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 Objections
Claims 1, 5, and 11 are objected to because of the following informalities:
In claim 1, line 1 “handheld tool for opening and closing OS&Y valve” should be “handheld tool for opening and closing OS&Y (outside screw and yoke) valve” (see page 001, line 16-17 of specification for support);
In claim 1, line 2 and line 11 “ the tool” should be “the handheld tool”;
In claim 4, lines 1-2 “further comprise teeth on on the plurality of protrusions” should be “further comprise teeth on [[on]] the plurality of protrusions”
In claim 5, line 2 “comprise high friction surfaces for enhanced enhanced grip” should be “comprise high friction surfaces for enhanced
In claim 11, line 2 “the group consisting” should be “[[the]] a group consisting
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the handwheel" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-11 depends on claim 1 and are therefore rejected accordingly under 35 USC 112(b).
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ahn (KR 20170056882).
Regarding claim 1, Ahn discloses: a handheld tool (Figures 1-3B and see also paragraph 0011) for opening and closing OS&Y gate valves for controlling water flow to fire sprinkler systems (Applicant is reminded, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (See MPEP 2114 (II)), the tool comprising:
an elongated member (see figure 2 annotated below Detail A) having a long axis (see figure 2 annotated below X-X axis) lying in a first plane (see figure 2 annotated below Detail B) with a first end (see figure 2 annotated below Detail C) and a second end (see figure 2 annotated below Detail D), wherein the first end and the second end form a first handle (see figure 2 annotated below Detail E) and a second handle (see figure 2 annotated below Detail F), respectively;
a central curved portion (see figure 2 annotated below Detail G) curving in a direction substantially parallel with the first plane of the long axis (see figure 2 annotated below showing the central curved portion (Detail G) gradually curving to an apex plane (X2-X2 axis) in a direction substantially parallel with the first plane (Detail B) of the long axis (X-X axis));
a plurality of protrusions (see figure 2 annotated below Detail H), each protruding in a direction substantially perpendicular with the first plane of the long axis (see figure 2 annotated below showing the plurality of protrusions (Detail H) protruding in a direction substantially perpendicular (Y axis) with the first plane (Detail B) of the long axis (X-X axis)), the plurality of protrusions configured to engage one or more radial spokes on the handwheel (The examiner indicates that the handwheel and any associated structure (one or more radial spokes) has not been positively recited as part of the claimed invention (handheld tool). Furthermore, see figures 1 and 3A-3B showing the plurality of protrusions engage multiple different surfaces of the handle (element 1) of a valve (see paragraph 0014). Therefore, giving that the prior art discloses the handheld tool comprising the plurality of protrusions (Detail H), and giving that there is no additional structure or structural difference, thus the prior art would be capable of having the plurality of protrusions configured to engage one or more radial spokes on the handwheel, as recited.);
wherein an operator places the central curved portion around a central hub of the handwheel and the plurality of protrusions about one or more radial spokes of the handwheel for engagement (The examiner indicates that the handwheel and any associated structure (central hub or one or more radial spokes) has not been positively recited as part of the claimed invention (handheld tool). Furthermore, see figure 1 showing the central curved portion around a central hub and the plurality of protrusions engage multiple different surfaces of the handle (element 1) of a valve (see paragraph 0014). Therefore, giving that the prior art discloses the handheld tool comprising the central curved portion (Detail G), the plurality of protrusions (Detail H) and giving that there is no additional structure or structural difference, thus the prior art would be capable of having the operator places the central curved portion around a central hub of the handwheel and the plurality of protrusions about one or more radial spokes of the handwheel for engagement, as recited.);
further wherein the operator turns the elongated shape of the tool by gripping and moving the first handle and the second handle in a counterclockwise direction to open the OS&Y gate valve, wherein the plurality of protrusions simultaneously apply counterclockwise force to one or more spokes of the handwheel; further wherein the operator turns the elongated shape of the tool by gripping and moving the first handle and the second handle in a clockwise direction to close the OS&Y gate valve; wherein the plurality of protrusions simultaneously apply clockwise force to one or more spokes of the handwheel (The examiner indicates that the OS&Y gate valve and any associated structure (handwheel or one or more radial spokes) has not been positively recited as part of the claimed invention (handheld tool). Furthermore, see figures 3A-B showing the elongated shape of the tool being moved in a counterclockwise direction (figure 3a) while having the plurality of protrusions simultaneously engaging different portions of the handle (element 1) of a valve (see paragraph 0014) in order to turn the handle, and see also figure 3b showing the elongated shape of the tool being moved in a clockwise direction also simultaneously engaging different portions of the handle of the valve in order to turn the handle. Therefore, giving that the prior art discloses the handheld tool comprising the plurality of protrusions (Detail H) and giving that there is no additional structure or structural difference, thus the prior art would be capable of having wherein the operator turns the elongated shape of the tool by gripping and moving the first handle and the second handle in a counterclockwise direction to open the OS&Y gate valve, wherein the plurality of protrusions simultaneously apply counterclockwise force to one or more spokes of the handwheel; further wherein the operator turns the elongated shape of the tool by gripping and moving the first handle and the second handle in a clockwise direction to close the OS&Y gate valve; wherein the plurality of protrusions simultaneously apply clockwise force to one or more spokes of the handwheel, as recited.).
