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 .
Claim Rejections - 35 USC § 112(b)
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 2, 4, 5, 12, and 14, and those claims depending therefrom, 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.
Regarding claim 2, the claimed “far apart” is indefinite as the term “far” is relative. For the purpose of examination, the examiner will consider this to be “
Regarding claim 2, “the inclined angle” is indefinite for lacking antecedent basis. For the purpose of examination, the examiner will consider this to be “an inclined angle.”
Regarding claim 4, the claimed “anti-slip face” is indefinite as to what “anti-slip” conveys in terms of structure. The term “anti-slip face” is considered to be more specific structurally than simply a “face.” In other words, there would be an assumption that simply showing “a face” and stating that it is “anti-slip” would not be sufficient in showing an “anti-slip face.” The term “anti-slip” seemingly adds a structure in terms of shape, size, material, etc. that would be considered “anti-slip” to a “face.” However, it’s unclear what that structure would be. For example, a wrench in general is shaped so as to not slip on the fastener which it is turning and, therefore, is “anti-slip” to a degree. However, others would consider “anti-slip” to refer to a material that raises the coefficient of friction, such as a rubber coating, to be “anti-slip.” Without defining what is meant by “anti-slip,” then the claim is unclear in regards to all structures included and/or excluded from being “anti-slip.” In other words, simply having a face that contacts a surface could be considered “anti-slip,” which might or might not be inconsistent with what the specification regards as “anti-slip.” This ambiguity creates issues of indefiniteness as to whether or not the prior art would read on “anti-slip.” For the purpose of examination, the examiner will consider “anti-slip face” to just be “
Regarding claim 5, “the included angle” lacks antecedent basis. As best understood, this seems to be alluding back to the “inclined angle.” Therefore, for the purpose of examination, the examiner will consider this to be “the inclined angle.”
Regarding claim 12, “wherein each one of the two clamping jaws has two engaging portions formed on the inner side” is indefinite. This appears to be introducing “two engaging portions” when “engaging portions” have already been claimed. It is advised that Applicant refer to these as “the two engaging portions” or “two engaging portions the at least one engaging portion,” or any other variation which conveys that these are the already previously claimed “engaging portion(s).”
Regarding claim 14, the claimed “one of the three said engaging portions of each one of the two clamping jaws away from the mouth” is indefinite. There is no verb to signify if the engaging portions are, for example, “positioned” away from the mouth. Additionally, the term “away” is relative and, in this case, creates ambiguity about what is meant by “away.” Technically, two structures not occupying the same space are “away” from each other in the broad sense that they are absent from a place. Additionally, the term “away” could mean a direction, but any direction if one does not specify which direction means away. For example, the term “away” in regards to a perimeter of a circle could mean going inward from the perimeter or outward from the perimeter, thus making the term meaningless. Applicant should specify what is meant by “away” in the claim.
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(s) 1-10 and 12-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hsien (US-2005/0011320).
Regarding claim 1, Hsien (US-2005/0011320) discloses a wrench with anti-penetration effect comprising:
a body (handle portion 11) being an elongated panel (Figs. 10 and 11);
at least one wrench head (head 19) formed on an end of the body (handle portion 11) (Fig. 1), and each one of the at least one wrench head having an inner side; a top surface; a bottom surface (Fig. 1); and
at least one engaging portion (see annotated Fig. 11 below) disposed on the inner side of the at least one wrench head (head 12) (Fig. 3), and
each one of the at least one engaging portion having two engaging faces (see annotated Fig. 11 below) connected to each other with an included angle (see annotated Fig. 11 below) and disposed between the top surface and the bottom surface of the at least one wrench head (head 13); and
at least one abutting unit (protruding portions 14) transversally formed on the top surface of the at least one wrench head (driving head 19).
PNG
media_image1.png
378
599
media_image1.png
Greyscale
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, “[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020). MPEP 2113 states: The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). Therefore, one must analyze the specification to determine if the process of punching imparts any distinct structural characteristics.
The distinct structural characteristic(s) of punching, as it is understood, is an abutting unit (30) integral with the jaw 21, 22, that was punched. Therefore, this limitation is considered to be a product-by-process that requires the abutting unit (30) to be integral with the jaw, particularly the top surface.
