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 .
Drawings
The drawings are objected to because Fig. 3 is low resolution, dithered, and in grayscale/halftones, rendering them visually unclear. In accordance with 37 C.F.R. § 1.84(a)(1), black and white drawings are normally required; India ink, or its equivalent that secures solid black lines, must be used for drawings. Every line, number, and letter must be durable, clean, black, sufficiently dense and dark, and uniformly thick and well-defined, and the weight of all lines and letters must be heavy enough to permit adequate reproduction. 37 C.F.R. § 1.84(l). The clarity of the drawings must be sufficient for clear reproduction to two-thirds size. 37 C.F.R. § 1.84(k). Further, shading should not be used for sectional views; instead, the appropriate hatching/drawing symbol should be used. 37 C.F.R. § 1.84(h)(3), (m); MPEP § 608.02(IX).
For examples of acceptable drawing clarity and quality, see US 20220362902 A1, US 20230076152 A1, US 20230286103 A1, and US 20240009795 A1. Examiner suggests outputting and resubmitting the drawings as vector graphics instead of raster images (bitmap) and uploading them to USPTO Patent Center as “Drawings-other than black and white line drawings”, which should cause the filed image file to be stored in the SCORE database without any image conversion.
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” in compliance with 37 C.F.R. § 1.121(d). No new matter should be entered. If the changes are not accepted by the examiner, Applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities:
“urgeable” (claim 1, line 20; claim 8, line 32) should be changed to --movable-- (“urgeable” is not an English word, and Applicant’s use of this word in the specification connotes no difference from the word “movable”).
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 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 1-8 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 “a knob of a second size on the clean out cap” (lines 13-14). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, “the clean out cap” was previously defined as having “a knob of a first size” (line 6); thus it is unclear how the same cap could have two knobs of different sizes. Further, references to “the clean out cap” are unclear as to whether they reference the first specified clean out cap or the second specified clean out cap (claim 1, line 17; claim 3, line 5). Examiner suggests amending the claims to refer to a first clean out cap and a second clean out cap (which have knobs of different sizes). For examination purposes, this limitation is interpreted as best understood. Claims 2-7 are rejected on the basis they incorporate this limitation of claim 1. Claim 3 is rejected on the same basis as claim 1 (claim 3, line 5). Claim 8 is rejected on the same basis as claim 1 (claim 8, lines 27 and 28).
Claim 1 recites the limitations “a first direction” (line 16) and “a second direction” (line 18). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, “a first direction” and “a second direction” were previously recited (lines 8 and 10), and it is unclear if the later use of these terms refer to the same directions or to different directions. Examiner suggests amending the subsequent instances of these limitations to “the first direction” and “the second direction” if they refer to the same directions; if they do not refer to the same directions, then amending as “a third direction” and “a fourth direction” would be appropriate. For examination purposes, this limitation is interpreted as best understood. Claims 2-7 are rejected on the basis they incorporate this limitation of claim 1. Claim 8 is rejected on the same basis as claim 1 (claim 8, lines 28-30).
Claims 3-8 are indefinite because there is insufficient antecedent basis for the limitations listed below, which render the claims unclear and ambiguous. For examination purposes, these limitations are interpreted as best understood.
“the shape of the knob” (claim 3, line 5) (claims 4-7 are rejected on the basis they incorporate this limitation of claim 3);
“the shape of the knob” (claim 4, lines 5-6) (claims 5-7 are rejected on the basis they incorporate this limitation of claim 4);
“the shape of the knob” (claim 8, lines 18 and 38).
Claim Rejections – 35 U.S.C. § 103
This application currently names joint inventors. In considering patentability of the claims, the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential 35 U.S.C. § 102(a)(2) prior art against the later invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Lynn in view of Marino and Wilson
Claims 1-8 are rejected under 35 U.S.C. § 103 as being unpatentable over US 3298261 A (“Lynn”) in view of US 20250067030 A1 (“Marino”) and US 20200298377 A1 (“Wilson”).
