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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Species II, claims 1-6, 9-12, 16, and 18 in the reply filed on 22 October 2025 is acknowledged.
Claims 7-8, 13-15, 17, and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 22 October 2025.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “18” has been used to designate both the outer surface of the drill attachment member and the outer surface of the pin spacer in the specification. 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. 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.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a drill attachment member” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that use the word “means” or “step” or a generic placeholder but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function, or the specification provides more than a single example of the structure, materials, or acts necessary to entirely perform the recited function. Such claim limitation(s) is/are: “a securement member” in claims 5 and 16, and “a drill attachment member” in claim 16.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6, 9-12, 16, and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the assembly" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the assembly" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 of this title, 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, 9-10, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Bedel (US 11,912,249) in view of Reilly et al. (US 6,705,597).
Regarding claim 1, Bedel discloses a connector system 10/36 for operationally coupling a drill 20 to a trailer-mounted mechanism 32, the assembly comprising: a drill attachment member 10 being elongated from a drill end 17 to an output end 13 of the drill attachment member, the drill attachment member being configured for being clamped by a chuck 24 (as seen in figure 3) of the drill adjacent to the drill end; and an input shaft 36 being engageable by the drill attachment member such that the input shaft is rotatable by the drill attachment member around a central axis of the input shaft (as seen in figures 1-3).
Bedel does not disclose the drill attachment member having a notch extending into the output end and extending transversely through the drill attachment member. Reilly et al. teaches the use of a drill attachment member 10 that comprises an output end 74 comprising a notch 78 extending into the output end and extending transversely through the drill attachment member for the purpose of receiving an inner pin-shaped portion 42 of a strap 34, wherein the strap may be received by the drill attachment member without having to remove the inner pin-shaped portion. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have combined the drill attachment member of Bedel with the notch of Reilly et al. in order to be able to use the drill attachment member to operationally coupling a drill to a trailer-mounted mechanism without having to remove a fastener of an alternate input shaft to connect the drill attachment member to the alternate input shaft.
Regarding claim 2, the modified invention of Bedel discloses wherein the drill attachment member 10 comprises: a drill portion 17 including the drill end 17 of the drill attachment member; and an output portion 13 including the output end 13 of the drill attachment member and being releasably couplable to the drill portion (as seen in figure 7).
Regarding claim 3, the modified invention of Bedel discloses wherein the output portion 13 has a recess (not shown but for receiving drive connection 17) extending into the output portion, the recess being complementary in shape to an opposing end of the drill portion 17 with respect to the drill end 17.
Regarding claim 4, the modified invention of Bedel discloses wherein the recess has a square shape (as seen in figure 7, the recess matches the shape of the end of drive connection 17, which appears to have a square shape). However, if it is to be argued that Bedel does not distinctly disclose that the recess and drive connection have matching square shapes, it would have been an obvious matter of design choice to make the different portions of the recess and drive connection to have a square shape for the purpose of providing a torque between the drill attachment member and a trailer-mounted mechanism. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)
Regarding claim 5, the modified invention of Bedel discloses wherein the drill attachment member 10 further comprises a securement member (left side in figure 7, which includes a biased pin that matches with a hole in the output portion 13 as evidenced in figure 4) for securing the drill portion 17 to the output portion 13, the securement member comprising a biased pin (not labeled but as discussed above) coupled to the drill portion and being biased to extend through a wall of the output portion when the drill portion is received into the recess. The pin must be a biased pin in order for it to recess into the drill attachment member 10 when assembling it with the output portion 13; however, if it is to be argued that Bedel does not distinctly disclose that the pin is a biased pin, the Examiner takes Official Notice that it is well known in the art of attachments to use a biased pin for this purpose.
Regarding claim 6, the modified invention of Bedel discloses wherein an outer surface of the drill attachment member 10 adjacent to the drill end 17 has a hexagonal shape (it may be square or hexagonal, see column 3, line 64 to column 4, line 4).
