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 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 1-2 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Trimboli (US 2,592,978) in view of Harrison (US 4,649,618)
Claim 1: Trimboli discloses a tool that includes a handle (7 of Figure 1); a working rod (9,10 of Figure 1) including a working head (10 of Figure 1) and a body portion (9 of Figure 1) connected to each other, the body portion having a non-circular cross- section (as depicted in Figure 1), the body portion and the handle being connected to each other by insertion (Col. 1, Line 51 to Col. 2, Line 16); and a positioning mechanism (12,16,19 of Figure 1) including at least one first positioning unit (12,19 of Figure 1) and at least one second positioning unit (16 of Figure 1) releasably connected to each other, the at least one first positioning unit being disposed on the handle, the at least one second positioning unit being disposed on the body portion (as depicted in Figure 1).
While Trimboli discloses a portion of the limitations recited in claim 1, Trimboli fails to disclose that the body portion has a hexagonal cross-section and further that the working head is a curved plate member and is hook-shaped, the working head is radially curved from the body portion in a first direction and is radially curved back in a second direction opposite to the first direction, and the working head is gradually and smoothly tapered from the body portion to a free end of the working head.
However, Trimboli does disclose that that the body portion is of a square or diamond shaped cross-section (as depicted in Figure 1).
Therefore, it would have been obvious to one of ordinary skill in the art to modify the body portion of Trimboli such that the body portion had a hexagonal cross-section because it has long been held that there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
As modified above, Trimboli discloses a portion of the limitations recited in claim 1, but fails to disclose that the working head is a curved plate member and is hook-shaped, the working head is radially curved from the body portion in a first direction and is radially curved back in a second direction opposite to the first direction, and the working head is gradually and smoothly tapered from the body portion to a free end of the working head.
However, Harrison teaches a working head (14 of Figure 1) that is a curved plate member (12 of Figure 1) and is hook-shaped (16,30 of Figure 1), the working head is radially curved from the body portion in a first direction (at 26 of Figure 1) and is radially curved back in a second direction (at 28 of Figure 1) opposite to the first direction, and the working head is gradually and smoothly tapered from the body portion to a free end of the working head (the tip 30 of Figure 1 is gradually tapered from the body portions to thin top at the free end of the body portion).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute working head of Harrison for that to Trimboli in order to provide a working head that included that curved and tapered portions recited in claim 1.
This modification would have been obvious to and well within the ability of one of ordinary skill in the art to make because it is prima facie obvious to substitute one known prior art element for another in order to achieve predictable results (MPEP 2143(B)). In the instant case that predictable result would be that the working head would be a hook used for removing a seal instead of a flat screw driving head.
The remainder of the limitations recited within the claim have been treated as the intended use of the apparatus. Since the apparatus of Trimboli is capable of performing the stated intended use, the apparatus of Trimboli meets the limitations of the claim. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claim 2: Trimboli further discloses that one of the first positioning unit and the second positioning unit includes at least one recess (the first positioning units are recesses formed on the body portion as depicted in Figure 1), the other of the first positioning unit and the second positioning unit includes at least one detent (the second positioning unit is a detent located in the handle as depicted in Figure 1), and the first positioning unit and the second positioning unit are engaged with and positioned to each other (Col. 3, Lines 43-56, as depicted in Figure 6).
Claim 5: Trimboli further discloses the at least one recess includes a plurality of recesses, the plurality of recesses are circumferentially arranged on the body portion, and the working rod is adjustably positioned to the handle (as depicted in Figure 1; Col. 2, Lines 24-33).
Claim 6: Trimboli further discloses the at least one second positioning unit further includes a plurality of channels (as depicted in Figure 1, 16 are recesses formed as channels) on the body portion, each of the plurality of channels is disposed between two neighboring ones of the plurality of recesses, and the plurality of the channels are in communication with the plurality of recesses to form annular grooves (the examiner believes that 16 of Trimboli meets the limitations of the claim because the channels and recesses depicted in applicant’s drawings appear to have the same shape and distribution as that of Trimboli).
Claim 7: Trimboli further discloses the at least the at least one second positioning unit includes a plurality of second positioning units, and the plurality of second positioning units are arranged in interval in an axial direction of the body portion (as depicted in Figure 1; Col. 2, Lines 24-33).
Claims 3-4 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Trimboli (US 2,592,978) in view of Harrison (US 4,649,618) and Howard (US 4,586,406).
Claim 3: Trimboli further discloses that the handle (7 of Figure 1) includes an insertion hole (8 of Figure 4; Col. 1, Line 51 to Col. 2, Line 2), the body portion is inserted in the insertion hole (as depicted in Figure 1), the at least one first positioning unit includes only one first positioning unit (as depicted in Figure 1 only positioning unit including 12 and 19 are shown) , the only one first positioning unit includes a slidable sleeve (12 of Figure 3, Col. 2, Lines 24-33, the examiner considers the rotation of the sleeve around the body as sliding), at least one ball member (19 of Figure 4) and at least one through hole (Col. 2, Lines 24-33), the at least one through hole is disposed through the handle and in communication with the insertion hole (Col. 2, Lines 24-33), the at least one ball member is movably received in the at least one through hole (as depicted in Figure 6; Col. 3, Lines 43-56), and the slidable sleeve is disposed on the handle and movable between a lock position and a release position (Col. 2, Lines 24-33, see position of 12 in Figure 4 compared to the position of 12 in Figure 5).