Lynn pertains to a socket wrench tool (Figs. 1-6). Marino pertains to a socket wrench tool for a water valve and buried water line (Abstr.; Figs. 1-6). Wilson pertains to a socket wrench tool for a sewer cap (Abstr.; Figs. 1-2, 3A-B). These references are in the same field of endeavor.
Regarding claim 1, Lynn discloses a clean out cap removal device for facilitating a clean out cap to be removed from a buried water pipe (Figs. 1-6, device as shown is capable of removing a clean out cap from a buried water pipe, depending on the size and shape of the cap and the location of the cap (all of which is unspecified except for “buried”); Examiner notes that this limitation includes a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)),
said device comprising:
a handle having a length...wherein said handle is configured to be extended into a hole to reach a clean out cap on a buried water pipe (Figs. 1-6, handle 6 has a length and is capable of the recited function, depending on the size of the hole and location of the cap (all of which is unspecified except for “buried”); Examiner interprets “a buried water pipe” to include the meaning of an in-ground water pipe and not necessarily a water pipe that is concealed, covered from view, or covered with dirt, (see Spec. Fig. 3); Examiner notes that this limitation includes a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II));
a first box being attached to said handle wherein said first box is configured to engage a knob of a first size on the clean out cap when said handle is extended into the hole thereby facilitating the clean out cap to be removed from the water pipe when said handle is rotated in a first direction and to facilitate the clean out cap to be installed onto the water pipe when said handle is rotated in a second direction (Figs. 1-6, first box 2 having a first socket size and is capable of engaging a first knob of a clean out cap and performing the recited functions (the size/shape/location of knob is unspecified); Examiner notes that this limitation includes a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II));
and a second box being movably positioned within said first box, said second box having dimensions being less than dimensions of said first box wherein said second box is configured to engage a knob of a second size on the clean out cap when said handle is extended into the hole thereby facilitating the clean out cap of the second size to be removed from the water pipe when said handle is rotated in a first direction and to facilitate the clean out cap to be installed onto the water pipe when said handle is rotated in a second direction (Figs. 1-6, second box 8 having a second, smaller socket size and is capable of engaging a second, smaller knob of a clean out cap and performing the recited functions (the size/shape/location of knob is unspecified); Examiner notes that this limitation includes a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)),
said second box being biased into a first position having said second box being positioned to engage the knob of the second size, said second box being urgeable into a second position when said second box abuts the knob of the first size to facilitate said first box to engage the knob of the first size (Figs. 1-6, second box 8 is biased into a first position (as shown in Fig. 4) by spring 11, and second box 8 is movable into a second position when an object fitting into the first box 2 but larger than second box 8 is engaged by the device (e.g., the first knob); Examiner notes that this limitation includes a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)).
Lynn does not explicitly disclose:
a handle having a length of at least 75.0 cm wherein said handle is configured to be extended into a hole to reach a clean out cap on a buried water pipe.
However, the Lynn/Marino/Wilson combination makes obvious this claim.
Marino discloses a handle having a length of at least 75.0 cm wherein said handle is configured to be extended into a hole to reach a clean out cap on a buried water pipe (Abstr.; Figs. 1-6; ¶ 0019, handle 14 is at least 2.0 meters and is capable of extending into a hole to reach a clean out cap on a buried water pipe using socket 20 (Fig. 6)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Marino with Lynn by replacing the handle 6 of Lynn with a longer handle 14 (including element 46) of Marino (e.g., via a mating socket connection). This would have been obvious to a person of ordinary skill in the art because this is a case of simple substitution, substituting a longer length handle for the predictable result of giving the device the ability to reach into a deeper hole to engage a knob/nut/screw (Marino Fig. 6). Examiner notes that it is known in the prior art to use socket wrenches and socket-type adapters and extensions to install and remove sewer clean out caps (Wilson Abstr.; Figs. 1-2, 3A-B, socket wrench 21 attached to a socket extension and adapter (elements 22 and 10)).
Regarding claim 2, the Lynn/Marino/Wilson combination makes obvious the device of claim 1 as applied above.
