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 .
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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 24 April, 2026 has been considered by the examiner.
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 1-11 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Martinez (US 6923432) as evidenced by Hose (US 1548603).
Regarding claims 1, 5-6, 8, and 11, Martinez teaches a forged hammer head formed in a forging process (unitary hammer formed by forging or casting Martinez 3:14-23), comprising:
a hammer face (104) at one end of the head;
a hammer claw (106) at an end of the head opposite the face; and
a side nail puller (112) disposed between the face and the claw, the side nail puller configured to engage and pull a nail from a workpiece, the side nail puller comprising a side wall and a notch formed in the side wall (notch 116 formed in wall, Martinez fig. 2).
Martinez does not explicitly teach any details regarding a tool parting line or vestige, and consequently does not teach that
1) a tool parting line of the forging process does not intersect the notch;
5) a vestige of the tool parting line is formed on the hammer head,
6) the vestige is formed between the notch and a top end of the hammer head,
8) the notch is perpendicular to the tool parting line; and
11) the tool parting line of the forging process is above the notch.
However, it has been held that “in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” MPEP § 2144.01, citing In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Martinez does explicitly teach that the hammer may be produced via forging. Because parting lines and associated flash (or vestiges from removed flash) are a well-known consequence of forging, one of ordinary skill would infer the presence of a parting line (and associated vestige) somewhere in on the hammer of Martinez. Furthermore, it is well known in the art that heat from the grinding required to remove flash from a forged hammer head will reduce the strength of the underlying steel (Hose 1:31-40). Furthermore, one of ordinary skill would infer that a notch for pulling nails needed to be able to withstand significant stresses experienced during normal use.
It would have been a matter of obvious design choice for a person of ordinary skill in the art before the effective filing date to modify the production of the hammer of Martinez such that the forging process resulted in the hammer having a tool parting line of the forging process that does not intersect the notch; a vestige of the tool parting line formed on the hammer head between the notch and a top end of the hammer head, the notch being perpendicular to the tool parting line; and the tool parting line of the forging process being above the notch, as there are a finite number of arrangements for forging dies that would allow the production of the disclosed hammer, and one of ordinary skill would understand that having a parting line intersect the notch would result in unacceptable weakening of the areas of the notch. The remaining limitations about the particular angles and relative positions of the parting line and vestige are not disclosed as critical to the operation of the hammer, and modifying the positions thereof do not appear to modify the operation of the device, which has been held to be an obvious matter of design choice. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
2. Martinez as modified teaches the forged hammer head of claim 1, wherein the hammer head is formed as part of a two-piece hammer (Martinez discloses additional embodiments having a separate handle, Martinez 2:66-3:4).
3. Martinez as modified teaches the forged hammer head of claim 2, wherein the hammer head comprises an eye-hole extending therethrough for receiving a hammer handle (Martinez discloses that embodiments having a separate handle would include a hollow area equivalent to hollow area 124 to receive the handle, see Martinez 2:66-3:4 and fig. 3).
4. Martinez as modified teaches the forged hammer head of claim 3, wherein the hammer head is devoid of any structure between the notch and the eye-hole (hollowed out area 124 is hollow, see Martinez fig. 3).
7. Martinez as modified teaches the forged hammer head of claim 1, wherein the hammer head is formed as part of a one-piece hammer, and wherein the hammer head is integrally formed as part of the same forging process as a hammer handle shaft (hammer head and handle are unitary and may be forged, Martinez 3:14-23).
Regarding claims 9 and 10, Martinez as modified teaches the forged hammer head of claim 1, wherein the forged side nail puller is on one side of the hammer head (Martinez fig. 2). Martinez does not teach the presence of an additional nail puller disposed on an opposing side of the hammer head. However, it would have been obvious for one of ordinary skill in the art to further modify the hammer head of Martinez as modified such that it included a second forged side nail puller disposed on an opposing side of the hammer head, as one of ordinary skill would understand that doing so would make the hammer usable by right-handed or left-handed people without any loss of ergonomics or functionality, and furthermore, it has been held that the mere duplication of parts has no patentable significance unless it results in some new and unexpected result. see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claims 14-20, claim 14 is patentably indistinguishable from claim 4, and is therefore rejected as obvious over Martinez as modified for the same reasons. Claims 15-17 and 20 depend from claim 14 and add the subject matter discussed in the rejections of claims 5-6, 8, and 11, and are rejected as obvious for the same reasons as those claims. Claims 18 and 19 depend from claim 14 and recite the additional subject matter discussed in the rejections of claims 9 and 10, and are rejected as obvious for the same reasons as those claims.
