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 .
Status
In response to the amendment filed on 03/06/2026, claims 1, 3, 4, 10, and 12 have been amended, and claim 2 is cancelled. Claims 1 and 3-13 are pending and under examination.
Drawings
In response to the drawing objection made in the previous non-final office action dated on 12/15/2025, Applicant submitted new sheet of drawing on 03/06/2026. Therefore, the drawing objection has been withdrawn.
Claim Objections
Claim 3 is objected to because of the following informalities:
In claim 3, line 3, the term may be amended as “the [[grip]]handle element”.
Appropriate correction is required.
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.
Claims 1, 6-9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gustavo (BR 202019011529U2).
Regarding claim 1, Gustavo discloses a tool (fig. 1, mallet) comprising
a handle element (guide 8), a rod (tube 5) which is received in the handle element and has a second stop (stop 43) at its end opposite the handle element, and a weight (stem 3) slidingly guided on the rod, which has a third stop (an end of the stem 3) on its side facing the handle element and a fourth stop (recess 32) in its interior (the recess 32 is formed interior from a surface of the stem 3), characterized in that the handle element has a first stop (an end of an impact tip 6) at its end facing the weight, wherein the first stop is concealed inside the handle element, so that the weight can be struck with its third stop against the first stop (see annotated Gustavo fig. 4 below and fig. 5 for the recited elements. The first stop is concealed inside the guide 8 [corresponds to the recited handle element]. The recited third stop of the stem 3 [corresponds to the recited weight] can be struck with the recited first stop of the guide 8 [corresponds to the recited handle element]. The tube 5 is received in the guide 8 during motion of the stem 3) and alternatively with its fourth stop against the second stop (fig. 5 below, if the stem 3 [corresponds to the recited weight] slides to left, the recess 32 [corresponds to the recited fourth stop] of the stem 3 can be struck with the stop 43 [corresponds to the recited second stop]).
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Annotated Gustavo Fig. 4
Regarding claim 6, Gustavo discloses the tool as in the rejection of claim 1, further comprises a receiving device arranged on the handle element, which is orientated towards a workpiece to be treated (annotated Gustavo fig. 4 above, a locking screw 92 [corresponds to the recited receiving device] is arranged on the handle element toward a workpiece to be treated).
Regarding claim 7, Gustavo discloses the tool as in the rejection of claim 6, wherein the receiving device accommodates processing inserts which can be attached to contact points of a structure to be dented in order to transmit force from the tool according to the invention, so that the tool acts as a pulling hammer (annotated Gustavo fig. 4 above and Gustavo English translation ¶ 0027, the locking screw 92 [corresponds to the recited receiving device] accommodates an end 93 [corresponds to the recited processing insert] of different configurations used for various functions including striking. Examiner acknowledges the processing inserts are not positive recited and the tool acting as a pulling hammer is an intended use, which has no patentable weight).
Regarding claim 8, Gustavo discloses the tool as in the rejection of claim 6, wherein the receiving device accommodates processing inserts which can be attached to a structure to be deformed in order to transmit force from the tool, so that the tool acts as a hammer (annotated Gustavo fig. 4 above and Gustavo English translation ¶ 0027, as discussed similarly in the rejection of claim 7 above, the locking screw 92 [corresponds to the recited receiving device] accommodates the end 93 [corresponds to the recited processing insert] of different configurations used for various functions including striking/hammering. Examiner acknowledges the processing inserts are not positive recited and the tool acting as a hammer is an intended use, which has no patentable weight).
Regarding claim 9, Gustavo discloses the tool as in the rejection of claim 6, wherein the receiving device accommodates a processing insert designed as a flexible knife, which is designed to be inserted into a bond or cementing between two body parts by means of the impact function and pulled out again by means of the pulling function, so that the bond or cementing can be released (annotated Gustavo fig. 4 above and Gustavo English translation ¶ 0027, as discussed similarly in the rejection of claims 7 and 8 above, the locking screw 92 [corresponds to the recited receiving device] accommodates the end 93 [corresponds to the recited processing insert] of different configurations used for various functions including cutting or extracting an object. Examiner acknowledges the processing inserts are not positive recited and the tool acting as a flexible knife is an intended use, which has no patentable weight).