Lynn further discloses wherein:
said first box has a top wall and an outer wall extending downwardly from said top wall, a bottom end of said shaft being attached to said top wall at a point being centrally located on said top wall (Figs. 1-6, first box 2 has top wall 3 and outer wall (at reference 2) as recited, and the bottom end of shaft 6 (at element 5) is attached to the center of top wall 3; as modified by the Lynn/Marino/Wilson combination, shaft 14 of Marino would attach to the center of top wall 3).
Marino further discloses wherein:
said handle includes a shaft and a grip being transversely oriented on an upper end of said shaft wherein said grip is configured to be gripped by a user having said shaft extending downwardly into the hole (Figs. 1-6; ¶ 0021, handle including shaft 14 and transverse grip 46 on the upper end of shaft 14 is capable of performing the recited function).
The obviousness rationale is the same as for claim 1, where the handle of Marino (including grip 46) is configured to be gripped by a user as recited.
Regarding claim 3, the Lynn/Marino/Wilson combination makes obvious the device of claim 1 as applied above.
Lynn further discloses wherein:
said first box has a top wall and an outer wall extending downwardly from said top wall, said outer wall having a plurality of perpendicularly oriented sides...wherein said first box is configured to conform to the shape of the knob on the clean out cap (Figs. 1-6, first box 2 has top wall 3 and outer wall (at reference 2) as recited, where the outer wall has perpendicularly oriented sides and is capable of conforming to (e.g., fitting onto) a knob of a clean out cap);
said first box has a pair of holes each extending through a respective one of said plurality of perpendicularly oriented sides of said outer wall; and said pair of holes is positioned on opposite sides of said outer wall with respect to each other (Figs. 1-6, holes 14 on opposite sides of box 8; see discussion below re “first box”).
Wilson further discloses wherein:
said first box has a top wall and an outer wall extending downwardly from said top wall, said outer wall having a plurality of perpendicularly oriented sides such that said first box has a rectangular shape wherein said first box is configured to conform to the shape of the knob on the clean out cap (Figs. 1-2, 3A-B, first box 10 has top wall 17 and outer wall 14 as recited, where the outer wall 14 has perpendicularly oriented sides, the first box 10 has a rectangular shape and is capable of conforming to (e.g., fitting onto) a knob of a clean out cap).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to further modify the Lynn/Marino/Wilson combination by modifying the shape of the first and second boxes 2 and 8 from a hexagonal box shape to a rectangular box shape, as taught by Wilson. This would have been obvious to a person of ordinary skill in the art because modifying the shape of the socket would allow the device to be used with different types of socket heads/knobs, such as the rectangular socket head/knob disclosed by Wilson Fig. 3A.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to further modify the Lynn/Marino/Wilson combination, using the teachings of Lynn, to add holes (like holes 14) to the outer wall of first box 2, and securing second box 8 to the first box 2 via slots 18 and pin 15. This would have been obvious because this would be a reversal of parts, where the inner box has slots (instead of a fixed pin), and the outer box has a fixed pin (instead of slots), for attaching the inner box to the outer box (e.g., as taught, box 9 fits within box 8, where pin 17 (in holes 16) for box 9 fits into slots 18 of box 8). The specification and evidence of record fail to attribute any significance (novel or unexpected results) to any particular arrangement of those features. In re Gazda, 219 F.2d 449, 451, 452, n.1 (CCPA 1955) (“to reverse the operation of the relatively moving parts...would not amount to invention, mere reversal of such movement being an obvious expedient”); MPEP § 2144.04(VI)(A). Additionally, this modification would provide for a simpler and more robust design that foregoes hook 7 used to retain pin 15 (replacing mechanism 7 with 2 holes on the outer, opposite walls of first box 2, and a slightly longer pin 15), which is less likely to fail (e.g., the cantilever hook 7 is more likely to fail compared to two holes in outer wall when forces are exerted by pin 15).
Regarding claim 4, the Lynn/Marino/Wilson combination makes obvious the device of claim 3 as applied above.