Response to Arguments
Applicant's arguments filed 24 April, 2026 have been fully considered but they are not persuasive.
Applicant argues that, because Martinez does not explicitly teach that the parting line intersects the notch, it would not have been obvious to one of ordinary skill to modify the hammer of Martinez to reach the claimed invention.
As noted in the rejection of claims 1-11 and 14-20 as obvious over Martinez, it has been held that “in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” MPEP § 2144.01, citing In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
“A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007) “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396.
Applicant’s arguments fail to properly account for the inferences and creative steps one of ordinary skill in the art would have employed.
The rejection made three statements regarding inferences one of ordinary skill would have made:
the use of forging to make a hammer, as taught by Martinez, would result in a parting line and associated flash vestige (or vestige from removed flash) located somewhere on the hammer;
That the process of removing flash was well known in the art to reduce the strength of steel located at the position of removal; and
That a notch used for pulling nails would need to be able to withstand significant stresses during use.
In light of these inferences, the rejection concluded that one of ordinary skill would have found it desirable to ensure that the parting line was located somewhere other than the notch, so as to ensure that the strength of steel in the notch areas was not weakened by a flash removal process.
Applicant incorrectly argues that this finding of obviousness “improperly treats the claimed limitation as an automatic or inevitable result of the prior art”. Inevitability is not a requirement for establishing a prima facie case of obviousness. A finding that a modification would have been obvious is distinct from a finding that a modification would have been inevitable or inherent, and no such finding was made.
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 arguing that the prior art does not teach anything regarding stresses experienced by a notch and the placement of a parting line near a notch, applicant discounts the ability of a person of ordinary skill to make inferences based on their knowledge of the relevant art.
The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the relevant time. Factors that may be considered in determining the level of ordinary skill in the art may include: (A) “type of problems encountered in the art;” (B) “prior art solutions to those problems;” (C) “rapidity with which innovations are made;” (D) “sophistication of the technology; and” (E) “educational level of active workers in the field. In a given case, every factor may not be present, and one or more factors may predominate.” In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995); Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986); Environmental Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983).
As evidenced by Hose, one of ordinary skill in the forging arts would be familiar with the reductions in strength associated with parting lines. Furthermore, one of ordinary skill would be familiar with the basic operation of a hammer, from which they would know that pulling a nail involves significant forces being experienced by each of the nail and nail-pulling element. Finally, the fact that sharp corners such as those found in a notch will experience stress concentrations is extremely well known in manufacturing and engineering. A person of ordinary skill would be expected to understand that common structural elements such as fillets, chamfers, and other rounded edges are provided largely to reduce failures associated with stress concentrations in sharp corners.
Thus, the motivation to modify the hammer of Martinez to reach claimed invention is provided, not by some explicit teaching or suggestion from the prior art, but from the knowledge generally available to one of ordinary skill in the art.
Applicant likewise argues that the placement of the line is not a matter of obvious design choice, because obviousness requires a reason to select the claimed option. Because such a reason was provided by the knowledge generally available to one of ordinary skill in the art, a reason exists. Furthermore, applicant’s arguments do not establish what sort of “different function” or “unexpected results” would result from moving the parting line into specific positions and angles rather beyond those that would result from ensuring that the parting line does not intersect the notch. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Applicant further argues that the present application describes Martinez as “virtually impossible to forge”. However, this directly contradicts the teaching from Martinez that its hammer head may be forged, and is therefore not persuasive.
Furthermore, applicant is advised that the rejection did not rely on a combination of Martinez and Hose, but solely a modification of Martinez based on the general knowledge of one of ordinary skill, as evidenced by the disclosures of Hose. So arguments regarding a combination of Martinez and Hose are misdirected and unpersuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding claim 14, applicant argues that Martinez fails to teach the limitation regarding a lack of structure between a notch and an eye-hole. As was noted in the rejection of claim 4 (which incorporates the rejections of claims 1-3 and consequently is identical in scope to claim 14), Martinez teaches that the hollow portion of the head is configured to receive a handle in embodiments using a separate handle. Because the hollow portion would be a hole for receiving a hammer, it teaches the claimed eye-hole. As noted in the rejection, Martinez teaches a lack of structure between the hollow portion and the notch. Applicant’s arguments that Martinez does not teach a two-piece structure with the claimed elements appear to rest on a misreading of the teachings of Martinez, and are therefore unpersuasive.
For these reasons, applicant’s arguments are not persuasive and the rejections of claims 1-11 and 14-20 are maintained.
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 JONATHAN R ZAWORSKI whose telephone number is (571)272-7804. The examiner can normally be reached Monday-Thursday 8:00-5:00, Fridays 9:00-1:00.
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/J.R.Z./Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
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