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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
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 1-20 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.
The term “type” in claims 1, 5, 7, and 18 is a relative term which renders the claim indefinite. The term “type” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The addition of the word "type" to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). Likewise, the phrase "ZSM-5-type aluminosilicate zeolites" was held to be indefinite because it was unclear what "type" was intended to convey. The interpretation was made more difficult by the fact that the zeolites defined in the dependent claims were not within the genus of the type of zeolites defined in the independent claim. Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986). See MPEP 2173.05(b) Relative Terminology [R-01.2024] III. APPROXIMATIONS paragraph E “Type”
Claim 7 contains the trademark/trade name Phillips. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the first drive tip and, accordingly, the identification/description is indefinite.
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.
Claim(s) 1-8, 10, 11, 14, and 17-20, as well as understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,867,018 A to (Spector).
(Spector) discloses a screwdriver for alternative use with Phillip head screws and slotted head screws.
(Re. claim 1) The screwdriver of (Spector) comprises:
a shaft (shank 14) assembly having a proximal end region and a distal end region opposite the proximal end region;
a handle 12 at the proximal end region;
a drive tip at the distal end region, the drive tip transformable between (i) a first configuration corresponding to a first drive tip type (“a Phillips head screw engaging bit 16, i.e., a bit including four peripherally spaced, forwardly tapering lugs 18 designed to mate with the walls of the cross-shaped recess of conventional Phillip head screws”; Col. 2, lines 23-27) and (ii) a second configuration corresponding to a second drive tip type (“a thin, flat elongated blade 32 having a generally rectangular cross-section. The leading end of the blade 32 comprises a slotted head screw engaging bit 34.”; Col. 2, lines 47-52) different from the first drive tip type; and
a rotation mechanism (elongated nut 44) configured to transition the drive tip between the first configuration and the second configuration.
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(Re. claim 2) wherein the shaft assembly includes (i) a first shaft (shank 14) and (ii) a second shaft (blade 32) different from the first shaft.
(Re. claim 3) wherein: the first shaft 14 and/or the second shaft 32 include first threading (second shaft (blade 32) includes a series of generally triangular gear teeth 38 provided along each minor side surface 40 of the blade 32. The teeth 38 extend beyond the slot walls, and beyond (FIG. 2) the outer surfaces of the shank sections 22 and 24. Col. 2, lines 60-66);
the rotation mechanism (elongated nut 44) includes second threading (internal thread of the nut 44) corresponding to the first threading (teeth 38 of the blade 32); and
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the first threading is engageable with the second threading such that (i) rotation of the rotation mechanism in a first direction drives the second shaft toward the distal end region of the shaft assembly and (ii) rotation of the rotation mechanism in a second direction different from the first direction retracts the second shaft away from the distal end region of the shaft assembly (Col. 3, lines 3-13).
(Re. claim 4) wherein the first shaft 14 includes a first drive tip portion 16 that corresponds to at least part of the drive tip when the drive tip is in the second configuration.
(Re. claim 5) wherein the second drive tip type corresponds to a flathead drive tip (The leading end of the blade 32 comprises a slotted head screw engaging bit 34, i.e., “a flathead drive tip”; Col. 2, lines 49-50).
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(Re. claim 6) wherein the second shaft 32 includes a second drive tip portion 34 that corresponds to at least part of the drive tip when the drive tip is in the first configuration
(in a modified form 10A (Fig. 4) of the screwdriver, use thereof as a Phillips screwdriver, with the blade 32 retracted (as shown in FIG. 4), it is possible to slightly adjust the dimensions of the Phillips bit 16 by advancing the blade 32 into the constricted portion of the slot 20. This slightly spreads apart the bit lugs 18, thereby increasing the diameter of the Phillips bit. This can be done before the Phillips bit is inserted into a screw head, for better matching the size of the bit to the screw, or after insertion of the bit into the screw, for increasing the pressure of the bit lugs against the screw recess walls. The ability to control the positioning of the blade 32 thus enabled better and firmer gripping of the screw for more effective turning of the screw. - Col. 3, lines 43-68).