Lynn further discloses wherein:
said second box has an upper wall and an exterior wall extending downwardly from said upper wall, said exterior wall having a plurality of perpendicularly oriented sides...wherein said second box is configured to conform to the shape of the knob of the second size (Figs. 1-6, second box 9 has upper wall (near reference 16) and exterior wall (at reference 9) as recited, where the exterior wall has perpendicularly oriented sides and is capable of conforming to (e.g., fitting onto) a knob of a clean out cap of a second, different size);
said second box has a pair of slots each extending through said exterior wall; said pair of slots being positioned on opposite sides of said exterior wall with respect to each other; each of said pair of slots is elongated to extend substantially between said top wall and a bottom edge of said exterior wall (Figs. 1-6, second box 9 has pair of slots 21 on opposite sides of box 9 as recited);
and each of said slots is aligned with a respective one of said pair of holes in said outer wall of said first box (Figs. 1-6, pair of slots 21 of second box 9 is aligned with holes 19 of box 10; see discussion below).
Wilson further discloses wherein:
said second box has an upper wall and an exterior wall extending downwardly from said upper wall, said exterior wall having a plurality of perpendicularly oriented sides such that said second box has a rectangular shape wherein said second box is configured to conform to the shape of the knob of the second size (Figs. 1-2, 3A-B, box 10 has top wall 17 and outer wall 14 as recited, where the outer wall 14 has perpendicularly oriented sides, the box 10 has a rectangular shape and is capable of conforming to (e.g., fitting onto) a knob of a clean out cap).
As discussed in claim 3, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to further modify the Lynn/Marino/Wilson combination by modifying the shape of the first and second boxes 2 and 9 from a hexagonal box shape to a rectangular box shape, as taught by Wilson.
Further, as discussed in claim 3, the Lynn/Marino/Wilson combination includes the reversal of parts modification that would satisfy the limitation “and each of said slots is aligned with a respective one of said pair of holes in said outer wall of said first box”.
Regarding claim 5, the Lynn/Marino/Wilson combination makes obvious the device of claim 4 as applied above. Lynn further discloses wherein:
said bottom edge of said exterior wall is aligned with a lower edge of said outer wall of said first box when said second box is in said first position; and said bottom edge of said exterior wall is spaced upwardly from said lower edge of said outer wall of said first box when said second box is in said second position (Figs. 1-6, first position of second box 8 is shown in Fig. 4, the raised second position of second box 8 would be analogous to that which is shown in Fig. 6 for box 9).
Regarding claim 6, the Lynn/Marino/Wilson combination makes obvious the device of claim 4 as applied above. Lynn further discloses:
a pin extending through each of said pair of holes in said outer wall of said first box and each of said pair of slots in said exterior wall of said second box thereby facilitating said second box to slide upwardly and downwardly in said first box (Figs. 1-6, as modified in claim 4 (and claim 3), pin 15 is positioned as recited and performs the recited function).
Regarding claim 7, the Lynn/Marino/Wilson combination makes obvious the device of claim 4 as applied above. Lynn further discloses:
a biasing member being positioned between said upper wall of said second box and said top wall of said first box, said biasing member biasing said second box into said first position, said biasing member being compressed when said second box is urged into said second position (Figs. 1-6, spring 11 is positioned as recited and performs the recited function; Examiner notes that the limitation “a biasing member” does not invoke interpretation under § 112(f) because the term has an ordinary and customary meaning to person of ordinary skill in the art and denotes the type of structural device that includes springs of various types, including coiled springs, and there is no express intent in the specification to disavow the full scope of the plain meaning of this limitation).
Regarding claim 8, the limitations recited are the same as the combination of all of the limitations of claims 1 through 7. Therefore, the Lynn/Marino/Wilson combination makes obvious the device of claim 8 for the reasons discussed for claim 4 (which include the obviousness discussion of its parent claims 1 and 3), with the addition of claims 2 and 5-7. Examiner notes that the addition of the limitations of claims 2 and 5-7 does not alter the obviousness rationale provided for claim 4 (see discussion above for claims 2 and 5-7).
Status of Claims
Claims 1-8 are pending. Claims 1-8 are rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
US 1471451 A (“Crimp”) discloses a socket wrench tool (Figs. 1-14);
US 2875660 A (“Svenson”) discloses a socket wrench tool (Figs. 1-5).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723