing sidewalls (see annotated fig below), a plurality of engagement features (see annotated fig below), a first base (bottom of tool as viewed in fig 6), and a second base (at intersection of torque tool body 5’ and drive head 13 shown in fig 6); the plurality of engagement features extending from the first base towards the second base (as shown in fig 6, engagement features extend along length of torque tool body between first and second bases): the drive head being terminally connected to the second base opposite to the first base (as shown in fig 6): each of the plurality of laterally-bracing sidewalls comprising a first lateral edge, a second lateral edge, and a bracing surface (see annotated fig below); the first lateral edge and the second lateral edge being positioned opposite to each other across the bracing surface (see annotated fig below); the engagement feature being integrated into a specific sidewall among the plurality of laterally-bracing sidewalls (each sidewall forms one side of the engagement feature); the engagement feature being an engagement protrusion, the engagement protrusion being laterally connected to the bracing surface (as can be seen in fig 9); driving the torque-tool body of the extractor tool into an engagement recess (3) of a fastener (as shown in fig 9; p2, col 2, lines 25-27), wherein the outer diameter of the torque-tool body adjacent to the first base is greater than a diameter of the engagement recess (figs 6 and 7; p2, col 2, lines 27-31; diameter at apex of ribs is larger than diameter of recess); applying rotational force to the extractor tool to rotate the fastener, wherein the plurality of engagement features transfer the rotational force to the engagement recess (p2, col 2, lines 48-62).
Jackman does not teach the extractor tool having an external thread on a shank body between the torque tool body and drive head, or a tubular sleeve rotated into contact with fastener to remove the fastener from the extractor tool. Miyazaki teaches method for engaging a fastener using a fastener extractor tool including an external thread (10; fig 6), a shank body (fig 6; section of tool with thread 10) and a tubular sleeve (14; fig 7), a drive head (12) being terminally connected to the shank body (as shown in fig 6), the external thread extending along the shank body in between a torque tool body (section with engagement feature 11) and the drive head (as shown in fig 6), an internal thread (15) of the tubular sleeve being mechanically engaged to the external thread ([0053]), the shank body being terminally connected to a second base opposite a first base (fig 6; shank body at end portion of torque-tool body opposite to the engagement feature), the method including rotating the tubular sleeve along the external thread and into contact with a fastener and pressing the tubular sleeve against the fastener to remove the fastener from the extractor tool ([0053]; fig 8). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a shank body with an external thread terminally connected to the second base between the torque tool body and drive head of Jackman, and to rotate a tubular sleeve on the external thread into contact with the fastener to remove the fastener from the extractor tool, as this removal of the fastener allows the tool to be easily reused as taught by Miyazaki ([0029]).
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Regarding claim 2, Jackman, as modified, teaches all the limitations of claim 21 as described above. Jackman further teaches drilling the engagement recess in a head portion (top) of the fastener prior to driving the torque tool body of the extractor tool into the engagement recess (p 1, col 2, lines 52-55).
Regarding claim 3, Jackman, as modified, teaches all the limitations of claim 21 as described above. Jackman further teaches providing a first external torque tool (“wrench”), and engaging the first external torque tool with the drive head of the extractor tool to apply rotational force to the extractor tool (p 2, col 1, lines 32-36).
Regarding claim 4, Jackman, as modified by Miyazaki, teaches all the limitations of claim 3 as described above. Miyazaki further teaches the rotation of the tubular sleeve includes providing a second external torque tool; and engaging the second external torque tool with the tubular sleeve to rotate the tubular sleeve ([0058] describes hexagonal portion 13 of sleeve as being “mounting part for wrench”).
Regarding claim 6, Jackman, as modified, teaches all the limitations of claim 21 as described above. Jackman further teaches the engagement tooth is configured to cut at least one groove into internal sidewalls of the engagement recess (fig 12; p 2, col 2, lines 5-9).
Regarding claim 7, Jackman, as modified by Miyazaki, teaches all the limitations of claim 21 as described above. Miyazaki further teaches the tubular sleeve (14) is configured to move axially along a rotational axis of the extractor tool when rotated relative to the external thread ([0053]; fig 8).
Regarding claim 9, Jackman, as modified, teaches all the limitations of claim 21 as described above. Jackman further teaches the fastener comprises a head portion (as broadly claimed, the top of the fastener 1 as viewed in fig 6 can be considered a head portion), wherein the engagement recess (3) is arranged in the head portion (fig 6).
