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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on March 12, 2024, June 19, 2024 and July 19, 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
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 Objections
Claims 1-13 are objected to because of the following informalities: Claim 1 includes a period at the end of Line 5 on page 2 instead of a semicolon. 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.
Claim 10, 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. Any remaining claims are rejected based on their dependency to a rejected base claim.
Claim 10 discloses, “a sharp flat-edge configured to cut…”. However, it is unclear how a flat surface can be considered as being sharp. The definition of the term “sharp” is defined according to www.merriam-webster.com as being; “having a fine point”. How can a flat surface also include a fine point? In order to expedite prosecution, the examiner has interpreted claim 10 as disclosing; “a [ However, further clarification is respectfully requested.
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.
Claims 1-7, 9, 11 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11897099.
In reference to claim 1, Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 11897099 both disclose; a fastener extractor and dislodging tool apparatus comprising:
a torque-tool body (see claim 1 of U.S. Patent No. 11897099);
a plurality of engagement features (see claim 1 of U.S. Patent No. 11897099);
a gripping edge (see claim 1 of U.S. Patent No. 11897099);
a threaded opening (see claim 1 of U.S. Patent No. 11897099);
a release bolt (see claim 1 of U.S. Patent No. 11897099);
the plurality of engagement features being radially positioned around a rotational axis of the torque-tool body (see claim 1 of U.S. Patent No. 11897099);
the plurality of engagement features being perimetrically connected around a base of the torque-tool body (see claim 1 of U.S. Patent No. 11897099);
a cross section for each of the plurality of engagement features comprising a first slanted section, a hollow section, and a second slanted section (see claim 1 of U.S. Patent No. 11897099);
the first slanted section being terminally connected to the hollow section (see claim 1 of U.S. Patent No. 11897099);
the second slanted section being terminally connected to the hollow section (see claim 1 of U.S. Patent No. 11897099);
the first slanted section and the second slanted section being oppositely positioned of each other about the hollow section (see claim 1 of U.S. Patent No. 11897099);
the plurality of engagement features comprising an arbitrary engagement feature, an adjacent engagement feature, and an opposite engagement feature (see claim 1 of U.S. Patent No. 11897099);
the opposite engagement feature being positioned opposite to the adjacent engagement feature across the arbitrary engagement feature (see claim 1 of U.S. Patent No. 11897099);
the first slanted section of the arbitrary engagement feature being connected to the second slanted section of the adjacent engagement feature at the gripping edge (see claim 1 of U.S. Patent No. 11897099);
the second slanted section of the adjacent engagement feature being angularly offset from the first slanted section of the opposite engagement feature (see claim 1 of U.S. Patent No. 11897099);
the gripping edge being configured to cut a channel into a fastener parallel with the rotational axis of the torque-tool body (see claim 1 of U.S. Patent No. 11897099);
the threaded opening concentrically traversing through the base (see claim 1 of U.S. Patent No. 11897099);
the release bolt comprising a bottom section, a threaded shaft section, and a driver section (see claim 1 of U.S. Patent No. 11897099);
the release bolt being integrally formed (see claim 1 of U.S. Patent No. 11897099);
the release bolt being threadedly engaged with the threaded opening, opposite of the plurality of engagement features (see claim 1 of U.S. Patent No. 11897099);
the bottom section and the driver section being oppositely positioned of each other about the threaded shaft section (see claim 1 of U.S. Patent No. 11897099);
the bottom section being concentrically connected to the threaded shaft section; the driver section being concentrically connected to the threaded shaft section (see claim 1 of U.S. Patent No. 11897099);
the threaded shaft section being engaged with the threaded opening (see claim 1 of U.S. Patent No. 11897099); and
the bottom section being positioned adjacent to the plurality of engagement features (see claim 1 of U.S. Patent No. 11897099).
In reference to claim 2, U.S. Patent No. 11897099 discloses that; the torque-tool body is outwardly extended from a cross section of the plurality of engagement features (see claim 2 of U.S. Patent No. 11897099).
In reference to claim 3, U.S. Patent No. 11897099 discloses that; the first slanted section of the arbitrary engagement feature is connected to the second slanted section of the adjacent engagement feature at an obtuse angle (see claim 3 of U.S. Patent No. 11897099).
In reference to claim 4, U.S. Patent No. 11897099 discloses; an attachment body; an engagement bore; the attachment body being centrally positioned around and along the rotational axis; the attachment body being adjacently connected to the base of the torque-tool body, opposite of the plurality of engagement features; and the engagement bore concentrically traversing through the attachment body along the rotational axis (see claim 4 of U.S. Patent No. 11897099).
In reference to claim 5, U.S. Patent No. 11897099 discloses; an attachment body; the attachment body being centrally positioned around and along the rotational axis; the attachment body being laterally connected around the base of the torque tool body and the plurality of engagement features; and a height of the attachment body being smaller than a total heigh for the base of the torque tool body and the plurality of engagement features (see claim 4 of U.S. Patent No. 11897099).
