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 .
Request for Continued Examination
A request for continued examination under 37 C.F.R. § 1.114, including the fee set forth in 37 C.F.R. § 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 C.F.R. § 1.114, and the fee set forth in 37 C.F.R. § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 C.F.R. § 1.114. Applicant’s submission filed on 01/02/2026 has been entered. Examiner notes that while two sets of amendments and arguments were filed on this date, they appear to be identical.
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:
“overstrike protector” (claim 4).
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.
Claim Rejections – 35 U.S.C. § 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 23-26 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 23 recites the limitation “an angled surface coupling the first side to the first plane” (line 11). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, claim 23 earlier recites “an inset cheek defined by a first plane”, which is interpreted as the inset cheek taking the form of or being located by a non-physical plane. Thus, it is unclear what “an angled surface coupling the first side to the first plane” means and how the first side could be coupled to such a non-physical plane via an angled surface. Additionally, it is unclear how the first side could be coupled to itself (the first plane), since the first plane and the inset cheek are already recited as part of the first side. Further, claim 23 recites “wherein the first plane extends flush from the handle”. This limitation is indefinite because it is unclear what are the metes and bounds of this limitation. For example, no surfaces of the handle are indicated by which to determine “extends flush”, and it is unclear if “flush” means a strict coplanar relationship or means something else such as abutting or adjacent. Examiner notes that the specification does not use the terms “plane” or “angle” or “angled surface” or “flush” (in this context), and at best, support for this claim comes solely from the drawings. Applicant is cautioned to not introduce unsupported subject matter into the claims, which may lead to a § 112(a) rejection. For examination purposes, this limitation is interpreted as best understood. Claims 24-26 are rejected on the basis they incorporate this limitation of claim 23.
Claim 25 recites the limitation “the window” (line 3). There is insufficient antecedent basis for this limitation in the claim, which renders the claim unclear and ambiguous (does this refer to the first window, second window, or some other window?). For examination purposes, this limitation is interpreted as best understood.
Claim Rejections – 35 U.S.C. § 103
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 C.F.R. § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
West in view of Chambers and Heinrich
Claims 1, 8, 21, and 22 are rejected under 35 U.S.C. § 103 as being unpatentable over US 20180079062 A1 (“West”) in view of US 468191 A (“Chambers”) and US 2451217 A (“Heinrich”).
West pertains to a hammer (Abstr.; Figs. 1-4). Chambers pertains to a hammer (Figs. 1-3). Heinrich pertains to a hammer (Figs. 1-2). These references are in the same field of endeavor.
Regarding claim 1, West discloses a striking tool (Figs. 1-7, tool 100) comprising:
a head, said head defining a striking surface on a front side and said head having an opening (Figs. 1-4, head 110 with striking surface 118 on a front side and opening (near reference 200 (Fig. 3)) leading to cavity 400);
said head comprising a first side and a second side opposite the first side, wherein one of the first side and the second side define an inset cheek (Figs. 1-4, head 110 has a first side (near reference 214 (Fig. 2)) and a second side opposite the first side, with an inset cheek on one side (at reference 214));
a handle coupled to or extending from said head (Figs. 1-4, handle 108 coupled to head 110);
and an insert removably insertable into the opening of said head (Figs. 1-4; ¶¶ 0021-0022, insert 413 (including contents 412) is removable through opening of head),
said insert comprising:
a cartridge having an interior space (Figs. 1-4; ¶¶ 0021-0022, cartridge 413 has interior space therein),
a damping member disposed in the interior space (Figs. 1-4; ¶¶ 0021-0022, shot 412 (e.g., half of the amount of shot shown)),
and an insert body disposed in the interior space, said insert body being movable with respect to said cartridge in order to allow said damping member to dampen vibration in said head (Figs. 1-4; ¶¶ 0021-0022, shot 412 (e.g., the other half of the amount of shot shown) is capable of reducing vibration in the head when head is struck against an object).
West does not explicitly disclose:
said head having an opening accessible from a rear side opposing the front side,
the inset cheek defining a first window extending into the opening of said head;
said insert visible through the first window when inserted into said head.
