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
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Australia on 11/21/2022. It is noted, however, that applicant has not filed a certified copy of the AU 2022903500 application as required by 37 CFR 1.55.
Drawings
The drawings are objected to because the drawings are presented as greyscale drawings. The subject matter presented in the drawings would be properly conveyed in black and white line drawings. Therefore, replacement black and white line drawings are required. Corrected drawing sheets in compliance with 37 CFR 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” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the 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.
Specification
The disclosure is objected to because of the following informalities: In paragraph [0063], the specification refers to reference number 50.2, one of two wheels, however the wheels in the drawings are labeled 50.1 and 52.2. In paragraph [0064], the specification refers to reference number 58, base end, however the base end in the drawings is labeled as 60. 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 1-19 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: In lines 8-9, the claim recites “the drive assembly adapted to be coupled with a hand tool”. This limitation renders the claim indefinite because the claims go on to further limit the hand tool. For example, in claim 5, the hand tool is limited to a cordless drill. In claims 1 and 4 the hand tool is not positively recited. Both claims 1 and 4 set forth other features that are adapted for use with a hand tool, however the hand is not required by either of these claims. If applicant intends the hand tool to be required by the limitations of claims 1 and 4, then the hand tool must be properly set forth in claims 1 and/or 4.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5: As addressed above the hand tool is not required by claims 1 or 4 from which claim 5 depends. Therefore, the limitations of claim 5 fail to further limit claim 1 or 4. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-2, 4, 6, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hansen (US 1,795,391).
Claim 1: Hansen discloses an extractor that includes a holding assembly (21 of Figure 3); a guide assembly (8,9,18, 19, 20 of Figure 1) operatively associated with the holding assembly, the guide assembly including a guide follower (18,19,20 of Figure 1) for operative attachment to the holding assembly, and a guide (8,9 of Figure 1) along which the guide follower is caused to move; and a drive assembly (12,13,14,16,17 of Figure 1) operatively associated with the guide follower.
The remainder of the limitations presented in the claim have been treated as the intended use the claimed apparatus. Since the apparatus of Hansen is capable of performing the recited intended use, the apparatus of Hansen meets the limitations of the claim. The recitation of a new intended use for an old product does not make a claim to an old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claim 2: Hanen further discloses a base (5 of Figure 2) adapted to support the guide assembly in an upright orientation.
The remainder of the limitations presented in the claim have been treated as the intended use the claimed apparatus. Since the apparatus of Hansen is capable of performing the recited intended use, the apparatus of Hansen meets the limitations of the claim. The recitation of a new intended use for an old product does not make a claim to an old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claims 4 and 6: Hansen further discloses that the drive assembly includes a hexagonal coupling (in Figure 2 the coupling is depicted as a hexagonal stud around which 14 engaged).
The remainder of the limitations presented in the claim have been treated as the intended use the claimed apparatus. Since the apparatus of Hansen is capable of performing the recited intended use, the apparatus of Hansen meets the limitations of the claim. The recitation of a new intended use for an old product does not make a claim to an old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claim 12: Hansen further discloses that the drive assembly includes an elongate longitudinally extending threaded drive rod (12 of Figure 1).
Claim 13: Hansen further discloses that the guide follower includes a threaded drive rod engagement formation (20 of Figure 3), the drive rod engagement formation adapted to engage the drive rod such that pivotal movement of the drive rod imparts relative movement to the rod engaging formation, thereby causing the guide follower to move longitudinally along the guide (Page 2, Lines 18-33).
Claim 14: Hansen further discloses that the guide is an elongate upright (8,9 of Figure 1).
Claims 1-2, 7-8, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Craig (US 5,544,860).
Claim 1: Craig discloses an extractor that includes a holding assembly (17,40 of Figure 2); a guide assembly (20 of Figure 1 and 60 of Figure 5) operatively associated with the holding assembly, the guide assembly including a guide follower (60 of Figure 5) for operative attachment to the holding assembly, and a guide (20 of Figure 1) along which the guide follower is caused to move; and a drive assembly (18,33,16 of Figure 2) operatively associated with the guide follower.
The remainder of the limitations presented in the claim have been treated as the intended use the claimed apparatus. Since the apparatus of Craig is capable of performing the recited intended use, the apparatus of Craig meets the limitations of the claim. The recitation of a new intended use for an old product does not make a claim to an old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claim 2: Craig further discloses a base (4 of Figure 1) adapted to support the guide assembly in an upright orientation.
The remainder of the limitations presented in the claim have been treated as the intended use the claimed apparatus. Since the apparatus of Craig is capable of performing the recited intended use, the apparatus of Craig meets the limitations of the claim. The recitation of a new intended use for an old product does not make a claim to an old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claim 3: Craig further discloses a base member and two co-extensive (6 of Figure 1), laterally spaced apart base arms outwardly extending from the base member.
Claim 7: Craig further discloses a hand tool holder (13 of Figure 1) operatively adapted to support the hand tool.
Claim 8: Craig further discloses the hand tool holder is secured to an upright support (8 of Figure 1) mounted to the base member.
