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 .
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.
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.
Claim 4 is 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. Specifically, claim 4 recites “…a second lock element disposed in a pivotal relationship with bottom structure…” with regards to the referenced bottom structure it is unclear whether it is the established bottom structure or a new bottom structure. Proper correction is required. For examination purposes the claim will be interpreted as if it stated “… the bottom structure…”.
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, 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 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (US 8225698, hereinafter “Yang”) in view of Chern (US 8555751, hereinafter “Chern”).
Regarding claim 1, Yang discloses a force amplified fastener assembly for removably coupling a detachable implement to a power tool, the force amplified fastener assembly (magnification driving tool as described in the abstract) comprising:
a top housing (cover 100 and polygonal hole 124, col 3 lines 18-27, 54-58 Fig 4 shown below);
a bottom structure (nut driven ring body 111, col 3 lines 28-35 Fig 4), wherein the top housing and bottom structure are configured to nest and provide an enclosed area for housing one or more components of the force amplified fastener assembly (as seen in Fig 4 the top housing and bottom structure nest and provide an enclosed area for housing many components of the assembly);
a fastening element disposed between the top housing and the bottom structure and at least partially within the enclosed area (nut 101, col 2 lines 59-63 Fig 4), wherein the fastening element is configured for engagement with a shaft of the power tool (nut is configured for engagement with the stud (equivalent of a shaft), col 2 lines 59-63);
a force amplifying gear train comprising a plurality of gears and at least one gear plate disposed in the enclosed area and in mechanical communication with the top housing, the bottom structure, and the fastening element (planetary gears 131 and gear plate 127 which are disposed in the enclosed area and in mechanical communication with the top housing, the bottom structure and the fastening element, col 3 lines 36-49 Fig 4 (examiner notes that mechanical communication is interpreted as physical contact either direct or via another piece or pieces of the assembly)), wherein the force amplifying gear train provides a mechanical advantage with respect to application of torque to the fastening element in response to torque applied to the top housing (torque applied to the top housing (through 124) is magnified through the gear train, col 4 lines 33-41).
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However, Yang fails to disclose a lock mechanism disposed at least partially within the enclosed area and operative to discourage rotation of the fastening element relative to the shaft in at least one rotational direction.
Chern is also concerned with tools that tighten or loosen and teaches a lock mechanism disposed at least partially within the enclosed area and operative to discourage rotation of the fastening element relative to the shaft in at least one rotational direction (pawl 30, positioning unit 12, and ratchet teeth 41 define a lock mechanism that discourage rotation in at least one rotational direction, col 2-3 lines 56-2 Fig 5 shown below ).
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It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have incorporated the lock mechanism of Chern with the force amplified fastener assembly of Yang in order to provide a tool capable of being utilized easily in situations with limited space or mobility.
Regarding claim 2, Yang, as modified, discloses the limitations of claim 1, as described above, and further discloses the lock mechanism comprises:
a first lock element configured to prevent relative movement of the top housing with respect to the gear plate in a first direction while allowing relative movement in a second direction when the lock mechanism is in a locked configuration (first lock element is defined as engaging teeth 32 of the pawl 30, which prevent movement in a first direction (defined as clockwise) while allowing movement in a second direction (defined as counter-clockwise) when the lock mechanism is in a locked configuration as shown below in Fig. 6, col 3 lines 29-39).
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Regarding claim 3, Yang, as modified, discloses the limitations of claim 2, as described above, and further discloses the first lock element is configured to prevent relative movement of the top housing with respect to the gear plate in the second direction while allowing relative movement in the first direction when the lock mechanism is in an unlocked configuration (teeth 32 prevent movement counter-clockwise while allowing clockwise movement when the lock mechanism is in an unlocked configuration as shown below in Fig. 8, col 3 lines 29-39).
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Regarding claim 4, Yang, as modified, discloses the limitations of claim 2, as described above, and further discloses the first lock element comprises a lock pawl (every individual tooth of 32 define a pawl), and wherein the lock mechanism further comprises:
a second lock element disposed in a pivotal relationship with bottom structure, wherein the second lock element is configured to allow the lock pawl to enter a lock position of the lock mechanism locked configuration when a portion of the second lock element is in a radially outward position and to encourage the lock pawl to enter an unlocked position of a lock mechanism unlocked configuration when the portion of the second lock element is in a radially inward position (spring 121 and recess 31 allow the lock pawl to enter the lock position when the spring is in a radially outward position (compressed) because 122 can then be urged to the locked position 31 as shown in Fig 6 and encourages the lock pawl to enter the unlocked position when the spring is in a radially inward position (extended) because 122 can be urged to the unlocked position 31 as shown in Fig 8).