Regarding claim 11, Gustavo discloses the tool as in the rejection of claim 1, wherein the tool has a closed flat end at the outer end of the weight (see annotated Gustavo fig. 4 above for a plug 1 [corresponds to the recited closed flat end]).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Gustavo, as applied to claim 1 above, in view of Neumarkel (US 2008/0257113).
Regarding claim 3, Gustavo discloses the tool as in the rejection of claim 1, wherein the weight is at least partially received in a recess of the grip element when it strikes the first stop (fig. 5 and annotated Gustavo fig. 4 above, an end part of the stem 3 [corresponds to the recited weight] is received in a recess of the guide 8 [corresponds to the recited handle/grip element] when the stem 3 strikes the first stop), but does not disclose the weight is tapered on its side facing the handle element.
As discussed above, the end part of the stem 3 is received by the guide 8. Specification of the instant application is silent as to why the handle element side of the weight needs to be tapered. It appears the weight is tapered in order to make sure the weight is received in the recess of the grip/handle element.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the non-tapered side of the weight to be tapered since applicant has not disclosed that doing so produces any unexpected result or is critical in performance. It appears the stem 3 of Gustavo has no tapered side, but it is well received by the recess of the guide 8. A person of ordinary skill in the art would readily make a non-tapered side of the weight to be tapered as long as it is received properly within the recess of the grip/handle element. In this situation, it would be a matter of design choice to change the shape of a non-tapered side to be a tapered side shape. See MPEP 2144.04(IV)(B).
Assuming arguendo, that it is not obvious to change a shape of the side of the weight, Neumarkel teaches, in an analogous sliding hammer field of endeavor, the weight is tapered on its side facing the grip element (fig. 3 and ¶ 0031, a slide hammer 104 [corresponds to the recited weight] has an impact end 210 on a side facing a receiver 218 [corresponds to the recited grip/handle element]. The impact end 210 may adapted for specific purposes and it may be shaped in various fashions, for example a concave shape, a pointed shape, or any other shape. The concave shape and the pointed shape can be a tapered shape).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the weight of Gustavo to provide the tapered shape as taught by Neumarkel. The tapered end may provide concentrated contact point for transmitting a greater impact force.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Gustavo, as applied to claim 1 above, in view of Wu et al. (CN 104022616A, hereinafter Wu) and Liang et al. (TW M629737U, hereinafter Liang).
Regarding claim 4, Gustavo discloses the tool as in the rejection of claim 1, further comprises a spring (annotated Gustavo fig. 4 above, a spring 7 is disposed in the handle), but does not disclose the spring is accommodated inside the weight.
Wu teaches, in an analogous hammer tool field of endeavor, the spring is accommodated inside the weight (fig. 1, an electric hammer comprises a spring 2 at an end of cylinder 1 [corresponds to the recited weight]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the tool of Gustavo to provide the spring inside the weight taught by Shen in order to provide buffering damping function of tool’s motion (Shen English translation, p. 3:33-34).
Gustavo as modified by Shen does not disclose a pretension of the spring being adjustable for the impact hardness of the weight by rotating the weight.
Liang teaches, in a mechanical device field of endeavor and capable of solving primary problem, a pretension of the spring being adjustable for the impact hardness of the weight by rotating the weight (Liang English translation, p. 16:3-9 and fig. 5, spring pretensioner for a roller bind comprises a spring system 30. The pretension force of the spring system 30 can be adjusted by rotating an exposed operating plate 432/43. While Gustavo as modified by Shen teaches the spring in the weight, the pretension of the spring can be adjusted as taught by Liang by rotating the plate 43, which is equivalent to rotating the weight. The adjustment of the impact hardness of an intended use. The pretension adjustment of spring of Gustavo as modified by Shen would adjust the impact hardness).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the tool of Gustavo as modified by Shen to provide the adjustment of the pretension by rotating the weight as taught by Liang so that the spring preload requirement can be adjusted by a simple, easy, and labor-saving way (Liang English translation, p. 16:7-10).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Gustavo, as applied to claim 1 above, in view of Fuga (US 5365648).
Regarding claim 5, Gustavo discloses the tool as in the rejection of claim 1, but does not disclose the handle element has a funnel-shaped widening at its end facing the weight.
Fuga teaches, in an analogous slide hammer field of endeavor, the handle element has a funnel-shaped widening at its end facing the weight (see annotated Fuga fig. 1 below, a pounding surface 34 is a funnel-shaped widening).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the handle element of Gustavo to provide the funnel-shape widening as taught by Fuga. The funnel shape helps imparting the impact force effectively (Fuga col. 2:54-57).