Regarding claim 9, the modified invention of Bedel discloses further comprising a locking pin 11 being insertable laterally through the input shaft 36 (see figure 2), the locking pin being receivable into the notch (as modified by Reilly et al.), the locking pin including a retainer (bolt head and nut as seen in figure 2) for retaining the locking pin on the input shaft.
Regarding claim 10, the modified invention of Bedel discloses wherein the drill attachment member 10 having a hole (for fastener 11, see figures 3 and 4) extending transversely through the drill attachment member and being positioned adjacent to the output end 13, the hole being radially spaced from the notch (as modified by Reilly et al.), the locking pin 11 being receivable into the hole of the drill attachment member.
Regarding claim 16, Bedel discloses a connector system 10/36 for operationally coupling a drill 20 to a trailer-mounted mechanism 32, the assembly comprising: a drill attachment member 10 being elongated from a drill end 17 to an output end 13 of the drill attachment member, an outer surface of the drill attachment member adjacent to the drill end having a hexagonal shape (it may be square or hexagonal, see column 3, line 64 to column 4, line 4), the drill attachment member being configured for being clamped by a chuck 24 (as seen in figure 3) of the drill adjacent to the drill end, the drill attachment member having a hole (for fastener 11, see figures 3 and 4) extending transversely through the drill attachment member and being positioned adjacent to the output end, the drill attachment member having a cavity (for input shaft 36, see figure 2) extending into the output end, the drill attachment member comprising: a drill portion 17 including the drill end of the drill attachment member; an output portion 13 including the output end of the drill attachment member and being releasably couplable to the drill portion (as seen in figure 7), the output portion having a recess (not shown but for receiving drive connection 17) extending into the output portion, the recess being complementary in shape to an opposing end of the drill portion with respect to the drill end, the recess having a square shape (as seen in figure 7, the recess matches the shape of the end of drive connection 17, which appears to have a square shape; however, if it is to be argued that Bedel does not distinctly disclose that the recess and drive connection have matching square shapes, it would have been an obvious matter of design choice to make the different portions of the recess and drive connection to have a square shape for the purpose of providing a torque between the drill attachment member and a trailer-mounted mechanism. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)); and a securement member (left side in figure 7, which includes a biased pin that matches with a hole in the output portion 13 as evidenced in figure 4) for securing the drill portion to the output portion, the securement member comprising a biased pin (not labeled but as discussed above; the pin must be a biased pin in order for it to recess into the drill attachment member 10 when assembling it with the output portion 13; however, if it is to be argued that Bedel does not distinctly disclose that the pin is a biased pin, the Examiner takes Official Notice that it is well known in the art of attachments to use a biased pin for this purpose) coupled to the drill portion and being biased to extend through a wall of the output portion when the drill portion is received into the recess; and an input shaft 36 being engageable by the drill attachment member such that the input shaft is rotatable by the drill attachment member around a central axis of the input shaft (as seen in figures 1-3).
Bedel does not disclose the drill attachment member having a notch extending into the output end and extending transversely through the drill attachment member, or the hole being radially spaced from the notch, or the cavity being in communication with the notch and the hole. Reilly et al. teaches the use of a drill attachment member 10 that comprises an output end 74 comprising a notch 78 extending into the output end and extending transversely through the drill attachment member for the purpose of receiving an inner pin-shaped portion 42 of a strap 34, wherein the strap may be received by the drill attachment member without having to remove the inner pin-shaped portion. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have combined the drill attachment member having a fastener hole as taught by Bedel with the notch of Reilly et al. in order to be able to use the drill attachment member to operationally coupling a drill to a trailer-mounted mechanism without having to remove a fastener of an alternate input shaft to connect the drill attachment member to the alternate input shaft, or to use the drill attachment member hole to attach the fastener to the disclosed input shaft.
Allowable Subject Matter
Claims 11-12 and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC A. GATES/Primary Examiner, Art Unit 3722 12 November 2025