Regarding claim 10, Jackman, as modified, teaches all the limitations of claim 21 as described above. Jackman further teaches the step of driving the torque-tool body into the engagement recess (3) further comprises cutting at least one groove into an internal sidewall of the fastener recess (fig 12; p 2, col 2, lines 5-9).
Regarding claim 20, Jackman, as modified, teaches all the limitations of claim 21 as described above. Jackman does not teach providing an external torque tool or engaging the external torque tool with the tubular sleeve. However, Miyazaki teaches providing an external torque tool (to element 13; [0058] describes hexagonal portion 13 of sleeve as being “mounting part for wrench”) and engaging the external torque tool with the tubular sleeve (to element 13) to rotate the tubular sleeve along the external thread (described in [0053]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide an external torque tool in the method of Jackman and engage the external torque tool with the tubular sleeve to rotate the tubular sleeve along the external thread, as this allows the tubular sleeve to easily separate the bolt from the tool as taught by Miyazaki ([0053]).
Regarding claim 13, Jackman, as modified, teaches all the limitations of claim 22 as described above. Jackman further teaches drilling the engagement recess in a head portion (top) of the fastener prior to driving the torque tool body of the extractor tool into the engagement recess (p 1, col 2, lines 52-55).
Regarding claim 16, Jackman, as modified by Miyazaki, teaches all the limitations of claim 22 as described above. Miyazaki further teaches the tubular sleeve (14) is configured to move axially along a rotational axis of the extractor tool when rotated relative to the external thread ([0053]; fig 8).
Regarding claim 17, Jackman, as modified, teaches all the limitations of claim 22 as described above. Jackman further teaches the fastener comprises a head portion (as broadly claimed, the top of the fastener 1 as viewed in fig 6 can be considered a head portion), wherein the engagement recess (3) is arranged in the head portion (fig 6).
Regarding claim 18, Jackman, as modified, teaches all the limitations of claim 22 as described above. Jackman further teaches the step of driving the torque-tool body into the engagement recess (3) further comprises cutting at least one groove into an internal sidewall of the fastener recess (fig 12; p 2, col 2, lines 5-9).
Claim(s) 5 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackman and Miyazaki as applied to claims 21 and 22 above, and further in view of Dudot (US 2018/0071903, previously cited).
Regarding claim 5, Jackman, as modified, teaches all the limitations of claim 21 as described above. Jackman does not teach applying percussion blows to the drive head to drive the torque-tool body into the engagement recess. Dudot teaches a method for engaging a fastener including applying percussion blows (fig 6; with hammer 49 through tool 51) to a drive head (7) of an extractor tool (1) to drive the torque-tool body (3) into an engagement recess (fig 6; [0061-0063]). It is obvious to apply a known technique to a known method ready for improvement to yield predictable results (MPEP 2143 I. (D)). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to apply percussion blows to the drive head of Jackman to drive the torque-tool body into the engagement recess, as percussion blows are known to achieve the predictable result of coupling an extractor tool to a fastener for rotation thereof as taught by Dudot ([0061]).
Regarding claim 14, Jackman, as modified, teaches all the limitations of claim 22 as described above. Jackman does not teach applying percussion blows to the drive head to drive the torque-tool body into the engagement recess. Dudot teaches a method for engaging a fastener including applying percussion blows (fig 6; with hammer 49 through tool 51) to a drive head (7) of an extractor tool (1) to drive the torque-tool body (3) into an engagement recess (fig 6; [0061-0063]). It is obvious to apply a known technique to a known method ready for improvement to yield predictable results (MPEP 2143 I. (D)). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to apply percussion blows to the drive head of Jackman to drive the torque-tool body into the engagement recess, as percussion blows are known to achieve the predictable result of coupling an extractor tool to a fastener for rotation thereof as taught by Dudot ([0061]).
Response to Arguments
Applicant's arguments filed 30 Oct 2025 have been fully considered but they are not persuasive. Applicant argues that the new limitations regarding the laterally-bracing sidewalls, lateral edges, engagement tooth (claim 21), and engagement protrusion (claim 22) define over the structure disclosed by Jackman. Examiner respectfully disagrees. As detailed in the rejection above and as labeled in the annotated figure above, Jackman teaches a laterally bracing sidewall with first and second lateral edges on opposite sides of a bracing surface, where an engagement feature which is an engagement tooth or protrusion is formed by and laterally connected to the bracing surface. There is nothing in the claims which distinguishes the claimed engagement features from the engagement features of Jackman, contrary to applicant’s arguments.
Applicant’s amendments have overcome the previous 112b rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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/MARCEL T DION/Examiner, Art Unit 3723
/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723