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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 25 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 25 recites “an arrest mechanism which retains the travel of the shaft relative said handle at a predetermined limit position to enable locking of the shaft against said handle”. This limitation is a repeat of claim 24, last 3 lines. It is unclear how claim 25 further limits claim 24.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 24 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Maness (USP 2,977,668).
Regarding claim 1, Maness discloses a hand operated filing tool comprising a gripping handle (20), an elongated shaft extending through the handle (figure 1); the shaft having a first working end (distal right of figure 1) including at least one filing surface along at least part of the length of the first working end of the shaft and a second working end (distal left of figure 1) including at least one filing surface along at least part of the length of the second working end of the shaft; the shaft and handle arranged to allow the handle to move between the working ends of the shaft, thereby allowing user selection of the at least one filing surface at either the first or second working ends (figure 3 and col. 2, lines 3-25).
Regarding claim 2, Maness discloses wherein the handle can be released
from the shaft and repositioned on the shaft at the same or opposite end of the
shaft (figure 3 and col. 2, lines 3-25).
Regarding claim 3, Maness discloses wherein the tool further comprises an arrest mechanism (30) which retains the travel of the shaft relative said handle (20) at a
predetermined limit position to enable locking of the shaft against said handle (figures 3 & 4 and col. 2, lines 3-6).
Regarding claim 4, Maness discloses wherein the arrest mechanism (30) is
provided by a shoulder formation (33/34) which provide an abutment and limits travel of
the handle along the shaft to a predetermined stop position (figures 1, 3 & 5).
Regarding claim 5, Maness discloses wherein the shaft can be rotated
relative to the handle (i.e. once shaft is released from the arrest mechanism 30, it can be rotated).
Regarding claim 6, Maness discloses wherein a keyway is provided in the
handle (i.e. the v shaped cavity 24: see figure 6 below) to match the selected profile of the shaft (col. 2, lines 57-61).
[AltContent: textbox (V shaped cavity 24)][AltContent: ]
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Regarding claim 24, Maness discloses a hand operated filing tool comprising a gripping handle (20), an elongated shaft extending through the handle (figure 1); the shaft having a first working end (distal right of figure 1) including at least one filing surface along at least part of the length of the first working end of the shaft and a second working end (distal left of figure 1) including at least one filing surface along at least part of the length of the second working end of the shaft; the shaft and handle arranged to allow the handle to move between the working ends of the shaft, thereby allowing user selection of the at least one filing surface at either the first or second working ends (figure 3 and col. 2, lines 3-25). Maness also discloses the tool further comprises an arrest mechanism (30) which retains the travel of the shaft relative said handle (20) at a predetermined limit position to enable locking of the shaft against said handle (figures 3 & 4 and col. 2, lines 3-6).
Regarding claim 25, Maness discloses wherein the tool further comprises an arrest mechanism (30) which retains the travel of the shaft relative said handle (20) at a
predetermined limit position to enable locking of the shaft against said handle (figures 3 & 4 and col. 2, lines 3-6).
Regarding claim 26, Maness discloses wherein the arrest mechanism (30) is
provided by a shoulder formation (33/34) which provide an abutment and limits travel of
the handle along the shaft to a predetermined stop position (figures 1, 3 & 5).
Regarding claim 27, Maness discloses wherein, the working ends of the shaft when viewed in cross section are selected from at least one of the following profiles; circular, concave, crescent shaped, square, triangular, rectangular, hexagonal, polygonal (figures 1-3).
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Maness (USP 2,977,668).
Maness discloses all aspects of the invention as set forth in the above rejection. Regarding claims 28-31, Maness is silent about the grade(s) of the file. Examiner takes Official Notice that it is old and well known in the rasp art to selected from a number of file grades or a combination thereof depending on the type of material the workpiece is made of, desired finishing on the workpiece etc. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to selected from a number of file grades or a combination thereof depending on the type of material the workpiece is made of, desired finishing on the workpiece etc.
Allowable Subject Matter
Claims 7-23 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA ADDISU at (571) 272-6082. The examiner can normally be reached on Monday - Friday 9:00 am - 5:00 pm (Mondays and Wednesday-Friday).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K. 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.
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/SARA ADDISU/Primary Examiner, Art Unit 3722 12/27/25