With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 2, Hsien discloses the wrench with anti-penetration effect as claimed in claim 1, wherein the at least one wrench head (head 19) is open-ended (Fig. 11) and has two clamping jaws (each side of the open wrench head 19) connected and arranged facing each other (Figs. 10 and 11), each one of the two clamping jaws having an end portion (the ends distal from the handle 11) (Figs. 10 and 11), and the two end portions disposed far apart from each other (Figs. 10 and 11); and
a mouth formed between the two end portions of the two clamping jaws (Figs. 10 and 11);
at least one of the said at least one engaging portion is formed on an inner side of each one of the two clamping jaws (Figs. 10 and 11); and
the wrench has one said abutting unit (14) disposed on the said engaging portion of each one of the two clamping jaws (Fig. 11), aligning with the inclined angle of the said engaging portion (Fig. 11), and transversally extended out of the two engaging faces of the said engaging portion (Fig. 11).
PNG
media_image2.png
378
668
media_image2.png
Greyscale
PNG
media_image1.png
378
599
media_image1.png
Greyscale
Regarding claim 3, Hsien discloses the wrench with anti-penetration effect as claimed in claim 2, wherein each one of the two clamping jaws has one said engaging portion (Figs. 10 and 11), and the two said engaging portions of the two clamping portions face to each other (Figs. 10 and 11); and the at least one wrench head (head 19) has a curved portion formed between the two said engaging portions of the two clamping portions (Fig. 11).
PNG
media_image3.png
378
668
media_image3.png
Greyscale
Regarding claim 4, Hsien discloses the wrench with anti-penetration effect as claimed in claim 3, wherein each one of the two clamping jaws has an anti-slip face (protruding resing portions 15) disposed on the inner side of the clamping jaw adjacent to the end portion of the clamping jaw (Figs. 10 and 11).
Regarding claim 5, Hsien discloses the wrench with anti-penetration effect as claimed in claim 2, wherein the said abutting unit (14) is formed on the top surface of the at least one wrench head (head 19) at the included angle of a corresponding said engaging portion (Figs. 10 and 11) by a small punch head moved toward the at least one wrench head from the top surface to the bottom surface of the at least one wrench head to punch the top surface of the at least one wrench head deforming to form the said abutting unit.
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, “[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020). MPEP 2113 states: The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). Therefore, one must analyze the specification to determine if the process of punching imparts any distinct structural characteristics.
The distinct structural characteristic(s) of punching, as it is understood, is an abutting unit (30) integral with the jaw 21, 22, that was punched. Therefore, this limitation is considered to be a product-by-process that requires the abutting unit (30) to be integral with the jaw, particularly the top surface.
With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 6, Hsien discloses the wrench with anti-penetration effect as claimed in claim 3, wherein the said abutting unit (14) is formed on the top surface of the at least one wrench head at the included angle of a corresponding said engaging portion (Figs. 10 and 11).
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 7, Hsien discloses the wrench with anti-penetration effect as claimed in claim 4, wherein the said abutting unit (14) is formed on the top surface of the at least one wrench head at the included angle of a corresponding said engaging portion (Figs. 10 and 11).
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 8, Hsien discloses the wrench with anti-penetration effect as claimed in claim 2, wherein the said abutting units (14) are formed on the top surface of the at least one wrench head respectively at the included angles of two corresponding said engaging portions (Figs. 10 and 11).
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 9, Hsien discloses the wrench with anti-penetration effect as claimed in claim 3, wherein the said abutting units (14) are formed on the top surface of the at least one wrench head respectively at the included angles of two corresponding said engaging portions (Figs. 10 and 11).
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 10, Hsien discloses the wrench with anti-penetration effect as claimed in claim 4, wherein the said abutting units (14) are formed on the top surface of the at least one wrench head respectively at the included angles of two corresponding said engaging portions (Figs. 10 and 11).
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 12, Hsien discloses the wrench with anti-penetration effect as claimed in claim 2, wherein each one of the two clamping jaws has two said engaging portions (15) formed on the inner side of the clamping head at a spaced interval (Figs. 10 and 11), and the at least one wrench head (head 19) has one said abutting unit (14) formed on one of the two said engaging portions (15) of each one of the two clamping jaws adjacent to the mouth (Figs. 10 and 11).