However, the West/Chambers combination makes obvious this claim.
Chambers discloses:
said head comprising a first side and a second side opposite the first side, wherein one of the first side and the second side define an inset cheek, the inset cheek defining a first window extending into the opening of said head (Figs. 1-2, head 10 has a first side and a second side opposite the first side, a window 13 in the inset cheek of the first side that extends into opening 11 of head 10);
said insert visible through the first window when inserted into said head (Figs. 1-2, insert 14 is visible through window 13).
Heinrich discloses:
said head having an opening accessible from a rear side opposing the front side (Fig. 1, head as shown with striking face 12 on front side and an opening 20 accessible from the rear side (towards reference 21), with insert 25 comprising a cartridge 26 filled with lead for a damping effect; 1:35-2:18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Chambers with West by adding a window in the cheek of the head as taught by Chambers. This would have been obvious to a person of ordinary skill in the art because the window would allow a user to see that an insert is present (or not) within the opening of the hammer head (note that the insert 413 of West is removable/replaceable by way of removing striking cap 112; see also claim 2 re removal of the cartridge 413) (see US 20220347827 A1 (“Horgan”) Figs. 1-3; ¶¶ 0026, 0030, disclosing a “see-through window” that allows a user to see the amount of damping fill material inside the hammer).
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Heinrich with the West/Chambers combination by adding a rear opening. This would have been obvious to a person of ordinary skill in the art because this would provide a user with access to the removable insert inside the head in order to remove the insert in the situation where the insert is stuck due to corrosion or deformation of the insert or surrounding opening (e.g., a user can force the insert towards the front side by inserting a punch into the rear opening).
Regarding claim 8, the West/Chambers/Heinrich combination makes obvious the striking tool of claim 1 as applied above. West further discloses wherein striking surface has a center, and wherein said insert has a longitudinal axis extending through the center (Figs. 1-4; ¶ 0023, longitudinal axis 418 of insert 413 extends through the center 419 of striking surface 118).
Regarding claim 21, the West/Chambers/Heinrich combination makes obvious the striking tool of claim 1 as applied above.
West further discloses:
wherein the other of the first side and the second side defines a second inset cheek (Figs. 1-4, head 110 has a first side (near reference 214 (Fig. 2)) and a second side opposite the first side, with an inset cheek on both sides (at reference 214));
Chambers further discloses:
the second inset cheek defining a second window extending into the opening of said head such that said insert is visible through each of the first window and the second window from the first side and the second side of said head, respectively (Figs. 1-2, head 10 has a first side and a second side opposite the first side, a window 13 in the inset cheek of one side that extends into opening 11 of head 10, insert 14 is visible through window 13; see discussion below re “the second inset cheek defining a second window”).
The obviousness rationale of claim 21 is the same as for claim 1, with the addition that it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to add a second window on the opposite inset cheek as well. Although Chambers only explicitly discloses the use of one window, the addition of another window on the other side would allow a user to see whether an insert is present without regard to which side of the hammer is facing him. Applicant states no novel or unexpected result due to having a window on both sides of the hammer (Spec. ¶ 0038). In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced”); MPEP § 2144.04(VI)(B).
Regarding claim 22, the West/Chambers/Heinrich combination makes obvious the striking tool of claim 1 as applied above. Based on the West/Chamber/Heinrich combination of claim 1, the limitation “wherein the first window and the second window define a transverse through hole through said head” is satisfied as the first window and the second window (as added for claim 21) creates a through hole that is through the head (i.e., through the cheek of the head).
West in view of Chambers, Heinrich, Lo, and Bendorf
Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over US 20180079062 A1 (“West”) in view of US 468191 A (“Chambers”), US 2451217 A (“Heinrich”), US 20060100029 A1 (“Lo”), and US 20220016752 A1 (“Bendorf”).
West pertains to a hammer (Abstr.; Figs. 1-4). Chambers pertains to a hammer (Figs. 1-3). Heinrich pertains to a hammer (Figs. 1-2). Bendorf pertains to a hammer (Abstr.; Figs. 1-9). These references are in the same field of endeavor. Lo pertains to golf club with removable damping members (Abstr.; Figs. 1-9) and is reasonably pertinent to the problem faced by the inventor because it concerns design details of a damper used to reduce vibrations in an impact tool.