Regarding claim 5, Yang, as modified, discloses the limitations of claim 2, as described above, and further discloses the first lock element comprises a lock pawl (every individual tooth of 32 define a pawl), and wherein the lock mechanism further comprises:
a second lock element disposed in a linear traversal relationship with the bottom structure, wherein the second lock element is configured to allow the lock pawl to enter a lock position of the lock mechanism locked configuration when a portion of the second lock element is in an un-depressed position and to encourage the lock pawl to enter an unlocked position of a lock mechanism unlocked configuration when the portion of the second lock element is in a depressed position (spring 121 and recess 31 allow the lock pawl to enter the lock position when the spring is in an undepressed position because 122 can then be urged to the locked position 31 as shown in Fig 6 and encourages the lock pawl to enter the unlocked position when the spring is in an un-depressed position because 122 can be urged to the unlocked position 31 as shown in Fig 8).
Regarding claim 6, Yang, as modified, discloses the limitations of claim 5, as described above, and further discloses the first lock element encourages the lock pawl to enter the unlocked position via a third lock element (defined as 122).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yang and Chern as applied to claim 1 above, and further in view of Brobst (US 2010/0180733, hereinafter “Brobst”).
Regarding claim 7, Yang, as modified, discloses the limitations of claim 1, as described above. However, Yang fails to disclose a grasping member assembly disposed upon a top surface of the top housing,
wherein the grasping member assembly is configured to facilitate manual application of torque to the top housing by a user.
Brobst is also concerned with tools that interface with fasteners and teaches a grasping member assembly (wrench 10) disposed upon a top surface of the top housing,
wherein the grasping member assembly is configured to facilitate manual application of torque to the top housing by a user (wrench 10 is capable of facilitating manual application of torque to the top housing of Yang, as described above, as the second end 68 could interface with polygonal hole 124 of Yang (it would have been obvious to one of ordinary skill in the art to modify the square cross section of 68 to be polygonal in order to mate with sockets of a polygonal shape)).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have added the grasping member assembly of Brobst to the force amplified fastener assembly of Yang in order to enable the tool to be used in tight spaces and without using a multitude of additional tools to operate (Brobst [0002]).
Regarding claim 8, Yang, as modified, discloses the limitations of claim 7, as described above, and further discloses the grasping member assembly comprises:
a plate affixed to the top housing (defined as flanges 52 of Brobst which would be affixed to the top housing of Yang during use of the grasping member of Brobst, [0029]); and
a handle hingedly disposed with respect to plate, wherein the handle is configured to be disposed in a use position and a storage position (handle 12 of Brobst where the storage position is when handle 12 is folded as much as possible towards body 16 and where the use position is when the handle 12 is around 90° from body 16, [0027] Fig 5 shown below).
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Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yang, Chern and Brobst as applied to claim 8 above, and further in view of Ragner (US 2015/0336257, hereinafter “Ragner”).
Regarding claim 9, Yang, as modified, discloses the limitations of claim 8, as described above. However, Yang, as modified, fails to disclose the plate comprises:
spring plate configured to encourage the handle to remain in the use position when the handle is positioned in the use position and to encourage the handle to remain in the storage position when the handle is positioned in the storage position.
Ragner is also concerned with tools that interface with fasteners and teaches the plate comprises:
spring plate (friction spring washer 57a [0096] Fig 2A shown below) configured to encourage the handle to remain in the use position when the handle is positioned in the use position and to encourage the handle to remain in the storage position when the handle is positioned in the storage position ([0096] explains that 57a provides a consistent pressure that provides friction to resist pivoting and so it would encourage the handle to remain in whatever position it was last urged to).
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It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have added the spring plate of Ragner to the force amplified fastener assembly of Yang in order to allow for smooth pivoting of the handle and provide a holding force for the handle once positioned (Ragner: [0096]).
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Yang and Chern as applied to claim 1 above, and further in view of Van Laere (US 4822958, hereinafter “Van Laere”).
Regarding claim 10, Yang, as modified, discloses the limitations of claim 1, as described above. However, Yang fails to disclose a removable and replaceable exterior surface covering configured to provide a protective surface for at least a portion of the force amplified fastener assembly.