Claim 10: Craig further discloses at least one wheel (7 of Figure).
The remainder of the limitations presented in the claim have been treated as the intended use the claimed apparatus. Since the apparatus of Craig is capable of performing the recited intended use, the apparatus of Craig meets the limitations of the claim. The recitation of a new intended use for an old product does not make a claim to an old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claims 1, 7-9, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Benjamin et al. (US 11,131,066 B2).
Claim 1: Benjamin et al. discloses an extractor that includes a holding assembly (140 of Figure 4); a guide assembly (134,170,102 of Figure 4) operatively associated with the holding assembly, the guide assembly including a guide follower (134,170 of Figure 4) for operative attachment to the holding assembly, and a guide (102 of Figure 4) along which the guide follower is caused to move; and a drive assembly (130,132 of Figure 4) operatively associated with the guide follower.
The remainder of the limitations presented in the claim have been treated as the intended use the claimed apparatus. Since the apparatus of Benjamin et al. is capable of performing the recited intended use, the apparatus of Benjamin et al. meets the limitations of the claim. The recitation of a new intended use for an old product does not make a claim to an old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claim 7: Benjamin et al. further discloses a hand tool holder (586,584 of Figure 16B; 596 of Figure 20A) operatively adapted to support the hand tool.
Claim 8: Benjamin et al. further discloses the hand tool holder is secured to an upright support (504,506 of Figure 16B) mounted to the base member.
Claim 9: Benjamin et al. further discloses that the hand tool holder includes two spaced apart holder arms (584 of Figure 16B) which are connected by a transverse rest (596 of Figure 20A).
Claim 15: Benjamin et al. further discloses that the holding member includes a slot (149,150,152 of Figure 5) adapted to slidably receive a portion of the elongate body.
Claim 16: Benjamin et al. further discloses that the holding member includes a clamp (542 of Figure 17D) capable of clamping onto an elongated body.
Claim 17: Benjamin et al. further discloses that the clamp includes a gripping formation (548 of Figure 17D) that is complementary shaped to the outer surface of an elongated body that it is intended to extract, a rail road spike (paragraph [0076]).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hansen (1,795,391) in view of Magestro (US 2015/0197127 A1).
Claim 5: If applicant amends claims 1 and 4 such that the hand tool is required by the claims, the limitations of claim 5 would still not be patentable because it is rendered obvious by Hansen in view Magestro.
While Hansen does disclose a hand tool (16 of Figure 1), Hansen fails to disclose that the hand tool is a cordless drill.
Magestro teaches a similar apparatus that includes a cordless drive (50 of Figure 1) used for driving a driving assembly.
Therefore, it would have been obvious to one of ordinary skill in the art to substitute a cordless drill for the hand tool of Hansen since it is prima facie obvious to substitute one known prior art element for another in order to achieve predictable results (MPEP 2143(B)). In this instant case the predictable result would be that the drive assembly of Hansen would be driven by the cordless drill and not the arm 16 of Hansen.
This modification would have been obvious to and well within the ability of one of ordinary skill in the art to make because a cordless drill would require less effort by the user to turn the drive assembly rather than turning the drive assembly of Hansen using the arm.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Benjamin et al. (US 11,131,066 B2) in view of Ashworth (US 3,355,146).
Claim 10: Benjamin et al. fails to disclose that the extractor includes at least one wheel for transporting the extractor to a desired location.
However, Ashworth teaches an extractor that includes two wheels (14 of Figure 1).
Therefore, it would have been obvious to one of ordinary skill in the art to modify the extractor of Benjamin et al. such that it included wheels because this modification would allow the extractor to be moved more easily.
Claim 11: Benjamin et al. further discloses a handle (508 of Figure 16B) capable of steering the extractor to a desired location. Ashworth also teaches a handle (22 of Figure 1) capable of steering the extractor to a desired location.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Benjamin et al. (US 11,131,066 B2).
Claim 18: Benjamin et al. fails to disclose that the gripping formation is shaped to accommodate the outer surface of an elongate post body selected from the group consisting of a star picket, a T-picket, and a pipe post.
However, as addressed above the gripping formation of Benjamin et al. is shaped for its intended use.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to change the shape of the gripping formation of Benjamin et al. to accommodate the outer surface of an elongate post body selected from the group consisting of a star picket, a T-picket, and a pipe post, since 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. In this instant case the modified gripping formation of Benjamin et al. would still perform the same function, extracting an elongated object.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Hansen (1,795,391) in view of Herring (US 4,250,769).
Claim 19: Hansen fails to disclose that the holding assembly includes a chain.
However, Herring teaches that it is known in the art to hold an elongated body to be extracted with a chain (34 of Figure 4).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the chain of Herring with the holding assembly of Hansen in order to provide a better hold on the elongate body. 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 combine prior art elements by known methods in order to achieve predictable results (MPEP 2143(A)). In the instant case the chain of Herring could be coupled to the elongate body and holding assembly of Hansen such that the apparatus of Hansen was capable of extracting an elongate body such a wooden fence post.
Conclusion
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.
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/JASON L VAUGHAN/Primary Examiner, Art Unit 3726