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Annotated Fuga Fig. 1
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Gustavo, as applied to claim 1 above, in view of Wu.
Regarding claim 10, Gustavo discloses the tool as in the rejection of claim 1, but does not disclose the weight has linear ball bearings in order to slide on the rod with optimized friction.
Wu teaches, in the analogous hammer tool field of endeavor, the weight has linear ball bearings in order to slide on the rod with optimized friction (fig. 1 and Wu English translation, p. 5:21-28, the electric hammer comprises a linear ball bearing 4 in the cylinder 1 [corresponds to the recited weight] for helping sliding movement relative to a rod 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the tool of Gustavo to provide the linear ball bearings as taught by Wu in order to help the impacting motion of the tool.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Gustavo, as applied to claim 11 above, in view of Menke et al. (US 5428853).
Regarding claim 12, Gustavo discloses the tool as in the rejection of claim 11, wherein the closed flat end of the weight widened (see annotated Gustavo fig. 4 above, the plug 1 [corresponds to the recited closed flat end] has a widened configuration compared with a body of the stem 3 [corresponds to the recited weight]), but does not disclose the closed flat end has a shape of a funnel.
Menke teaches, in an analogous sliding hammer field of endeavor, the closed flat end has a shape of a funnel (see annotated Menke fig. 7 below, an element corresponds to the recited closed flat end has a shape of funnel).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the weight of Gustavo to provide the funnel shaped closed flat end as taught by Menke. The funnel shaped end enables coupling additional tool on the weight. In Menke, a wrench member 14 is coupled to the closed flat end.
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Annotated Menke Fig. 7
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Gustavo, as applied to claim 11 above, in view of Shen (CN 203449219U).
Regarding claim 13, Gustavo discloses the tool as in the rejection of claim 11, but does not disclose the closed flat end has a rubber coating.
Shen teaches, in an analogous hand tool field of endeavor and capable of solving primary problem, the closed flat end has a rubber coating (Shen English translation ¶ 0008, a handle of a tool has a rubber coating surface. The closed flat end of the weight of the instant application is a part which can be held by a hand of a user. The handle of the Shen’s spanner can be held by a hand of a user. Thus, the rubber coating would perform the same function).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the tool of Gustavo to provide the rubber coating as taught by Shen in order to prevent a hand of user from slipping so that the tool can be used safely.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
First, the amended claim limitations of claim 1 requires the first stop is concealed inside the handle element. Because the Hayashi’s recited first stop (taper part 6) is not concealed inside the recited handle element (lever 7), the §102 rejection by Hayashi has been withdrawn.
However, Gustavo teaches the recited first stop (an end of an impact tip 6) is concealed inside the handle element (guide 8) (see annotated Gustavo fig. 4 above).
Applicant do not argue whether the prior arts disclose the recited elements of the handle element, the weight, the first stop, the second stop, the third stop, and the fourth stop. Instead, Applicant argues the features of the instant application have advantageous effects because the tool performs a striking function and a pulling function. Applicant further asserts the tool of the instant application minimizes the risk of injury because the tool can be used by one hand.
Applicant states Gustavo especially does not disclose the pulling function; therefore the Gustavo’s hammer is a sliding hammer, but not a pulling hammer. Additionally, Applicant states the Gustavo’s hammer requires two-handed operation by a user, and it consists of a large number of individual parts in order to achieve a striking force, which are not necessary in the tool of the instant application. Examiner respectfully disagrees to the arguments.
All claim limitations refer to composition and arrangement of the elements comprising the tool. Claim language do not present how to use the tool. The striking function and the pulling function of the tool are not claimed. A user may choose to use two hands to operate the tool of the instant application. Regardless of a number of parts, the Gustavo’s hammer comprises all recited elements as discussed in the rejections.
Therefore, Gustavo teaches all recited claim limitations regarding the apparatus.
For the reasons above, the arguments are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 SUKWOO JAMES CHANG whose telephone number is (571)272-7402. The examiner can normally be reached M-F 8:00a-5:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at (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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/S.J.C./Examiner, Art Unit 3723
/DAVID S POSIGIAN/Supervisory Patent Examiner, Art Unit 3723
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