Regarding claim 2, the West/Chambers/Heinrich combination makes obvious the striking tool of claim 1 as applied above. West, Chambers, and Heinrich do not explicitly disclose wherein said cartridge is threadably coupled to said head. However, the West/Chambers/Heinrich/Lo/Bendorf combination makes obvious this claim.
Lo discloses wherein said cartridge is threadably coupled to said head (Figs. 1-9; ¶¶ 0026-0032, damper cartridge 3 is coupled to head 2 via threads 31 and 22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Lo and Bendorf with the West/Chambers/Heinrich combination to add threads to the cartridge 413 (and mating threads to the head opening). This would have been obvious to a person of ordinary skill in the art because the addition of threads would better secure the cartridge 413 in the head opening. Further, the use of threads would allow for easier removal of the cartridge 413 from the head opening (e.g., the cartridge could be stuck inside the head opening but its threads would force it outward for removal). A reason for removal of the internal cartridge is to change the weight or damping effect of the cartridge (Bendorf ¶¶ 0024, 0029, 0031, 0034, 0035).
West in view of Chambers, Heinrich, Deros, and Anderson
Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over US 20180079062 A1 (“West”) in view of US 468191 A (“Chambers”), US 2451217 A (“Heinrich”), US 20060021473 A1 (“Deros”), and US 1752221 A (“Anderson”).
West pertains to a hammer (Abstr.; Figs. 1-4). Chambers pertains to a hammer (Figs. 1-3). Heinrich pertains to a hammer (Figs. 1-2). Deros pertains to a hammer (Abstr.; Figs. 1-4). Anderson pertains to a guard for an axe (Figs. 1-3). These references are in the same field of endeavor.
Regarding claim 4, the West/Chambers/Heinrich combination makes obvious the striking tool of claim 1 as applied above. West, Chambers, and Heinrich do not explicitly disclose wherein said handle has a slot at a top thereof, wherein said head comprises a head body disposed in the slot, wherein said striking tool further comprises an overstrike protector and a number of fasteners, and wherein said number of fasteners extend through said overstrike protector, said top of said handle, and said head body in order to couple said handle to said head, and said overstrike protector to said head and said handle. However, the West/Chambers/Heinrich/Deros/Anderson combination makes obvious this claim.
Deros discloses wherein said handle has a slot at a top thereof, wherein said head comprises a head body disposed in the slot, wherein said striking tool further comprises an overstrike protector and a number of fasteners, and wherein said number of fasteners extend through said overstrike protector, said top of said handle, and said head body in order to couple said handle to said head, and said overstrike protector to said head and said handle (Fig. 2; ¶ 0003, head 20 has a plate that extends into slot of handle 22, with fasteners 26 that extend through and couple handle 22 and the plate of head 20, and protector apron 24; Fig. 1; fasteners 16 secure protector apron 14 to handle 12 and head 10 (by way of handle 12); the limitation “overstrike protector” is interpreted under § 112(f), which includes a sheet or an apron, and equivalents thereof (Spec. Fig. 5A; ¶ 0032)).
Anderson discloses wherein said striking tool further comprises an overstrike protector and a number of fasteners, and wherein said number of fasteners extend through said overstrike protector...to couple...said overstrike protector to said head and said handle (Figs. 1-3, shield 12 is coupled to handle (and to head via handle) by fasteners 15; the limitation “overstrike protector” is interpreted under § 112(f), which includes a sheet or an apron, and equivalents thereof (Spec. Fig. 5A; ¶ 0032)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Deros and Anderson with the West/Chambers/Heinrich combination by adding a “overstrike protector” and fasteners, and to assemble the hammer as recited (including the use of a head body and handle slot as taught by Deros). This would have been obvious to a person of ordinary skill in the art because the addition of an “overstrike protector” protects the handle from damage, and the use of fasteners for assembly in the manner recited allows for replacement of the handle or the head when damaged (Deros ¶ 0003). Although in Deros Fig. 2, the “overstrike protector” is not coupled to the head and handle via fasteners 26 that extend through the “overstrike protector”, this is shown in the embodiment of Deros Fig. 1 (but Deros Fig. 1 is silent about the assembly of the head to the handle). Nevertheless, it would have been obvious to a person of ordinary skill to modify the Deros protector apron 24 to wrap completely around the handle (as taught by Anderson Figs. 1-3), such that the fasteners 26 (Deros Fig. 2) would also secure the “overstrike protector” to the handle and head body because this modified protector apron would also protect the sides of the handle from damage, and the use of fasteners that extend through the protector apron would provide additional security of the protector apron to the handle.