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(Re. claim 7) wherein the first drive tip type corresponds to a Phillips drive tip
(“a Phillips head screw engaging bit 16, i.e., a bit including four peripherally spaced, forwardly tapering lugs 18 designed to mate with the walls of the cross-shaped recess of conventional Phillip head screws”; Col. 2, lines 23-27).
(Re. claim 8) wherein the first drive tip portion of the first shaft corresponds to at least another part of the drive tip when the drive tip is in the first configuration
(“The shank 14, …is preferably of solid cross-section, for greater strength, is provided with an axially extending slot 20 (see, also, FIG. 4), starting from the tip of the bit 16 and extending some distance (not critical, e.g., about 1/3 of the length of the exposed portion of the shank 14) rearwardly therefrom. The slot 20 bifurcates the leading portion of the shank into two spaced apart sections 22 and 24 having flat surfaces 26 and 28. The Phillips head bit 16 is also bifurcated, but the width of the slot 20 is so small (depending upon the overall size of the screwdriver), that, while the tips of the four lugs need not actually meet, as in a conventional Phillips head bit, the bit lugs come sufficiently close together to permit easy entry of the bit into, and normal usage of the screwdriver 10 with Phillips head screws. As shown in FIG. 3, the slot 20 bisects the included angles formed between oppositely disposed pairs of lugs 18.” Col. 2, lines 28-46).
(Re. claim 10) wherein the second shaft (blade 32) is moveable generally along a longitudinal axis of the first shaft 14.
(Re. claim 11) wherein the second shaft (blade 32) is at least partially positioned within the first shaft 14.
(Re. claim 14) wherein a proximal end portion of the first shaft 14 is fixedly held within the handle 12 (Col. 2, lines 18-20; Fig. 1).
(Re. claim 17) wherein the drive tip is transformable between the first configuration and the second configuration (i) without detaching portions of the shaft assembly from the screwdriver and (ii) without detaching portions of the drive tip from the screwdriver (Figs. 1-4; Col. 2, lines 28-68 and Col. 3, lines 1-42).
(Regarding claim 18-20) the screwdriver of (Spector) as previously discussed performs the method of converting a drive tip of a screwdriver between (i) a first configuration corresponding to a first drive tip type and (ii) a second configuration corresponding to a second drive tip type different from the first drive tip type, as recited in claim 18-20 (see, e.g., Col. 3, lines 21-42).
Claims 9, 12, 13, 15, and 16 would be allowable if claims 9, 12 and 15 are rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Re. claim 9, that when the drive tip is in the first configuration, a combination of the first drive tip portion of the first shaft and the second drive tip portion of the second shaft forms the drive tip; Re. claim 12, that the first shaft includes a first notch that extends generally along at least part of a longitudinal axis of the first shaft; the second shaft includes a second notch that is positioned at a distal end portion of the second shaft and that extends generally along at least part of a longitudinal axis of the second shaft; and the first shaft and the second shaft are interlocked with each other via the first and second notches and such that the longitudinal axes of the first and second shafts are arranged generally parallel to each other; and, Re. claim 15, that the handle includes a neck; the rotation mechanism includes a cavity; and the rotation mechanism is seated on the neck such that at least part of the neck is received in the cavity, together, respectively, in combination with the rest of the limitations in the independent claim and any intervening claim, has neither been disclosed nor suggested by the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure as describing screwdrivers have features related to the present application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David B. Thomas whose telephone number is (571) 272-4497. The examiner’s e-mail address is: dave.thomas@uspto.gov. The examiner can normally be reached on Mon-Fri 11:30-7:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached on (313) 446-6546. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/David B. Thomas/
Primary Examiner, Art Unit 3723
/DBT/