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 Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1 is finally rejected under 35 U.S.C. 103 as being unpatentable over Richards (104,769) in view of Hill (2011/0203417) and Barna (4,487,566).
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Richards meets all of the limitations of claim 1, and its associated method of claim 22, i.e., a pin punch comprising:
an elongate body A,C,D having a length defined by a first axis longitudinal axis, wherein
the elongate body is comprised of a punch head C and a main body A,
the punch head C and the main body A are removable from each other @B, and
a bottom portion of the punch head is connected to a top portion of the main body Fig. 2, except for
a set of pin holes having openings positioned in a top face of the punch head, wherein the set of pins holes are circumferentially positioned on the top face and have lengths that are parallel to the first axis of the elongate body; and a punch head magnet embedded within the punch head of the elongate body, wherein the set of pin holes surround the punch head magnet, and the magnet is positioned and configured to transiently retain a removable firearm pin positioned in at least one hole of the set of pin holes.
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Richards teaches using friction or other means to secure the teat e. Hill teaches a magnetic nail punch with a center magnet 10 positioned on the punch head Fig. 2. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the punch of Richards with the center magnet as taught by Hill to secure the punch pin.
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Barna teaches a punching tool having interchangeable punches 62 positioned in a set of pin holes 48 having openings positioned in a top face of the punch head, wherein the set of pins holes are circumferentially positioned on the top face and have lengths that are parallel to the first axis of the elongate body Fig. 3. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the tool of Richards modified by Hill with both the interchangeable punches formed within a set of holes as taught by Barna to provide a set of punches for simultaneously moving into an out of a workpiece.
Claims 2, 4, 5 and 14-20 are finally rejected under 35 U.S.C. 103 as being unpatentable over PA as applied to claim 1 above, and further in view of Horne (2013/004783).
PA (prior art, Richards modified by Hill and Berna) as applied to claim 1 above, meets all of the limitations of 2, except for the punch to comprise a large pin receiver perpendicular to the first axis and a separate main body magnet positioned adjacent the large pin receiver.
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Horne teaches a punch pin having a central punch and a side punch 122, the large pin receiver is perpendicular to the first axis, and the magnet is positioned adjacent the large pin receiver. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to further modify the modified invention of PA with side punch as taught by Horne in further diversifying the tool and for better access or manipulation for some application. Regarding a main body magnet, the base reference, Richards teaches securing the bit within the chuck with friction or other means. It would have been obvious to one having ordinary skill in the art before the effective date of the invention, to provide a main body magnet to secure the bits in the side punch, since it has been held that mere duplication of the essential working parts of a devise involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
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Regarding claims 4 and 5, PA meets the limitations, i.e., PA meets the claim, except for the set of pin holes to have different diameters or lengths. Horne further teaches providing a plurality of elongated cavities 196 for receiving punches, the diameter, shape, cross-section and/or depth of which may be configured for the respective articled stored therein. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to further modify the modified invention of PA with pin holes 48 of different diameters and different lengths as taught by Horne in adapting the tool for a particular application requiring different sizes of holes punched.
Regarding claim 14, PA (prior art, Richards modified by Hill, Barna and Horne) meets the limitations, i.e., the pin punch and tool of claim 1, wherein the main body A,D Richards is comprised of a main body housing A, and large pin receiver 122 modified by Horne positioned through the main body A and the punch head C is comprised of a punch head body, the set of pin holes 48 modified by Barna and the punch head magnet 10 modified by Hill.
Regarding claim 15, PA meets the limitations, i.e., the pin punch of claim 14, wherein the punch head C is further comprised of a punch head connector @c-c on a bottom portion top defined by the tip of the punch head, wherein the punch head connector c-c is structured and configured to connect to the main body Via D.
Regarding claim 16, PA meets the limitations, i.e., the pin punch of claim 15, wherein the main body A,D Richards is further comprised of a punch head receptacle B on a top portion of the main body defined towards the tip, wherein the punch head receptacle is structured and configured to connect to the punch head Fig. 2 Richards.
Regarding claims 17, PA meets the limitations, i.e., the pin punch of claim 16, wherein the punch head connector c-c and punch head receptacle D are threadedly connectable such that the punch head receptacle D is a female threaded receptacle except for punch head connector to be a threaded, male connector. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to form the threaded connection without the collar D, and by forming a male thread c-c and a female B, as an alternative means of achieving the same results requiring routine experimentations with predictable results.
Regarding claim 18, PA meets the limitations, i.e., the pin punch of claim 16, wherein the punch head receptacle B/D is adjacent the large pin receiver along A, modified by Horne, and the main body magnet 10 modified by HILL is positioned on an opposing side of the large pin receiver, placed on the front face of the head.
