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 statement (IDS) submitted on 9/3/2026 was filed after the mailing date of the Final Rejection on 6/10/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
The Examiner acknowledges the amendments. The previous 112 rejections to claims 6 and 17 are withdrawn. New rejections are set forth herein and are made final.
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 21 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.
Claim 21 reads “the distance… is a minimum value proximate to the distal end… and a maximum value proximate to a bottom of the bores.” It is unclear how a distance is both a minimum and a maximum value. As such, the language has been held to be indefinite. For examination purposes, claim 21 has been construed to read “a range of distances between the first and second gripping surfaces and the bores for the first and second pins, respectively, has a minimum value proximate to the distal end of the top jaw and the distal end of the bottom jaw, respectively, and a maximum value proximate to a bottom of the bores.”
Claim Rejections - 35 USC § 102
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 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kerr (US 3813750 A).
Regarding claim 11, Kerr (US3813750A) discloses a dual function hand tool, the dual function hand tool comprising: a head section including a top jaw and a bottom jaw; (FIG. 2: hand tool 10 with a head section of top ends 16’ and 16 )
a handle section including a top handle and a bottom handle; (handle section of handle ends 20’ and 20)
a joint assembly operably coupling the head section to the handle section; (joint assembly at element 56 operably coupling the section of top ends 16 and 16’ to section of handle ends 20 and 20’; Col. 2, Lines 40-47)
a pin assembly having a first pin disposed at a distal end of the top jaw and a second pin disposed at a distal end of the bottom jaw; (assembly of contact pins with pin 62’ at a distal end of top end 16’ and pin 62 at a distal end of top end 16)
and a gripping assembly comprising a first gripping surface disposed at the top jaw proximate to the first pin and a second gripping surface disposed at the bottom jaw proximate to the second pin, (assembly of surfaces identified in the annotated FIG. 2 below, disposed on the ends 16’ and 16 proximate to the pins 62’ and 62; Note: “gripping” is an intended use, the surfaces would be capable of providing two opposing points of contact with which to grip an object between, meeting the claim limitation.)
wherein the dual function hand tool operably couples with a circlip via the pin assembly to define a first function and grips an object with the gripping assembly to define a second function, (Please note that this limitation is an intended use; the tool 10 is capable of coupling with a circlip via pins 62 and 62’, as shown in FIG. 1, and would be capable of gripping an object between the jaws with the surfaces on the inside of ends 16’ and 16)
wherein a longitudinal centerline of the first pin is disposed at an angle relative to a plane in which the first gripping surface lies, (see annotated Kerr. FIG. 2 below: longitudinal centerline of pin 62’ is disposed at an angle relative to a plane of the first gripping surface)
and wherein a longitudinal centerline of the second pin is disposed at the angle relative to a plane in which the second gripping surfaces lies, (see annotated Kerr. FIG. 2 below: longitudinal centerline of pin 62 is disposed at an angle relative to the plane of the second gripping surface)
wherein the first and second pins are disposed in bores formed in the top and bottom jaws, respectively, (pins 62’ and 62 are disposed in longitudinal bores 60 formed in top ends 16’ and 16, respectively)
and wherein the bores extend in a direction normal to a planar surface disposed at an end of each of the top jaw and the bottom jaw (see annotated Kerr. FIG. 2 below: longitudinal bores 60’ extend in directions normal to the planar surfaces at the ends of ends 16’ and 16).
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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.
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.
Claims 1-3, 5, 7-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Heinsohn (US 20070074610A1) in view of Schoening (US 1122165 A) and Tucker (US 6473956 B1).
