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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 13, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Doroslovac (2015/0314429).
In reference to claim 1, Doroslovac discloses an anti-slip fastener driver (i.e. the embodiment shown in Figure 8) comprising:
a shank (12, Figure 8); and
a driving portion formed on an end of the shank (see figure below) and defining a longitudinal axis (2) extending therethrough, wherein the driving portion has a top end flat face (1) extending perpendicularly to the longitudinal axis (Figure 8), a plurality of outer peripheral faces surrounding the longitudinal axis (see three out of six outer peripheral faces in the figure below), and a plurality of driving recesses (3, Note; six driving recesses are provided in Figure 8) formed on the top end flat face (see three of the faces in the figure below) and sequentially arranged around the longitudinal axis, wherein each of the plurality of driving recesses has a bevel face (see figure below) inclinedly connected to the top end flat face at an inclination angle (Note; since the bevel face curves there are multiple inclination angles), and a driving face (see figure below) perpendicularly connected to the top end flat face (see figure below).
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In reference to claim 2, Doroslovac discloses that the number of the plurality of outer peripheral faces is six (see Figure 8) to cause the driving portion having a regular hexagonal cross-sectional shape, and wherein the number of the plurality of driving recesses is six (see Figure 8).
In reference to claim 3, Doroslovac discloses that each of the plurality of outer peripheral faces is a right trapezoid surface having a top short side (see figure below) adjacently connected to the top end flat face, a bottom long side (see figure below) parallel to the top short side and connected to the shank, and a first lateral side (see figure below) and a second lateral side (see figure below) parallel to each other and respectively connected to adjacent outer peripheral faces (Figure 8).
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In reference to claim 6, Doroslovac discloses that each of the plurality of driving recesses further has a first driving edge (see figure below) adjacently connected to the top end flat face and the respective bevel face, and a second driving edge (see figure below) adjacently connected (Note; the definition of the term “adjacent” is defined according to www.merriam-webster.com as being; “nearby”. Since, the second driving edge is located “nearby” to the top end, it meets the definition above and thus the limitation of the claim) to the top end flat face and the respective driving face.
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Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 4, is rejected under 35 U.S.C. 103 as being unpatentable over Doroslovac (2015/0314429) or alternatively as being unpatentable over Doroslovac in view of Shephard (4270418).
In reference to claim 4, Doroslovac discloses the claimed invention as previously mentioned above, but lacks,
a length of the top short side is less than a half of a length of bottom long side.
There is no evidence of record that establishes that changing the length of the top short side, would result in a difference in function of the Doroslovac device. Further, a person having ordinary skill in the art, being faced with modifying the length of the top short side of Doroslovac, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed length. Lastly, applicant has not disclosed that the claimed length solves any stated problem, indicating that the length “may be less than a half of the length of bottom long side 322” (see paragraph 23), and offering other acceptable lengths (“In the embodiment, the length of the top short side 321 is less than one third of the length of bottom long side 322.”, see paragraph 23) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the length of the top short side of Doroslovac such that it is less than a half of a length of bottom long side, as an obvious matter of design choice within the skill of the art.
Alternatively, Shephard further shows that it is old and well known in the art at the time the invention was made to provide a length of a top short side (see figure below) being much more than less than a half of a length of bottom long side (see length of bottom extending between the dotted line in the figure below) thereby suggesting that the length of a short side can be further reduced.
[AltContent: connector][AltContent: textbox (Bottom short side length)][AltContent: textbox (Top short side length)][AltContent: connector][AltContent: arrow][AltContent: connector][AltContent: ]
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the length of a top short side, of Doroslovac, with the known technique of providing a length of the top short side being less than a half of a length of bottom long side, as taught by Shephard, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively removes various types of workpieces including screws and bungs, Column 1, Lines 9-11).
Claims 5, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Doroslovac (2015/0314429).
In reference to claim 5, the examiner notes that since Doroslovac has a curved beveled face (see figure below), the inclination angle would change along various locations of the curve (see figure below and note more angles could also be provided) therefore Doroslovac suggests that the inclination angle can be changed or optimized. Thus, depending on a particular location of the curve, the inclination angle could obviously be in a range of 130 degrees to 175 degrees (see figure below).
[AltContent: textbox (Various inclination angles)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Curved bevel face)][AltContent: arc][AltContent: arc][AltContent: arc]
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However, Doroslovac lacks specifically disclosing that,
the inclination angle is in a range of 130 degrees to 175 degrees.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Doroslovac to have an inclination angle in a range of 130 degrees to 175 degrees, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Doroslovac would not operate differently with the claimed inclination angle and since the driving portion including the inclination angle is intended to reside within a fastener to facilitate torque transfer to the fastener (see Abstract), it would function appropriately having the claimed angle range. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the angle “In an example… is in a range of 130 degrees to 175 degrees” (see paragraph 9) and offering other acceptable ranges (“preferably in the range of 150 degrees to 160 degrees.”, see paragraph 24) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
In reference to claims 7 and 8, the examiner notes that since Doroslovac has a curved beveled face (see figure below), an included angle would change along various locations of the curve (see figure below and note more angles could also be provided) therefore Doroslovac suggests that the included angle can be changed or optimized. Thus, depending on a particular location of the curve, the included angle could obviously be greater than 50 degrees or greater than 80 degrees (see figure below).
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Various included angles)][AltContent: arc][AltContent: arc][AltContent: arc][AltContent: arrow][AltContent: textbox (Curved bevel face)]
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However, Doroslovac lacks specifically disclosing that,
the included angle is greater than 50 degrees or greater than 80 degrees.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Doroslovac to have an included angle greater than 50 degrees or greater than 80 degrees, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Doroslovac would not operate differently with the claimed included angle and since the driving portion including the included angle is intended to reside within a fastener to facilitate torque transfer to the fastener (see Abstract), it would function appropriately having the claimed included angle range. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the angle “In an example, an included angle … is greater than 50 degrees.” (see paragraph 11) and offering other acceptable ranges (“In another example, an included angle… is greater than 80 degrees.”, see paragraph 12) and therefore there appears to be no criticality placed on the included angle range as claimed such that it produces an unexpected result.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Johnson et al. (2017/0282337) also discloses a driving tool having a flat outer end face (25) and a plurality of driving recesses (26) extending from said outer end face (Figures 1 and 5).
English (8984991) also teaches of providing various angles that flutes or driving recesses (140) can be formed from with respect to a flat outer end (112, Column 3, Lines 32-41).
Werner et al. (2014/0102264) also shows that the shape of a driving recess (5/6) can be varied (Figures 1-9, 12 and paragraphs 49-51).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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, 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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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723