In reference to claim 6, U.S. Patent No. 11897099 discloses; a channel cutting radius; and the channel cutting radius being delineated from the rotational axis to the gripping edge (see claim 6 of U.S. Patent No. 11897099).
In reference to claim 7, U.S. Patent No. 11897099 discloses; a top flat surface; a top chamfered surface; the top flat surface and the top chamfered surface being radially delineated by the plurality of engagement features; the top flat surface being perimetrically connected around the top chamfered surface; the top flat surface being positioned parallel to a top surface of the base; the top chamfered surface being angularly positioned to the top flat surface; and the top chamfered surface being oriented towards the top surface of the base (see claim 7 of U.S. Patent No. 11897099).
In reference to claim 9, U.S. Patent No. 11897099 discloses; the hollow section being delineated into an empty space; and the empty space being configured to be positioned offset from a fastener (see claim 8 of U.S. Patent No. 11897099).
In reference to claim 11, U.S. Patent No. 11897099 discloses; the gripping edge is a sharp convex section (i.e. the “sharp point”) configured to cut the channel into the fastener parallel with the rotational axis of the torque-tool body (see claim 1 of U.S. Patent No. 11897099).
In reference to claim 13, the current application and U.S. Patent No. 11897099 both disclose; the driver section being positioned offset of the torque-tool body; and a length of the release bolt along the rotational axis being greater than a length of the torque-tool body along the rotational axis (see claim 1 of U.S. Patent No. 11897099).
Claim 8, is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11897099 in view of Fu (2004/0093996).
In reference to claim 8, U.S. Patent No. 11897099 lacks;
the top chamfered surface comprising a plurality of angular portions; the plurality of angular portions being radially positioned within the top flat surface; and each of the plurality of angular portions being centrally positioned to the gripping edge.
However, Fu teaches that it is old and well known in the art at the time the invention was made to provide a socket (10, Figure 1) comprising a top chamfered surface (14) comprising a plurality of angular portions (see figure below); the plurality of angular portions being radially positioned within a top flat surface (see figure below); and each of the plurality of angular portions being centrally positioned to a gripping edge (15).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the socket, of U.S. Patent No. 11897099, with the known technique of providing the top chamfered surface comprising the plurality of angular portions; the plurality of angular portions being radially positioned within the top flat surface; and each of the plurality of angular portions being centrally positioned to the gripping edge, as taught by Fu, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that facilitates alignment with the fastener (paragraph 8).
Claim 10, is rejected As Best Understood on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11897099 in view of Hsieh (7261020).
In reference to claim 10, As Best Understood, U.S. Patent No. 11897099 lacks;
the gripping edge is a flat-edge.
However, Hsieh teaches that it is old and well known in the art at the time the invention was made to provide a socket (Figure 2) comprising a gripping edge (i.e. at 21) that is formed as a flat-edge (21, Column 2, Lines 47-49) or forming a gripping edge as a sharp point (202, Figure 2) thereby teaching that these two surfaces are equivalent to each other (Figure 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the gripping edge of the socket, of U.S. Patent No. 11897099, with the known technique of providing a gripping edge of a socket as a flat-edge, as taught by Hsieh, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device having increased twisting force (Column 2, Lines 49-53).
Claims 12, is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11897099 in view of Fu (2004/0093996) and Chow (5295422).
In reference to claim 12, U.S. Patent No. 11897099 lacks;
a plurality of engagement-feature clean-out grooves; each of the plurality of engagement-feature clean-out grooves being centrally positioned to the gripping edge; each of the plurality of engagement-feature clean-out grooves traversing into the torque-tool body; and each of the plurality of engagement-feature clean-out grooves being positioned adjacent and offset from the top chamfered surface.
However, Fu teaches that it is old and well known in the art at the time the invention was made to provide a socket (10, Figure 1) comprising a top chamfered surface (14, Figure 1)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the socket, of U.S. Patent No. 11897099, with the known technique of providing the top chamfered surface, as taught by Fu, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that facilitates alignment with the fastener (paragraph 8).
Additionally, Chow teaches that it is old and well known in the art at the time the invention was made to provide a socket (12, Figure 2) comprising a plurality of engagement-feature clean-out grooves (15); each of the plurality of engagement-feature clean-out grooves being centrally positioned to a gripping edge (14); each of the plurality of engagement-feature clean-out grooves traversing into a torque-tool body (i.e. within 12); and each of the plurality of engagement-feature clean-out grooves being positioned adjacent and offset from a top (upper surface of 12) chamfered (Note, the chamfered surface has been previously taught by Fu) surface.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the gripping edge of the socket, of U.S. Patent No. 11897099, with the known technique of providing a gripping edge of a socket including the plurality of engagement-feature clean-out grooves, as taught by Chow, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that allows for additional sized sockets (i.e. see socket 20) to be more effectively retained thereby allowing a user to use the tool in hard to reach areas and/or which provides the barrel of the socket to be not be easily worn out or damaged during normal operation (Column 2, Lines 18-26).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pacheco (7225710) also teaches of forming the gripping edge (430) of a socket as a flat surface (Figure 19A) or as a sharp point (i.e. at the tip of 424b, Figure 19B)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723