Regarding claim 1, Heinsohn discloses a hand tool comprising: a head section including a top jaw and a bottom jaw; (see FIG. 1: two pliers tips 5)
a handle section including a top handle and a bottom handle; (see FIG. 1: two grips 4)
a joint assembly operably coupling the head section to the handle section; (joint assembly at pivot pin 3 coupling the limbs 2 to the grips 4)
a pin assembly having a first pin disposed at a distal end of the top jaw and a second pin disposed at a distal end of the bottom jaw; (a first insertion tip 6 at a distal end of one plier tip 5 and a second insertion tip 6 at a distal end of the other plier tip 5)
and a gripping assembly comprising a first gripping surface disposed at the top jaw proximate to the first pin and a second gripping surface disposed at the bottom jaw proximate to the second pin, (the Examiner notes that “gripping” is an intended use; see FIG. 2: the first and second surfaces of pliers tips 5 in contact with each other—identified in the annotated FIG. 2 below—are disposed proximate to the first and second insertion tips 6, respectively; see also ¶[0017])
wherein the first and second gripping surfaces grip objects therebetween responsive to the top jaw and the bottom jaw moving towards each other, (Please note this limitation is an intended use: the gripping surfaces are capable of gripping objects responsive to the pliers tips 5 moving towards each other)
wherein a longitudinal centerline of the first pin is disposed at an angle relative to a plane in which the first gripping surface lies, (see FIG. 2 and ¶[0021]-[0023]: the longitudinal axis x-x of the first insertion tip 6 is disposed at an angle relative to the plane of the first gripping surface)
and wherein a longitudinal centerline of the second pin is disposed at the angle relative to a plane in which the second gripping surfaces lies (see FIG. 2 and ¶[0021]-[0023]: the longitudinal axis x-x of the second insertion tip 6 is disposed at the angle relative to the plane of the second gripping surface).
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Annotated Heinsohn FIG. 2
Heinsohn does not teach that the first and second gripping surfaces each comprise teeth,
and the teeth of the first gripping surface interlace with the teeth of the second gripping surface when the top jaw is proximate to the bottom jaw.
However, Schoening (US 1122165 A) in the same or similar field of endeavor related to pliers with pins, teaches a pair of pliers with gripping surfaces in between the jaws comprising teeth (FIG. 1: teeth 10 disposed on the inside of levers 1 and 1’).
Given that both Heinsohn and Schoening teach jaws of a hand tool, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the gripping surfaces of Heinsohn with the gripping surfaces of Schoening comprising teeth, to provide the predictable result of providing the user with increased friction for more secure gripping.
Additionally, Tucker (US 6473956 B1) in the same or similar field of endeavor related to pliers, teaches a pair of pliers with the teeth of the first gripping surface interlace with the teeth of the second gripping surface when the top jaw is proximate to the bottom jaw (FIG. 3 and Col. 3, Lines 31-40: interlaced teeth 32 “arranged so that when the extractor 10 is closed, the teeth engage each other with substantially no gaps therebetween”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the gripping surfaces of Heinsohn, as modified, so that the teeth of the first gripping surface interlace with the teeth of the second gripping surface when the top jaw is proximate to the bottom jaw, as taught by Tucker. One would have been motivated to make such a modification to “allow cylindrical portions of the workpiece to be securely grasped, while distributing the force of the jaws upon that workpiece to the greatest extent possible” (Tucker Col. 3, Lines 31-40).
Regarding claim 2, the rejection of claim 1 is incorporated. Heinsohn does not explicitly teach that the first and second gripping surfaces extend a distance that is 10% of a length of the top and bottom jaws, respectively. However, Heinsohn teaches that the first and second gripping surfaces extend a distance that is less than 25% of a length of the top and bottom jaws (a distance D1 of the gripping surface is less than 25% of D2, a length of the pliers tips 5, see annotated Fig. 1 below).
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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 to modify the length of the gripping surfaces of Heinsohn to be roughly 10% of the overall jaw length. Such a modification is viewed as change in size, which has been held to be of routine by one skilled in the art (see MPEP 2144.04). Changing the length of the gripping surface would affect the area in which the plier interacted with the object being worked upon, which would change for different intended functions. Further in the instant application, there is no criticality/unexpected results that come from the 10% limitation (see Detailed Description, ¶[0025]).
Regarding claim 3, the rejection of claim 2 is incorporated. Heinsohn teaches that the first and second gripping surfaces extend from the distal end of the top and bottom jaws, respectively, towards the joint assembly (see FIG. 2: the surfaces that can be used for gripping on the inside of pliers tips 5 extend from the distal end of the plier tips 5 toward the pivot pin 3).
Regarding claim 5, the rejection of claim 1 is incorporated. Heinsohn, as modified, further teaches that the first and second pins are disposed in respective bores formed in the top and bottom jaws, respectively (see Heinsohn ¶[0021] and Fig. 2: insertion tips 6 are disposed in respective eyelets 7).