Regarding claim 13, Hsien discloses the wrench with anti-penetration effect as claimed in claim 12, wherein the at least one wrench head (head 19) has a curved portion formed between two of the said engaging portions of the two clamping jaws without forming the said abutting units (14) (doesn’t form the abutting units on the clamping jaws, which are considered “the said abutting units”).
PNG
media_image3.png
378
668
media_image3.png
Greyscale
Regarding claim 14, Hsien discloses the wrench with anti-penetration effect as claimed in claim 2, wherein each one of the two clamping jaws has three said engaging portions (15) formed on the inner side of the clamping head (head 19) at spaced intervals (Figs. 10 and 11), and the at least one wrench head (head 19) has two said abutting units (14) formed on one of the three said engaging portions (15) of each one of the two clamping jaws adjacent to the mouth (Figs. 10 and 11) and one of the three said engaging portions (15) of each one of the two clamping jaws away from the mouth (Figs. 10 and 11).
PNG
media_image4.png
378
668
media_image4.png
Greyscale
Regarding claim 15, Hsien discloses the wrench with anti-penetration effect as claimed in claim 14, wherein the at least one wrench head (head 19) has a curved portion formed between two of the said engaging portions of the two clamping jaws away (i.e. outwardly) from the mouth (Figs. 10 and 11).
PNG
media_image3.png
378
668
media_image3.png
Greyscale
Regarding claim 16, Hsien discloses the wrench with anti-penetration effect as claimed in claim 2, wherein the wrench is a wrench and has one said abutting unit (14) disposed on each engaging portion (15) (Figs. 10 and 11). As to the wrench being a “tubing wrench,” this is considered to be intended use, meaning a wrench used for tubing. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). In other words, using a wrench for a different application does not structurally differentiate the claimed wrench from the prior art. Since Applicant is using the claimed structure on tubing, then it therefore would be expected that the prior art, which possesses the claimed structure, could be used for the same intended use. As such, there is considered no inherent structural difference between a wrench and a wrench used for tubing and, since the prior art discloses the claimed wrench, it therefore anticipates the claimed invention.
Regarding claim 17, Hsien discloses the wrench with anti-penetration effect as claimed in claim 3, wherein the wrench is a wrench and has one said abutting unit (14) disposed on each engaging portion (15) (Figs. 10 and 11). As to the wrench being a “tubing wrench,” this is considered to be intended use, meaning a wrench used for tubing. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). In other words, using a wrench for a different application does not structurally differentiate the claimed wrench from the prior art. Since Applicant is using the claimed structure on tubing, then it therefore would be expected that the prior art, which possesses the claimed structure, could be used for the same intended use. As such, there is considered no inherent structural difference between a wrench and a wrench used for tubing and, since the prior art discloses the claimed wrench, it therefore anticipates the claimed invention.
Regarding claim 18, Hsien discloses the wrench with anti-penetration effect as claimed in claim 4, wherein the wrench is a wrench and has one said abutting unit (14) disposed on each engaging portion (15) (Figs. 10 and 11). As to the wrench being a “tubing wrench,” this is considered to be intended use, meaning a wrench used for tubing. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). In other words, using a wrench for a different application does not structurally differentiate the claimed wrench from the prior art. Since Applicant is using the claimed structure on tubing, then it therefore would be expected that the prior art, which possesses the claimed structure, could be used for the same intended use. As such, there is considered no inherent structural difference between a wrench and a wrench used for tubing and, since the prior art discloses the claimed wrench, it therefore anticipates the claimed invention.
Regarding claim 19, Hsien discloses the wrench with anti-penetration effect as claimed in claim 1, wherein the at least one wrench head (head 19) is open-ended and has two clamping jaws connected and arranged facing each other (see annotated Fig. 11 below), each one of the two clamping jaws having an end portion (see annotated Fig. 11 below), and the two end portions disposed far apart from each other (Fig. 11); and a mouth formed between the two end portions of the two clamping jaws (see annotated Fig. 11 below); at least two of the said engaging portions (15) are formed on an inner side of each one of the two clamping jaws (see annotated Fig. 11 below); and the wrench has one said abutting unit (14) disposed between the at least two of the said engaging portions (15) of each one of the two clamping jaws (Fig. 11).