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Regarding claim 2, Ahn discloses: the handheld tool of claim 1, wherein the handheld tool comprises a cast molded unitary piece (See figure 1 annotated figure above showing the handheld tool as a single piece and furthermore, the applicant is claiming a product-by-process limitation (cast molded), MPEP 2113 clearly states "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different processes." In this instance, the product taught by Ahn is the same as or makes the product claimed obvious, meeting the limitation of the claim.
Regarding claim 11, Ahn discloses: the handheld tool of claim 1, wherein the handheld tool comprises a cross-sectional shape selected from the group consisting of square (see figures 1-4 showing portions (protrusions) being square in shape, thus having a cross-sectional shape of a square), circular, elliptical, triangular, hexagonal, and octagonal.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Ahn (KR 20170056882) in view of Cundiff (US Pub. No. 2018/0333830).
Regarding claim 3, Ahn discloses all the limitations as stated in the rejection of claim 1, but appears to be silent wherein the handheld tool comprises a material selected from the group consisting of steel, aluminum-magnesium, and titanium alloy.
Cundiff is also concern in providing a handheld tool (Figures 1-3 and see also paragraph 0028) for opening and closing valves (see paragraph 0005) and wherein the handheld tool comprises a material selected from the group consisting of steel (see paragraph 0030), aluminum-magnesium, and titanium alloy.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Ahn to incorporate the teachings of Cundiff to provide wherein the handheld tool comprises a material selected from the group consisting of steel, aluminum-magnesium, and titanium alloy. One of ordinary skill in the art would recognize that having the handheld tool made of steel would necessarily provide adequate strength and ductility for safe and reliable function as disclosed by Cundiff (see paragraph 0030).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ahn (KR 20170056882) in view of Pella (US Patent No. 4,715,252).
Regarding claim 4, Ahn discloses all the limitations as stated in the rejection of claim 1, but appears to be silent wherein the plurality of protrusions further comprise teeth on on the plurality of protrusions for enhanced grip.
Pella is also concern in providing a handheld tool (Figures 1-6 and see also col. 2, ll. 7-10) comprising a plurality of protrusions (elements 3 and 4) and the plurality of protrusions further comprise teeth on on the plurality of protrusions for enhanced grip (see figure 6, see also col. 2, ll. 7-21 where the prior art discloses element 3 contains “teeth”, and see also col. 2, ll. 22-35 where the prior art discloses element 4 contain “further teeth”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Ahn to incorporate the teachings of Pella to provide wherein the plurality of protrusions further comprise teeth on the plurality of protrusions for enhanced grip. One of ordinary skill in the art would recognize that having teeth on the protrusions would necessarily reduce any possibility of slippage as disclosed by Pella (see col. 2, ll. 35-36).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ahn (KR 20170056882) in view of Monroe (US Pub. No. 2012/0204684).
Regarding claim 5, Ahn discloses all the limitations as stated in the rejection of claim 1, but appears to be silent wherein the first and second handles of the handheld tool further comprise high friction surfaces for enhanced enhanced grip.
Monroe is also concern in providing a handheld tool (Figures 1-14 and see also paragraph 0053) comprising a handle (element 104) for interacting with a handwheel and spoke (see figure 8). Monroe further teaches wherein the handle of the handheld tool further comprise high friction surfaces for enhanced enhanced grip (see paragraph 0058 where the prior art discloses element 104 (handle) comprises “a textured grip portion 120” (surface) which “creates a high degree of friction”) .