Regarding claim 19, PA further modified for the threaded connection as applied to claim 17 above, meets the limitations, i.e., the pin punch of claim 18, wherein the punch head receptacle modified female B is internal to the main body A and is positioned above the large pin receiver 122 towards the tip, and the main body magnet 10 is internal to the main body and being positioned below the large pin receiver on the face C below 122 modified by Horne.
Regarding claim 20, PA meets the limitations, i.e., the pin punch of claim 14, wherein the punch head C is comprised of a metal material Richards, a pin e is located within a pin hole of the set of pin holes Fig. 3, Richards, and the punch head magnet retains the pin in the pin hole as modified, except for disclosing a different material for the punch head. It would have been obvious to one having ordinary skill in the art, before the effective date of the invention to form the punch head from a harder material, e .g., harden steel, for longevity since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 6, 8, 10-12 and 26-28 are finally rejected under 35 U.S.C. 103 as being unpatentable over PA as applied to claim 1 above, and further in view of Hall et al. (5,710,675 “Hall”).
PA (prior art, Richards modified by Hill and Berna) as applied to claim 1 above, meets all of the limitations of 6, except for the punch to comprise an attachment assembly.
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Hall teaches storing a secondary tool inside a handle of a hammer axe combination by an attachment assembly comprising a spring 68 ball detent 44. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to further modify the modified invention of PA with an attachment assembly as taught by Hall in adapting the punch for being received and carried in a hammer for convenance and further diversifying the tool for hammering and cutting operations.
Regarding claim 8, PA (prior art, Richards modified by Hill and Berna) as applied to claim 1 above, meets all of the limitations of 8, except for the punch to be in combination with a tool. Hall teaches storing a secondary tool inside a handle of a hammer/axe combination by an attachment assembly comprising a spring 68 ball detent 44. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to provide the modified invention of PA with an auxiliary hammer tool as taught by Hall in adapting the punch for being received and carried in the tool for convenance to further diversify the tool for hammering and cutting operations.
Regarding claim 10, PA meets the limitations, i.e., the pin punch and tool of claim 8, wherein the tool has a handle 12 and the pin punch is storable in a handle of the hammer Fig. 2.
Regarding claim 11, PA meets the limitations, i.e., the pin punch and tool of claim 10, wherein the pin punch is further comprised of a spring-loaded ball detent 44, 66 located near a bottom portion of the pin punch Fig. 1, the handle has an interior groove inside the handle configured to accept at least a portion of the spring-loaded ball detent Fig. 1, Hall, and a tab 60 or flange 88 is located on a side of the pin punch rear, opposite the spring-loaded ball detent i.e., 58 capable of defining a tab after initial release by depression 60.
Regarding claim 12, PA meets the limitations, i.e., the pin punch and tool of claim 11, wherein the handle includes a punch opening defined by the opening of the bottom chamber on a bottom surface of the hammer handle, and a tab opening 50 on a side of the hammer handle, wherein the tab of the pin punch is accessible through the tab opening. Note that limitations from specification are not read into the claims, “tab opening” is met by detent opening 42 allowing initial release of the punch to further engage the depression 66 and/or flange 58.
Regarding claim 26, PA meets the limitations, i.e., the pin punch and tool of claim 12, wherein the tab 60, Hall of the pin punch is fully exposed when the pin punch is stored inside the tool Fig. 2.
Regarding claim 27, PA meets the limitations, i.e., the pin punch and tool of claim 12, wherein the tab sists proud out of cutouts 50 form the profile of the handle. .
Regarding claim 28, PA meets the limitations, i.e., the pin punch and tool of claim 12, except for the tab to have ridges on its outer face. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to provide the modified invention of PA with a tab having knurling to provide sufficient grip for pulling the punch out of the handle, well within the knowledge of one of ordinary skill in the art.
Allowable Subject Matter
Claims 23-25 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.
Please note that indicated allowable claim 25 recites for a punch in combination with a tool, accordingly an allowable independent form should have a preamble reciting for a pin punch in combination with a tool.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Response to Arguments
Applicant's arguments filed February 5, 2026 have been fully considered but they are not persuasive. The argument regarding the anticipation and obviousness of the claims are acknowledged. The arguments regarding the removable punch head and body, the new grounds of rejections disclose a detachable punch head. The argument regarding central magnet and circumferentially arranged pin holes are met in the new grounds of rejections.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument of references individually, 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. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HADI SHAKERI whose telephone number is (571)272-4495. The fax phone number for forwarding unofficial documents for discussion purposes only is (571) 273-4495. The examiner can normally be reached on M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached on 571 272 8548. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hadi Shakeri/
May 29, 2026 Primary Examiner, Art Unit 3723
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