West in view of Chambers, Heinrich, Keast, and Gallo
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over US 20180079062 A1 (“West”) in view of US 468191 A (“Chambers”), US 2451217 A (“Heinrich”), US 20190084141 A1 (“Keast”), and US D497087 S (“Gallo”).
West pertains to a hammer (Abstr.; Figs. 1-4). Chambers pertains to a hammer (Figs. 1-3). Heinrich pertains to a hammer (Figs. 1-2). Keast pertains to a hammer (Abstr.; Fig. 1). These references are in the same field of endeavor. Gallo pertains to a bottle opener (Fig. 1) and is reasonably pertinent to the problem faced by the inventor because it concerns design details of a bottle opener.
Regarding claim 5, the West/Chambers/Heinrich combination makes obvious the striking tool of claim 1 as applied above. West further discloses wherein said handle has a bottom (Figs. 1-4, bottom of handle 108). West, Chambers, and Heinrich do not explicitly disclose a bottle opener tab having a projection, wherein said handle has a bottom, wherein said bottom defines a step having a lower portion and a raised portion, wherein said bottle opener tab is connected to said raised portion, and wherein said projection extends outwardly over the lower portion of the step. However, the West/Chambers/Heinrich/Keast/Gallo combination makes obvious this claim.
Keast discloses:
a bottle opener tab having a projection, wherein said handle has a bottom (Figs 1-4; ¶ 0059, bottom of handle 8 has bottle opener 40).
Gallo discloses:
a bottle opener tab having a projection, wherein said handle has a bottom, wherein said bottom defines a step having a lower portion and a raised portion, wherein said bottle opener tab is connected to said raised portion, and wherein said projection extends outwardly over the lower portion of the step (Figs. 1-6, see annotated Fig. 6 below, the “projection” extends outwardly over the lower portion of the step when viewed in certain perspectives, such as in the perspective of Axis A).
[AltContent: arrow][AltContent: textbox (“Raised portion” of step)][AltContent: textbox (“Step” of handle bottom)][AltContent: textbox (Bottom of handle)][AltContent: ]
[AltContent: arrow][AltContent: textbox (“Lower portion” of step)][AltContent: textbox (Axis A)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Bottle opener tab with projection)][AltContent: arrow]
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Gallo Fig. 6 (annotated)
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Keast and Gallo with the West/Chambers/Heinrich combination by adding a bottle opener at the bottom of the handle (as taught by Keast) and having the recited structure (as taught by Gallo). This would have been obvious to a person of ordinary skill in the art because adding a bottle opener adds functionality (Keast ¶ 0059) and the use of the Gallo bottle opener design allows for opening of larger sized bottle caps compared to the Keast design (which is limited to the size that would fit inside the opening of 40 (Keast Fig. 1)). Examiner notes that the design of Gallo is a bottom opener located at the bottom of the handle of a hammer; and even though the Gallo hammer design is primarily for ornamental purposes, it is still capable of functioning as a hammer to strike an object.
West in view of Chambers, Heinrich, and West2
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over US 20180079062 A1 (“West”) in view of US 468191 A (“Chambers”), US 2451217 A (“Heinrich”), and US 20160039078 A1 (“West2”).
West pertains to a hammer (Abstr.; Figs. 1-4). Chambers pertains to a hammer (Figs. 1-3). Heinrich pertains to a hammer (Figs. 1-2). West2 pertains to a hammer (Abstr.; Figs. 1-5). These references are in the same field of endeavor.