PNG
media_image2.png
378
668
media_image2.png
Greyscale
PNG
media_image1.png
378
599
media_image1.png
Greyscale
Regarding claim 20, Hsien discloses the wrench with anti-penetration effect as claimed in claim 19, wherein the said abutting unit (14) is formed on the top surface of the at least one wrench head (19) between the at least two of the said engaging portions (15) of each one of the two clamping jaws.
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 21, Hsien discloses the wrench with anti-penetration effect as claimed in claim 16, wherein the said abutting units (14) are formed on the top surface of the at least one wrench head (19) respectively at the said engaging portions (15) (Figs. 10 and 11).
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 22, Hsien discloses the wrench with anti-penetration effect as claimed in claim 17, wherein the said abutting units (14) are formed on the top surface of the at least one wrench head respectively at the said engaging portions (15) (Figs. 10 and 11).
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 23, Hsien discloses the wrench with anti-penetration effect as claimed in claim 18, wherein the said abutting units (14) are formed on the top surface of the at least one wrench head (19) respectively at the said engaging portions (15) (Figs. 10 and 11).
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 24, Hsien discloses the wrench with anti-penetration effect as claimed in claim 1, wherein the at least one wrench head has multiple said engaging portions (15) formed on the inner side of the at least one wrench head (19) at spaced intervals (Figs. 10 and 11), and the said abutting unit (14) is disposed on at least one of the multiple said engaging portions (15) (Figs. 10 and 11).
Regarding claim 25, Hsien discloses the wrench with anti-penetration effect as claimed in claim 24, wherein the said abutting unit (14) is formed on the top surface of the at least one wrench head (19) and aligns with the corresponding said engaging portion (15) (Figs. 10 and 11).
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 26, Hsien discloses the wrench with anti-penetration effect as claimed in claim 24, wherein the said abutting unit (14) is formed on the top surface of the at least one wrench head (19) (Figs. 10 and 11).
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Regarding claim 27, Hsien discloses the wrench with anti-penetration effect as claimed in claim 24, wherein the said abutting unit (14) is formed on the top surface of the at least one wrench head (19) at the included angle (angle between portions 15) of the corresponding said engaging portion (15) (Figs. 10 and 11).
As to the abutting unit being formed by punching and extending the unit out of the inner side of the at least one wrench head, this is considered product-by-process. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. With this analysis of what the product-by-process statement invokes in terms of structure, it is considered that this requires the prior art to have an abutting unit integral with the wrench head. Hsien, as shown more closely in Figure 2, discloses a protruding portion (140), equivalent to the protruding portion (14), which is integrally mounted to the head (12). Therefore, while it’s not explicit that the protruding portion (14) is integrally mounted, it would’ve been obvious to have this integrally connected to the head given the teaching of Figure 2 of Hsien. Since the prior art makes obvious the product of the process, it therefore meets the claim.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hsien (US-2005/0011320) in view of Cornog (US-6,276,241).
Regarding claim 11, Hsien discloses the wrench with anti-penetration effect as claimed in claim 1, but fails to disclose wherein the wrench is formed by multiple stacking and riveting pieces, and an inner side of the uppermost piece has a shape different from those of the other pieces to form the at least one abutting unit on the at least one wrench head.
However, Cornog (US-6,276,241) teaches a wrench (wrench 10) formed by multiple stacking and riveting pieces (“[a] fundamental aspect of the invention is that the frame 11 is of laminated construction, being made up of a plurality of stacked metal plates, secured together by suitable fasteners”) [Cornog; col. 2, lines 50-52]. Since Cornog is pertinent to wrenches, including end wrenches like Hsien, it therefore would’ve been obvious to one of ordinary skill in the art to make the wrench of Hsien to be made up of a plurality of stacked metal plates that are riveted together with fasteners (“It is known to provide wrenches of other types, such as end wrenches, ratchet wrenches and the like, having a laminated construction, including a plurality of layers of metal stacked together and secured by suitable fasteners, or by bonding or the like.”) [Cornog; col. 1, lines 20-24], as taught by Cornog, in order to make a cheaper wrench (“An adjustable wrench has a frame, which is typically formed of solid metal and includes a handle and a head defining a fixed jaw. A movable jaw is mounted on the head and includes a rack engageable with a thumb-operated worm gear for translationally moving the movable jaw relative to the fixed jaw. The frame and the movable jaw are typically forged and the construction of the wrench is relatively expensive.”) [Cornog; col. 1, lines 12-19].