Regarding claim 7, the rejection of claim 5 is incorporated. Heinsohn, as modified, does not teach that the first and second gripping surfaces have a smallest width proximate to the distal end of the head section that is greater than two times a diameter of the bores. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a width of the gripping surfaces of Heinsohn, as modified, to be greater than two times a diameter of the bores. Such a modification is viewed as a change in size, which has been held to be of routine by one skilled in the art (see MPEP 2144.04). Depending on the intended function and base material, a manufacturer would modify this dimension to ensure the pins have sufficient support to manipulate a particular style of circlip without causing damage or deformation to the tool. Further, in ¶[0031]-[0032] of the instant application, there is no criticality or unexpected results discussed on why this dimension would be used. The discussion of adequate strength is not an unexpected result—it is simply a design criterion.
Regarding claim 8, the rejection of claim 7 is incorporated. Heinsohn, as modified, does not teach that the first and second gripping surfaces have a largest width disposed a length away from a smallest width, that is equal to three times a diameter of the bores. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a width of the gripping surfaces of Heinsohn, as modified, to be equal to three times a diameter of the bores. Such a modification is viewed as a change in size, which has been held to be of routine by one skilled in the art (see MPEP 2144.04). Depending on the intended function and base material, a manufacturer would modify this dimension to ensure the pins have sufficient support to manipulate a particular style of circlip without causing damage or deformation to the tool. Further, in ¶[0031]-[0032] of the instant application, there is no criticality or unexpected results discussed on why this dimension would be used. The discussion of adequate strength is not an unexpected result—it is simply a design criterion.
Regarding claim 9, the rejection of claim 5 is incorporated. Heinsohn, as modified, does not teach that a length of the first and second gripping surfaces is substantially equal to a depth of the bores. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a length of the gripping surfaces of Heinsohn, as modified, to be substantially equal to a depth of the bores. Such a modification is viewed as a change in size, which has been held to be of routine by one skilled in the art (see MPEP 2144.04). Depending on the intended function and base material, a manufacturer would modify this dimension to ensure the tool would to ensure the pins have sufficient support to manipulate a particular style of circlip without causing damage or deformation to the tool. Further, in ¶[0034] of the instant application, there is no criticality or unexpected results discussed on why this dimension would be used. The discussion of adequate strength is not an unexpected result—it is simply a design criterion.
Regarding claim 10, the rejection of claim 1 is incorporated. Heinsohn, as modified, further teaches that the gripping assembly and the pin assembly provide a dual function head section tool in which a first function comprises operably coupling with a circlip via the pin assembly (see ¶[0004]: circlips are operably coupled via the insertion tips 6) and a second function comprises gripping an object with the gripping assembly (the gripping assembly is capable of gripping objects in between pliers tips 5).
Regarding claim 12, the rejection of claim 1 is incorporated. Heinsohn, as modified, does not explicitly teach that the first and second gripping surfaces extend a distance that is 10% of a length of the top and bottom jaws, respectively. However, Heinsohn teaches that the first and second gripping surfaces extend a distance that is less than 25% of a length of the top and bottom jaws (a distance D1 of the gripping surface is less than 25% of D2, a length of the pliers tips 5, see annotated Fig. 1 above in the discussion of claim 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the length of the gripping surfaces of Heinsohn to be roughly 10% of the overall jaw length. Such a modification is viewed as change in size, which has been held to be of routine by one skilled in the art (see MPEP 2144.04). Changing the length of the gripping surface would affect the area in which the plier interacted with the object being worked upon, which would change for different intended functions. Further in the instant application, there is no criticality/unexpected results that come from the 10% limitation (see Detailed Description, ¶[0025]).
Regarding claim 13, the rejection of claim 12 is incorporated. Heinsohn, as modified, teaches that the first and second gripping surfaces extend from the distal end of the top and bottom jaws, respectively, towards the joint assembly (see FIG. 2: the surfaces that can be used for gripping on the inside of pliers tips 5 extend from the distal end of the plier tips 5 toward the pivot pin 3).
Claims 6 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kerr (US3813750A).
Regarding claim 6, Kerr discloses a hand tool comprising: a head section including a top jaw and a bottom jaw; (FIG. 2: hand tool 10 with a head section of top ends 16’ and 16 )
a handle section including a top handle and a bottom handle; (handle section of handle ends 20’ and 20)
a joint assembly operably coupling the head section to the handle section; (joint assembly at element 56 operably coupling the section of top ends 16 and 16’ to section of handle ends 20 and 20’; Col. 2, Lines 40-47)
a pin assembly having a first pin disposed at a distal end of the top jaw and a second pin disposed at a distal end of the bottom jaw; (assembly of contact pins with pin 62’ at a distal end of top end 16’ and pin 62 at a distal end of top end 16)
and a gripping assembly comprising a first gripping surface disposed at the top jaw proximate to the first pin and a second gripping surface disposed at the bottom jaw proximate to the second pin, (assembly of surfaces identified in the annotated FIG. 2 below, disposed on the ends 16’ and 16 proximate to the pins 62’ and 62; Note: “gripping” is an intended use, the surfaces would be capable of providing two opposing points of contact with which to grip an object between, meeting the claim limitation.)