Regarding claim 7, the West/Chambers/Heinrich combination makes obvious the striking tool of claim 1 as applied above. West, Chambers, and Heinrich do not explicitly disclose wherein said head further has a slot extending from the striking surface into a main portion of said head, wherein the slot is disposed at a top of said head and is configured for accepting a fastener, and wherein said striking tool further comprises at least one magnet coupled to said head in order to allow the fastener to be maintained in the slot. However, the West/Chambers/Heinrich/West2 combination makes obvious this claim.
West2 discloses wherein said head further has a slot extending from the striking surface into a main portion of said head, wherein the slot is disposed at a top of said head and is configured for accepting a fastener, and wherein said striking tool further comprises at least one magnet coupled to said head in order to allow the fastener to be maintained in the slot (Figs. 1-5; ¶ 0024, nail starter 36 has slot 38 extends from striking surface 32 at top of head 16 and is capable of accepting a fastener, and includes magnet 42 which is capable of maintaining a fastener in the slot 38).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of West2 with the West/Chambers/Heinrich combination by modifying the nail starter 210 of West (West Figs. 1-4) in the manner claimed. This would have been obvious to a person of ordinary skill in the art because the West2 nail starter 36 design is an improvement that has a longer slot (to the striking surface) and a magnet to better secure a fastener to the hammer. Examiner notes that the inventor of West and West2 is the same.
West in view of Chambers, Heinrich, and Falzone
Claims 9 and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over US 20180079062 A1 (“West”) in view of US 468191 A (“Chambers”), US 2451217 A (“Heinrich”), and US 2776689 A (“Falzone”).
West pertains to a hammer (Abstr.; Figs. 1-4). Chambers pertains to a hammer (Figs. 1-3). Heinrich pertains to a hammer (Figs. 1-2). Falzone pertains to a hammer (Figs. 1-2). These references are in the same field of endeavor.
Regarding claim 9, the West/Chambers/Heinrich combination makes obvious the striking tool of claim 1 as applied above. West, Chambers, and Heinrich do not explicitly disclose wherein said damping member is a biasing member. However, the West/Chambers/Heinrich/Falzone combination makes obvious this claim.
Falzone discloses wherein said damping member is a biasing member (Figs. 1-2; 2:9-19, spring 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Falzone with the West/Chambers/Heinrich combination by modifying the “damping member” of West (e.g., an amount of shot 412) to include a spring (and also to include a slidable wall or disc in the interior space to separate shot 412 from the spring). This would have been obvious to a person of ordinary skill in the art because a spring is well known in the art to dampen shock from impact (Falzone 2:9-19, “The spring will also tend to absorb the emphatic shocks”; see also US 6016722 A (“Gierer”) Figs. 3-5; 4:26-62, spring 64 biases against body insert 62 to provide a damping effect).
Regarding claim 10, the West/Chambers/Heinrich/Falzone combination makes obvious the striking tool of claim 9 as applied above. West further discloses wherein said body of said insert has a cavity disposed therein in order to reduce [a] mass of said body of said insert (Fig. 4, cavities are disposed among the collective body of shot 412, which reduces the mass of the body).
West in view of Chen
Claims 23 and 24 are rejected under 35 U.S.C. § 103 as being unpatentable over US 20180079062 A1 (“West”) in view of US 20100038609 A1 (“Chen”).
West pertains to a hammer (Abstr.; Figs. 1-4). Chen pertains to a hammer (Abstr.; Fig. 1). These references are in the same field of endeavor.