As to an inner side of the uppermost piece has a shape different from those of the other pieces to form the at least one abutting unit on the at least one wrench head, Hsien teaches the uppermost portion/plane of the wrench includes the protruding portions 14 and, therefore, the inner side of the uppermost piece, which possess these protruding portions 14, would be of a different shape than those without the protruding portions, thus having a shape different from those of the other pieces as claimed (Figs. 10 and 11 of Hsien).
Claim(s) 29-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hsien (US-2005/0011320) in view of Johnson (US-2,715,347).
Regarding claim 28, Hsien discloses the wrench with anti-penetration effect as claimed in claim 24, but fails to disclose wherein the wrench has twelve said engaging portions formed on the inner side of the at least one wrench head at spaced intervals.
However, Johnson (US-2,715,347) teaches “[the peripherally spaced teeth or nut-engaging surfaces 9] may vary in number to meet different requirements” [Johnson; col. 1, lines 64-72]. It therefore would’ve been obvious to one of ordinary skill in the art to modify the number of the engaging portions (15) of Hsien to be a different number, such as the claimed “twelve,” in order to meet different requirements like attaching to better to a fastener that would have a shape corresponding to twelve engaging portions as opposed to the 10 as shown by Hsien.
Regarding claim 29, Hsien discloses the wrench with anti-penetration effect as claimed in claim 25, but fails to disclose wherein the wrench has twelve said engaging portions formed on the inner side of the at least one wrench head at spaced intervals.
However, Johnson (US-2,715,347) teaches “[the peripherally spaced teeth or nut-engaging surfaces 9] may vary in number to meet different requirements” [Johnson; col. 1, lines 64-72]. It therefore would’ve been obvious to one of ordinary skill in the art to modify the number of the engaging portions (15) of Hsien to be a different number, such as the claimed “twelve,” in order to meet different requirements like attaching to better to a fastener that would have a shape corresponding to twelve engaging portions as opposed to the 10 as shown by Hsien.
Regarding claim 30, Hsien discloses the wrench with anti-penetration effect as claimed in claim 26, but fails to disclose wherein the wrench has twelve said engaging portions formed on the inner side of the at least one wrench head at spaced intervals.
However, Johnson (US-2,715,347) teaches “[the peripherally spaced teeth or nut-engaging surfaces 9] may vary in number to meet different requirements” [Johnson; col. 1, lines 64-72]. It therefore would’ve been obvious to one of ordinary skill in the art to modify the number of the engaging portions (15) of Hsien to be a different number, such as the claimed “twelve,” in order to meet different requirements like attaching to better to a fastener that would have a shape corresponding to twelve engaging portions as opposed to the 10 as shown by Hsien.
Regarding claim 31, Hsien discloses the wrench with anti-penetration effect as claimed in claim 27, but fails to disclose wherein the wrench has twelve said engaging portions formed on the inner side of the at least one wrench head at spaced intervals.
However, Johnson (US-2,715,347) teaches “[the peripherally spaced teeth or nut-engaging surfaces 9] may vary in number to meet different requirements” [Johnson; col. 1, lines 64-72]. It therefore would’ve been obvious to one of ordinary skill in the art to modify the number of the engaging portions (15) of Hsien to be a different number, such as the claimed “twelve,” in order to meet different requirements like attaching to better to a fastener that would have a shape corresponding to twelve engaging portions as opposed to the 10 as shown by Hsien.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US-8,459,153, US-7,340,983, US-7,117,770, US-6,955,105 (Fig. 11), US-6,186,032, US-5,983,758, US-5,307,713, and US-2011/0167965 are pertinent to claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL DILLON CRANDALL whose telephone number is (571)270-5947. The examiner can normally be reached Mon - Fri 8:30 - 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Carter can be reached at 571-270-5947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOEL D CRANDALL/Examiner, Art Unit 3723