wherein the first and second gripping surfaces grip objects therebetween responsive to the top jaw and the bottom jaw moving towards each other, (Please note that this limitation is an intended use, the surfaces would be capable of gripping objects therebetween responsive to the ends 16 and 16; moving towards each other.)
wherein a longitudinal centerline of the first pin is disposed at an angle relative to a plane in which the first gripping surface lies, (see annotated Kerr. FIG. 2 in the discussion of claim 11 above: longitudinal centerline of pin 62’ is disposed at an angle relative to a plane of the first gripping surface)
wherein the first and second pins are disposed in respective bores formed in the top and bottom jaws, respectively, (pins 62’ and 62 are disposed in longitudinal bores 60 formed in top ends 16’ and 16, respectively).
Kerr does not teach that a distance between the first and second gripping surfaces and the bores for the first and second pins, respectively, varies between 3 to 4 times a depth of the teeth.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the distances between the gripping surfaces and the respective bores of Kerr, as modified, to be roughly 3 to 4 times a depth of the teeth. Such a modification is viewed as a change in size, which has been held to be of routine by one skilled in the art (see MPEP 2144.04). Depending on the intended function and base material, a manufacturer would modify this dimension to ensure the tool has enough clearance to adequately manipulate a particular style of circlip. Further, in ¶[0029]-[0030] of the instant application, there is no criticality or unexpected results discussed on why this dimension would be used. The discussion of adequate strength is not an unexpected result—it is simply a design criterion.
Regarding claim 21, (as best understood) the rejection of claim 6 is incorporated in this rejection. Kerr, as modified, further teaches that a range of distances between the first and second gripping surfaces and the bores for the first and second pins, respectively, has a minimum value proximate to the distal end of the top jaw and the distal end of the bottom jaw, respectively, and a maximum value proximate to a bottom of the bores (see the annotated FIG. 2 below: minimum value w1 proximate to the distal end of 16’ and maximum value w2 proximate to a bottom of bore 60)
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Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kerr (US3813750A) in view of Schoening (US 1122165 A).
Regarding claim 14, the rejection of claim 11 is incorporated. Kerr does not teach that the first and second gripping surfaces each comprise teeth.
However, Schoening (US 1122165 A) in the same or similar field of endeavor related to pliers with pins, teaches a pair of pliers with gripping surfaces in between the jaws comprising teeth (FIG. 1: teeth 10 disposed on the inside of levers 1 and 1’).
Given that both Kerr and Schoening teach jaws of circlip pliers, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the gripping surfaces of Kerr with the gripping surfaces of Schoening comprising teeth, to provide the predictable result of providing the user with increased friction for more secure gripping.
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kerr (US3813750A) in view of Schoening (US 1122165 A), further in view of Tucker (US 6473956 B1).
Regarding claim 15, the rejection of claim 14 is incorporated. Kerr, as modified, does not teach that the teeth of the first gripping surface interlace with the teeth of the second gripping surface when the top jaw is proximate to the bottom jaw.
However, Tucker (US 6473956 B1) in the same or similar field of endeavor related to pliers, teaches a pair of pliers with the teeth of the first gripping surface interlace with the teeth of the second gripping surface when the top jaw is proximate to the bottom jaw (FIG. 3 and Col. 3, Lines 31-40: interlaced teeth 32 “arranged so that when the extractor 10 is closed, the teeth engage each other with substantially no gaps therebetween”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the gripping surfaces of Heinsohn, as modified, so that the teeth of the first gripping surface interlace with the teeth of the second gripping surface when the top jaw is proximate to the bottom jaw, as taught by Tucker. One would have been motivated to make such a modification to “allow cylindrical portions of the workpiece to be securely grasped, while distributing the force of the jaws upon that workpiece to the greatest extent possible” (Tucker Col. 3, Lines 31-40).
Regarding claim 16, the rejection of claim 15 is incorporated in this rejection. Kerr, as modified, further teaches that the first and second pins are disposed in bores formed in the top and bottom jaws, respectively (Kerr FIG. 2: pins 62’ and 62 are disposed in longitudinal bores 60 formed in the top ends 16’ and 16, respectively.