Regarding claim 23, West discloses a striking tool (Figs. 1-7, tool 100) comprising:
a head, said head extending longitudinally between a striking surface and a rear claw and extending transversely between a first side and a second side, the first side comprising an inset cheek defined by a first plane, said head having an opening disposed longitudinally between the striking surface and the rear claw (Figs. 1-4, head 110 with striking surface 118, rear claw 120, first and second sides (including surface at reference 214 and the complimentary surface on the opposite, hidden side), the first side having an inset cheek defined by a plane (e.g., by a plane defined by three points on the inset cheek surface (at reference 214)), and opening (near reference 200 (Fig. 3)) leading to cavity 400),
said head having a top face... (Figs. 1-4, top face at reference 114);
a handle coupled to or extending from said head, wherein each of the first side and the second side of the head extend laterally beyond the handle (Figs. 1-4, handle 108 coupled to head 110, first and second sides of head extend laterally beyond the profile of the handle (e.g., portion of sides near reference 202 in Fig. 2)),
and wherein the first plane extends flush from the handle (Figs. 1-4, a number of various planes (e.g., planes that define the inset cheek above can be flush, adjacent to, or abutting the handle);
an angled surface coupling the first side to the first plane (Figs. 1-4, angled surface (see reference 300 in Fig. 3, but for the first side) couples the first side to the first plane that defines the inset cheek);
and an insert removably insertable into the opening of said head (Figs. 1-4; ¶¶ 0021-0022, insert 413 (including contents 412) is removable through opening of head),
said insert comprising:
a cartridge having an interior space (Figs. 1-4; ¶¶ 0021-0022, cartridge 413 has interior space therein),
a damping member disposed in the interior space (Figs. 1-4; ¶¶ 0021-0022, shot 412 (e.g., half of the amount of shot shown)),
an insert body disposed in the interior space, said insert body being movable with respect to said cartridge in order to allow said damping member to dampen vibration in said head (Figs. 1-4; ¶¶ 0021-0022, shot 412 (e.g., the other half of the amount of shot shown) is capable of reducing vibration in the head when head is struck against an object).
West does not explicitly disclose:
said head having a top face defining a tapered channel, said tapered channel extending from one of the first side and the second side transversely into said head in order to allow said head to detach nails from structures.
However, the West/Chen combination makes obvious this claim.
Chen discloses:
said head having a top face defining a tapered channel, said tapered channel extending from one of the first side and the second side transversely into said head in order to allow said head to detach nails from structures (Figs. 1-5, top face of head as tapered channels 11 extending transversely from a side into the head and are capable of detaching nails).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Chen with West to modify the top face of the West head to add the tapered channels (as taught by Chen) because this would add additional nail-pulling functionality to the West hammer: “However, a hammer may be used in environments in which it is difficult to maneuver the hammer. For pulling nails in a narrow space or corner area, the claw may be not smoothly attachable to the nails to be pulled. In that case, it is difficult to pull the nails with a conventional claw hammer.... It is one object of the present invention to provide a hammer with a specifically designed hammerhead, which is convenient for use to pull nails in different environments, free from space and angle limitations.” (Chen ¶¶ 0004-0005).
Regarding claim 24, the West/Chen combination makes obvious the striking tool of claim 23 as applied above.
Based on the West/Chen combination of claim 23, the limitation “wherein the tapered channel extends vertically into at least a portion of the inset cheek” is satisfied (see Chen Fig. 3, showing channels 11 extending vertically into the cheek).
West in view of Chambers, Heinrich, and Chen
Claims 6 and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over US 20180079062 A1 (“West”) in view of US 468191 A (“Chambers”), US 2451217 A (“Heinrich”), and US 20100038609 A1 (“Chen”).
West pertains to a hammer (Abstr.; Figs. 1-4). Chambers pertains to a hammer (Figs. 1-3). Heinrich pertains to a hammer (Figs. 1-2). Chen pertains to a hammer (Abstr.; Fig. 1). These references are in the same field of endeavor.
Regarding claim 6, the West/Chambers/Heinrich combination makes obvious the striking tool of claim 1 as applied above. West, Chambers, and Heinrich do not explicitly disclose wherein said head comprises a top having a tapered channel extending from at least one of the first side and the second side of said head transversely into said head in order to allow said head to detach nails from structures. However, the West/Chambers/Heinrich/Chen combination makes obvious this claim.
Chen discloses wherein said head comprises a top having a tapered channel extending from at least one of the first side and the second side of said head transversely into said head in order to allow said head to detach nails from structures (Figs. 1-5, top face of head as tapered channels 11 extending transversely from a side into the head and are capable of detaching nails).
