DETAILED ACTION
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7 and 15-20, drawn to a retaining ring plier (apparatus), classified in B25B 7/12.
II. Claims 8-14, drawn to a method of installing a retaining ring, classified in B25B 27/20.
The inventions are independent or distinct, each from the other because: Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the claimed pliers may be used for other functions, such as clamping a workpiece between the tips or tip assemblies and/or removing a retaining ring.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The method as claimed is directed to specific functions that may vary with similar devices such that substantial burden would be placed on the examiner to search the claimed physical structure (apparatus) and the method simultaneously.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a conversation with Michael R. Schacht on 20 February 2026 a provisional election was made without traverse to prosecute invention I, claims 1-7 and 15-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 21 August 2025 have been considered by the examiner. However, the examiner notes that the IDS documents include an extensive number of references, most of which have little to no relevance to the specifics of the claimed invention of the current application. The majority of cited references have minimal relation to the claimed invention, many only being similar as hand tools with threaded actuators, but otherwise completely different functions and structure, and several having absolutely no relation to the claimed invention (such as US 9,701,179, US 7,717,573, US 5,350,183, US Pub. 2015/0183268, JP 4105881 B2, JP 62-192877, JP 10-4800, SU-1505740, and NPL doc to the anti-spill cup holder). Although the examiner has reviewed the applicant’s submitted references, the examiner does request that the applicant submit additional specific disclosure of any particularly relevant references to the current claimed invention, with the next response to the current Office Action, for more focused review by the examiner.
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 1-5 and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Madeira (3,365,782).
Regarding claim 1, Madeira discloses a retaining ring plier comprising: a drive system defining a drive axis and comprising a base member (34) defining a base drive opening, a carrier member (14) defining a carrier drive opening, and a drive rod (10) defining first and second surface portions, where the drive rod is arranged such that the first surface portion engages the base drive opening and the second surface portion engages the carrier drive opening; a first tip (30); a second tip (32); and a linkage system comprising a first drive link member (18) extending between the carrier member and the first tip, a second drive link member (20) extending between the carrier member and the second tip, at least one first guide link member (38) extending between the base member and the first tip, and at least one second guide link member (40) extending between the base member and the second tip; wherein axial rotation of the drive rod in a first rotation direction displaces the carrier member in a first drive direction relative to the base member; displacement of the carrier member in the first drive direction displaces, through the first and second drive links, the first and second tips in a first tip direction relative to each other; and the at least one first guide link and the at least one second guide link support the first and second tip assemblies to maintain a desired angular relationship between the first and second tips as the first and second tips are displaced relative to each other through the first and second drive links.
Regarding claims 3 and 15 (claim 15 only differing from claim 1 by defining a pair of first and second guide link members), Madeira further discloses that the linkage system comprises: at least two first guide link members (38; as see in Fig. 4) extending between the base member and the first tip, and at least two second guide link members (40; as see in Fig. 4) extending between the base member and the second tip.
Regarding claims 2 and 16, Madeira further discloses that axial rotation of the drive rod in a second rotation direction displaces the carrier member in a second drive direction relative to the base member; displacement of the carrier member in the second drive direction displaces, through the first and second drive links, the first and second tips in a second tip direction relative to each other.
Regarding claims 4 and 17, Madeira further discloses a drive handle (12) supported by the drive rod, where the drive handle facilitates axial rotation of the drive rod.
Regarding claim 5 and 18, Madeira further discloses a guide handle (12 may also be considered to be a guide handle) supported by the base member (via the threaded rod 10), where the guide handle facilitates manipulation of the retaining ring plier.
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 6, 7, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Madeira (3,365,782) as applied to claims 1 and 15, and in view of Madeira (3,228,101; to be referred to hereinafter as ‘101).
Regarding claims 6, 7, 19 and 20, Madeira further discloses a first tip assembly for supporting the first tip, comprising a first primary tip support assembly (upper end of link 18) and a first secondary tip support assembly (26), where the first primary tip support assembly supports the first secondary tip support assembly (via threaded fastener connecting the two) and the first secondary tip support assembly supports the first tip (by clamping the first tip between the primary and secondary tip assemblies); a second tip assembly for supporting the second tip, comprising a second primary tip support assembly (upper end of link 20) and a second secondary tip support assembly (28), where the second primary tip support assembly supports the second secondary tip support assembly (via threaded fastener connecting the two) and the second secondary tip support assembly supports the second tip (by clamping the second tip between the primary and secondary tip assemblies). However, Madeira fails to disclose that the first and second tip assemblies support the respective tips such that a location of the first tip relative to the drive axis is adjustable. ‘101 discloses a similar plier tool and nearly identical first and second tip assemblies, and further teaches that the tips (41a/472a) are mounted on angled posts (41/42), such that the orientation of the posts may be varied, by release of the tip support assemblies and rotation of the posts, to provide a range of tip locations and orientations relative to the drive axis of the plier, which will allow the plier to be adapted to different configurations of retaining rings and/or access retaining rings in different positions. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the tips of Madeira to be mounted on similar angled posts, such that the tip support assemblies will allow for adjustment of the location of the tips relative to the drive axis, as taught by ‘101, to similarly allow the plier to be adapted to different configurations of retaining rings and/or access retaining rings in different positions.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Each of Andrews (11,135,711), Hashimoto et al. (4,351,097) and Sweeney (5,971,378) disclose devices having similar structure and/or function as the applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN R MULLER whose telephone number is (571)272-4489. The examiner can normally be reached M-F 8am-5pm.
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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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/BRYAN R MULLER/Primary Examiner, Art Unit 3723 24 February 2026