Regarding claim 17, the rejection of claim 16 is incorporated in this rejection. Kerr, as modified, does not teach that a distance between the first and second gripping surfaces and the bores for the first and second pins, respectively, varies between 3 to 4 times a depth of the teeth. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the distances between the gripping surfaces and the respective bores of Kerr, as modified, to be roughly 3 to 4 times a depth of the teeth. Such a modification is viewed as a change in size, which has been held to be of routine by one skilled in the art (see MPEP 2144.04). Depending on the intended function and base material, a manufacturer would modify this dimension to ensure the tool has enough clearance to adequately manipulate a particular style of circlip. Further, in ¶[0029]-[0030] of the instant application, there is no criticality or unexpected results discussed on why this dimension would be used. The discussion of adequate strength is not an unexpected result—it is simply a design criterion.
Regarding claim 18, the rejection of claim 16 is incorporated in this rejection. Kerr, as modified, does not teach that the first and second gripping surfaces have a largest width disposed a length away from a smallest width, that is equal to three times a diameter of the bores. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a width of the gripping surfaces of Kerr, as modified, to be equal to three times a diameter of the bores. Such a modification is viewed as a change in size, which has been held to be of routine by one skilled in the art (see MPEP 2144.04). Depending on the intended function and base material, a manufacturer would modify this dimension to ensure the pins have sufficient support to manipulate a particular style of circlip without causing damage or deformation to the tool. Further, in ¶[0031]-[0032] of the instant application, there is no criticality or unexpected results discussed on why this dimension would be used. The discussion of adequate strength is not an unexpected result—it is simply a design criterion.
Regarding claim 19, the rejection of claim 18 is incorporated. Kerr, as modified, does not teach that a length of the first and second gripping surfaces is substantially equal to a depth of the bores. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a length of the gripping surfaces of Kerr, as modified, to be substantially equal to a depth of the bores. Such a modification is viewed as a change in size, which has been held to be of routine by one skilled in the art (see MPEP 2144.04). Depending on the intended function and base material, a manufacturer would modify this dimension to ensure the pins have sufficient support to manipulate a particular style of circlip without causing damage or deformation to the tool. Further, in ¶[0034] of the instant application, there is no criticality or unexpected results discussed on why this dimension would be used. The discussion of adequate strength is not an unexpected result—it is simply a design criterion.
Regarding claim 20, the rejection of claim 19 is incorporated. Kerr, as modified, does not teach that a length of the first and second gripping surfaces is substantially equal to a depth of the bores. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a length of the gripping surfaces of Kerr, as modified, to be substantially equal to a depth of the bores. Such a modification is viewed as a change in size, which has been held to be of routine by one skilled in the art (see MPEP 2144.04). Depending on the intended function and base material, a manufacturer would modify this dimension to ensure the pins have sufficient support to manipulate a particular style of circlip without causing damage or deformation to the tool. Further, in ¶[0034] of the instant application, there is no criticality or unexpected results discussed on why this dimension would be used. The discussion of adequate strength is not an unexpected result—it is simply a design criterion.
Response to Arguments
Applicant’s arguments, see pages 7-13, filed 9/3/2026, with respect to the amended claims have been fully considered and are persuasive. The previous rejection of claims 1-20 have been withdrawn.
Applicant’s arguments with respect to claim(s) 1-3 and 5-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
With regards to the Applicant’s argument regarding the distance between the first and second gripping surfaces and the bores for the first and second pins, respectively, (on Pages 9-10 of the Applicant’s Response), the Examiner respectfully disagrees. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation would be found in the knowledge generally available to a person of ordinary skill in the art.
Further, recitation that the claimed range for the distance between the first and second gripping surfaces and the respective bores “preserves sufficient material between the bore and teeth to support the existence of the gripping surface while maintaining jaw integrity” is not sufficient to demonstrate criticality or unexpected results (see MPEP 2144).
Additionally, in response to applicant's argument that Heinsohn and Tseng do not “[recognize] or [address] the structural tradeoff created by incorporating both features into the same distal jaw region” on Page 10 of the Applicant’s Response, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE JOH whose telephone number is (571)272-0410. The examiner can normally be reached Mon-Fri 8a-5p.
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/C.J./Examiner, Art Unit 3723
/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723
Prosecution Insights