The obviousness rationale for claim 6 is the same as for claim 23, but depending from claim 1.
Regarding claim 25, the West/Chen combination makes obvious the striking tool of claim 24 as applied above. West and Chen do not explicitly disclose wherein the inset cheek defines a first window extending into the opening of said head, and wherein said insert is visible through the window. However, the West/Chambers/Chen combination makes obvious this claim.
Chambers discloses wherein the inset cheek defines a first window extending into the opening of said head, and wherein said insert is visible through the window (Figs. 1-2, head 10 has a first side and a second side opposite the first side, a window 13 in the inset cheek of the first side that extends into opening 11 of head 10, insert 14 is visible through window 13).
The obviousness rationale for claim 25 is the same as for claim 1, but depending from claim 24.
West in view of Chen and West2
Claim 26 is rejected under 35 U.S.C. § 103 as being unpatentable over US 20180079062 A1 (“West”) in view of US 20100038609 A1 (“Chen”) and US 20160039078 A1 (“West2”).
West pertains to a hammer (Abstr.; Figs. 1-4). Chen pertains to a hammer (Abstr.; Fig. 1). West2 pertains to a hammer (Abstr.; Figs. 1-5). These references are in the same field of endeavor.
Regarding claim 26, the West/Chen combination makes obvious the striking tool of claim 24 as applied above. West and Chen do not explicitly disclose wherein said head further has a slot extending from the striking surface into a main portion of said head, wherein the slot is disposed at a top of said head and is configured for accepting a fastener, and wherein said striking tool further comprises at least one magnet coupled to said head in order to allow the fastener to be maintained in the slot. However, the West/Chen/West2 combination makes obvious this claim.
West2 discloses wherein said head further has a slot extending from the striking surface into a main portion of said head, wherein the slot is disposed at a top of said head and is configured for accepting a fastener, and wherein said striking tool further comprises at least one magnet coupled to said head in order to allow the fastener to be maintained in the slot (Figs. 1-5; ¶ 0024, nail starter 36 has slot 38 extends from striking surface 32 at top of head 16 and is capable of accepting a fastener, and includes magnet 42 which is capable of maintaining a fastener in the slot 38).
The obviousness rationale is the same as for claim 7, but depending from claim 24.
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 3 and 11-20 have been canceled. Claims 1-2, 4-10, and 21-26 are pending. Claims 1-2, 4-10, and 21-26 are rejected.
Claims – In light of Applicant’s claim amendments, the § 112(b) rejection of claim 21 is hereby withdrawn. However, see new § 112(b) rejections above due to the amendments.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive.
Contrary to Applicant’s assertion (Reply at 8-11), Applicant’s previous arguments (and the currently repeated arguments) regarding lack of motivation or explanation were previously addressed (10/01/2025 Office Action at 24-25). As previously explained, the proposed combination of the Chambers window does not require modifying Chambers or using other parts of Chambers. As stated in the rejection of claim 1 above, the teaching relied upon from Chambers is that of the window, which produces an opening through the cheek of the hammer (Chambers Figs. 1-2). The proposed combination modifies the inset cheek of West, adding a window (as taught by Chambers) to reveal the shock absorbing insert inside the West head. The proposed combination modifies West based on Chambers’s teachings; the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981); MPEP § 2145(III).
Regarding the alleged lack of motivation or explanation, Applicant should note that the question is not whether an invention was obvious to the inventor, Applicant, or even a single prior-art author, but whether the invention was obvious to a person of ordinary skill in the art before the effective filing date of the application. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). There is no requirement under KSR for the prior art to explicitly state an exact technique for obtaining a result (e.g., detecting an interdental gap) if a person of ordinary skill could ascertain how the result could be accomplished based on the prior art in combination with the person’s logic, judgment, and common sense. Id. at 418 (“the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“an analysis of obviousness...also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion”).
Applicant’s arguments for amended claims 1 and 23 are addressed in the rejections above. Applicant does not present any further arguments concerning the remaining claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723