Van Laere is also concerned with tools that drive fasteners and teaches a removable and replaceable exterior surface covering configured to provide a protective surface for at least a portion of the force amplified fastener assembly (shell 1 is removable and replaceable and provides a protective surface, col. 14 lines 30-41, Fig 1 shown below).
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It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have added the exterior surface covering of Van Laere to the force amplified fastener assembly of Yang in order to provide it with protection in an event where damage would occur on the tool.
Regarding claim 11, Yang, as modified, discloses the limitations of claim 10, as described above, and further discloses the removable and replaceable exterior surface covering comprises:
a replaceable jacket covering at least a portion of the top housing and at least a portion of the bottom structure, wherein the replaceable jacket provides a protective surface for the at least a portion of the top housing and at least a portion of the bottom structure, and wherein the replaceable jacket is configured to provide protection to at least a portion of the lock mechanism (replaceable jacket defined as the longitudinal walls of shell 1 as shown above which provide a protective surface for at least a portion of the top housing, bottom structure and lock mechanism).
Regarding claim 12, Yang, as modified, discloses the limitations of claim 10, as described above, and further discloses the removable and replaceable exterior surface covering comprises:
a replaceable cap covering at least a portion of the top housing, wherein the replaceable cap provides a protective surface for the at least a portion of the top housing, and wherein the replaceable cap is configured to provide protection to at least a portion of the lock mechanism (cap defined as the longitudinal walls of shell 1 as shown above which provide a protective surface for at least a portion of the top housing, bottom structure and lock mechanism).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6 of U.S. Patent No. 12408585. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Application, claim 1
US Patent No. 12408585, claims 1, 5-6
Claim 1, lines 1-2: a force amplified fastener assembly for removably coupling a detachable implement to a power tool, the force amplified fastener assembly comprising
Claim 1, lines 1-3: a force amplified fastener assembly for removably coupling a detachable implement to a power tool, the force amplified fastener assembly comprising
Claim 1, line 3: a top housing
Claim 1, line 4: a top housing
Claim 1, line 4: a bottom structure
Claim 1, line 5: a bottom structure
Claim 1, lines 4-6: wherein the top housing and bottom structure are configured to nest and provide an enclosed area for housing one or more components of the force amplified fastener assembly
Claim 1, line 4 and 9: a bottom structure nested within an area of the cupped casing (formed by the top housing), a force amplifying gear train disposed in the area of the cupped casing
*area of the cupped casing of ‘585 = enclosed area of instant app
Claim 1, lines 7-9: a fastening element disposed between the top housing and the bottom structure and at least partially within the enclosed area wherein the fastening element is configured for engagement with a shaft of the power tool
Claim 1, lines 6-8: a fastening element disposed between the top housing and the bottom structure and within the area of the cupped casing, wherein the fastening element is configured for engagement with a shaft of the power tool
*area of the cupped casing of ‘585 = enclosed area of instant app
Claim 1, lines 10-14: a force amplifying gear train disposed in the enclosed area and in mechanical communication with the top housing, the bottom structure, and the fastening element, wherein the force amplifying gear train provides a mechanical advantage with respect to application of torque to the fastening element in response to torque applied to the top housing
Claim 1, lines 9-13: a force amplifying gear train disposed in the area of the cupped casing and in mechanical communication with the top housing, the bottom structure, and the fastening element, wherein the force amplifying gear train provides a mechanical advantage with respect to torque to the fastening element in response to torque applied to the top housing
*area of the cupped casing of ‘585 = enclosed area of instant app
Claim 1, line 10: comprising a plurality of gears and at least one gear plate
Claim 5, lines 3-5: …a planetary gear configuration… a ring gear… and a sun gear…
Claim 6 line 3: …a gear plate…
Claim 1, lines 15-17: a lock mechanism disposed at least partially within the enclosed area and operative to discourage rotation of the fastening element relative to the shaft in at least one rotational direction
Claim 1, lines 14-16: a lock mechanism disposed within the area of the cupped casing of the top housing and operative to prevent rotation of the fastening element relative to the shaft in at least one rotational direction.
*area of the cupped casing of ‘585 = enclosed area of instant app
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M LARSON whose telephone number is (571)272-2765. The examiner can normally be reached Monday-Friday 8:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.M.L./ Examiner, Art Unit 3723
/BRIAN D KELLER/ Supervisory Patent Examiner, Art Unit 3723
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