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Ahn to incorporate the teachings of Monroe to provide wherein the handle of the handheld tool further comprise high friction surfaces for enhanced grip. The resultant combination would have the high friction surfaces of Monroe now on the first and second handles of Ahn. One of ordinary skill in the art would recognize that having high friction between the handle and a user's hand, preventing the handle from slipping during use as disclosed by Monroe (see paragraph 0058).
Claims 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ahn (KR 20170056882).
Regarding claim 6, Ahn discloses: the handheld tool of claim 1, wherein the handheld tool comprises a total length (see figure 2 annotated below Detail A), but appears to be silent wherein the total length is of 6" to 48".
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However, it would have been it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Ahn to provide wherein the total length is of 6" to 48", since such modification would involve a mere change in the size of the component. One of ordinary skill in the art would recognize that having a desired length of the tool would necessarily provide a suitable length of the hand tool in order to allow the user to easily maneuver the tool around and/or between objects during operations. (See MPEP 2144.04 (VI)(A)). Lastly, applicant has not disclosed that the following claim limitations solves any stated problem and has not placed any criticality on the claimed length, indicating simply that the handheld device “may” comprise the claimed total length (see page 70, lines 1-2 of the specification), thus not providing any unexpected result.
Regarding claim 7, Ahn discloses: the handheld tool of claim 1, wherein the central curved portion comprises a length (see figure 2 annotated below Detail A), but appears to be silent wherein the length is of 0.5" to 8".
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However, it would have been it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Ahn to provide wherein the length is of 0.5" to 8", since such modification would involve a mere change in the size of the component. One of ordinary skill in the art would recognize that having a desired length of the central curved portion would necessarily provide sufficient area for the tool to engage a workpiece during operations (See MPEP 2144.04 (VI)(A)). Lastly, applicant has not disclosed that the following claim limitations solves any stated problem and has not placed any criticality on the claimed length, indicating simply that the handheld device “may” comprise the claimed length (see page 70, lines 8-9 of the specification), thus not providing any unexpected result.
Regarding claim 8, Ahn discloses: the handheld tool of claim 1, wherein the central curved portion comprises a height (see figure 2 annotated below Detail A), but appears to be silent wherein the height is of 0.5" to 4".
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However, it would have been it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Ahn to provide wherein the height is of 0.5" to 4", since such modification would involve a mere change in the size of the component. One of ordinary skill in the art would recognize that having a desired height of the central curved portion would necessarily provide sufficient area for the tool to engage a workpiece during operations (See MPEP 2144.04 (VI)(A)). Lastly, applicant has not disclosed that the following claim limitations solves any stated problem and has not placed any criticality on the claimed height, indicating simply that the handheld device “may” comprise the claimed height (see page 70, lines 11-12 of the specification), thus not providing any unexpected result.
Regarding claim 9, Ahn discloses: the handheld tool of claim 1, wherein the handheld tool comprises a height (see figure 2 annotated below Detail A), but appears to be silent wherein the height is of 0.5" to 4".
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However, it would have been it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Ahn to provide wherein the height is of 0.5" to 4", since such modification would involve a mere change in the size of the component. One of ordinary skill in the art would recognize that having a desired length of the tool would necessarily provide a suitable height of the hand tool in order to allow the user to easily maneuver the tool around and/or between objects during operations (See MPEP 2144.04 (VI)(A)). Lastly, applicant has not disclosed that the following claim limitations solves any stated problem and has not placed any criticality on the claimed height, indicating simply that the handheld device “may” comprise the claimed height (see page 70, lines 14-15 of the specification), thus not providing any unexpected result.
Regarding claim 10, Ahn discloses: the handheld tool of claim 1, wherein the plurality of protrusions each comprises a width (see figure 2 annotated below Detail A), but appears to be silent wherein the width is of 0.25" to 3.5".
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However, it would have been it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Ahn to provide wherein the width is of 0.25" to 3.5", since such modification would involve a mere change in the size of the component. One of ordinary skill in the art would recognize that having a desired width of the plurality of protrusions would necessarily provide sufficient area for the tool to engage a workpiece during operations (See MPEP 2144.04 (VI)(A)). Lastly, applicant has not disclosed that the following claim limitations solves any stated problem and has not placed any criticality on the claimed width, indicating simply that the plurality of protrusions “may” comprise the claimed width (see page 70, lines 17-18 of the specification), thus not providing any unexpected result.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALBERTO SAENZ whose telephone number is (313)446-6610. The examiner can normally be reached Monday-Friday 7:30-4:30PM EST.
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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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/A.S./Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723