While Trimboli discloses a portion of the limitations recited in claim 3, Trimboli fails to disclose that when the slidable sleeve is located in the lock position, the slidable sleeve urges the at least one ball member to be partially protrusive out beyond the insertion hole to serve as the at least one detent to be engaged in the at least one recess so that the working rod is locked with the handle, and when the slidable sleeve is located in the release position, the at least one ball member is retractable form the insertion hole to be disengaged from the at least one recess so that the working rod 1s removable from the handle.
However, Howard teaches a tool that includes a slidable sleeve (27 of Figure 7) that when located in a lock position (position shown in Figure 7), the slidable sleeve urges at least one ball member (36 of Figure 7) to be partially protrusive out beyond an insertion hole (see hole formed in 37 of Figure 7) to serve as at least one detent to be engaged in at least one recess (11a of Figure 7) so that a working rod (10a of Figure 7) is locked with handle (28 of Figure 7), and when the slidable sleeve is located in a release position (position shown in Figure 8), the at least one ball member is retractable form the insertion hole to be disengaged from the at least one recess so that the working rod is removable from the handle (Col. 3, Line 58 to Col. 4, Line 36).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute the positioning mechanism of Howard for the positioning mechanism of Trimboli because it is prima facie obvious to substitute one known prior art element for another in order to achieve a predictable result (MPEP 2143(B)).
Claim 4: Trimboli further discloses the shape of the insertion hole matches with the shape of the body portion (Col. 2, Lines 24-33).
Claim 9: Trimboli further discloses that the cross-section of the body portion is a regular polygon (as depicted in Figures 1 and 4 the body is a square), the regular polygon includes a plurality of comers and a plurality of sides, and the at least one recess is arranged to correspond to at least one the plurality of corners so that in an axial direction of the body portion the at least one detent is engaged with and blocked by at least one the plurality of corners (as depicted in Figure 3).
Claim 10: Trimboli further discloses the at least one recess includes a plurality of recesses (see multiple recesses depicted in Figure 3), the plurality of recesses are circumferentially arranged on the body portion (as depicted in Figure 3), and the working rod is adjustably positioned to the handle (Col. 2, Lines 4-23); each of the at least one second positioning unit further includes a plurality of channels on the body portion, each of the plurality of channels is disposed between two neighboring ones of the plurality of recesses, and the plurality of the channels are in communication with the plurality of recesses to an annular groove (the examiner believes that 16 of Trimboli meets the limitations of the claim because the channels and recesses depicted in applicant’s drawings appear to have the same shape and distribution as that of Trimboli).; the at least one second positioning unit includes a plurality of second positioning units, and the plurality of second positioning units are arranged in interval in an axial direction of the body portion (as depicted in Figure 3); the cross-section of the body portion is a regular polygon, the regular polygon includes a plurality of corners and a plurality of sides (as depicted in Figures 1 and 4 the body is a square, or as modified the corners of the hexagon), and the at least one recess is arranged to correspond to at least one the plurality of corners so that in an axial direction of the body portion the at least one detent is engaged with and blocked by at least one the plurality of corners (as depicted in Figure 3); in a radial direction of the body portion, a distance from a bottom of each of the plurality of recesses to an axis of the body portion is equal to a distance from a bottom of each of the plurality of channels to the axis of the body portion (as depicted in Figure 3); the handle includes two anti-slip sections arranged thereon (knurls on outer surface of 12 and 7), and between the two anti-slip sections is a smooth section (see smooth taper section of Figure 1); an anti-slip structure is disposed on an outer surface of the slidable sleeve (as depicted in Figure 1); and in the axial direction of the body portion, the annular grooves of the plurality of second positioning units are spaced in a fixed interval (as depicted in Figure 3).
Harrison further teaches that a working head that is a curved plate member (14 of Figure 1).
Howard further teaches that the first positioning unit further includes an elastic member (30 of Figure 8), the elastic member is disposed around the body portion (as depicted in Figure 8), and the elastic member is located between the body portion and the slidable sleeve (as depicted in Figure 8).
Trimboli, Harrison, and Howard fail disclose or teach that in the axial direction of the body portion a ratio of a dimension of the annular groove to the fixed interval ranges from 0.08 to 0.10; and a free end of the working head remote from the body portion has a thickness smaller than 1.5 mm.
However, this modification would only require routine skill in the art because they are changes in the shape or size of the apparatus of Trimboli/Harrison/Howard.
Therefore, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Trimboli/Harrison/Howard such that the hexagon cross-section in the axial direction of the body portion is a ratio of a dimension of the annular groove to the fixed interval ranges from 0.08 to 0.10, and a free end of the working head remote from the body portion has a thickness smaller than 1.5 mm, because these modification are merely changes in the size or shape of the apparatus.
It has long been held that a modification that would have involved a mere change in the size of a component requires only routine skill in the art. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Further, it has long been held that there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Response to Arguments
Applicant’s arguments with respect to claims 1-10 have been considered but are moot in light of the new grounds for rejection presented above as required by applicant’s amendment.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON L VAUGHAN whose telephone number is (571)270-5704. The examiner can normally be reached Mon-Friday 8:30 - 5:00.
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, Sunil Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON L VAUGHAN/Primary Examiner, Art Unit 3726