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 .
Election/Restriction
Applicant’s election of Species 2 (Figs. 5-6, 8-9) is acknowledged. The election of species was made without traverse in the reply filed on 06/08/2026.
Regarding the subcombinations restriction, Applicant’s election with traverse of Invention III (claims 14-20) is acknowledged. Applicant’s remarks concerning the Requirement for Restriction have been considered but are not persuasive for the reasons stated in the Requirement. Specifically, Inventions I-III are distinct; Applicant’s claim table (Reply 2-5) clearly shows the distinctions. For example, claim 1 includes a torque handle not included in the other subcombinations (claims 8 and 14), and claim 14 has a different scope from claim 8, including limitations non-existent in claim 8. For these reasons, Examiner disagrees with Applicant’s characterization of the difference in scope between the claims (Reply 2-5). Examiner also disagrees with Applicant’s remarks concerning search burden and examination burden (Reply at 5). The divergent limitations of Inventions I-III will require a different field of search, which at a minimum includes employing different search strategies and search queries (especially with respect to the dependent claims), and will almost certainly require different bases for rejection due to their differences in claim scope. The Requirement for Restriction is still deemed proper and is therefore made final.
Claims 1-20 are pending. Claims 1-13 and 19 are withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention.
Information Disclosure Statement
The information disclosure statement filed 12/14/2023 fails to comply with the provisions of 37 C.F.R. § 1.33 and MPEP § 609 because the information disclosure statement is not signed. MPEP § 609.05(a). A signature was improperly entered in the Examiner’s signature box. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any resubmission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all requirements for statements under 37 CFR 1.97(e).
Drawings
The drawings are objected to because Figs. 2-11 are low resolution, dithered, and in grayscale/halftones, rendering them visually unclear. In accordance with 37 C.F.R. § 1.84(a)(1), black and white drawings are normally required; India ink, or its equivalent that secures solid black lines, must be used for drawings. Every line, number, and letter must be durable, clean, black, sufficiently dense and dark, and uniformly thick and well-defined, and the weight of all lines and letters must be heavy enough to permit adequate reproduction. 37 C.F.R. § 1.84(l). Moreover, the clarity of the drawings must be sufficient for clear reproduction to two-thirds size. 37 C.F.R. § 1.84(k). For examples of acceptable drawing clarity and quality, see US 20220362902 A1, US 20230076152 A1, US 20230286103 A1, and US 20240009795 A1. Examiner suggests outputting and resubmitting the drawings as vector graphics instead of raster images (bitmap) and uploading them to USPTO Patent Center as “Drawings-other than black and white line drawings”, which should cause the filed image file to be stored in the SCORE database without any image conversion.
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” in compliance with 37 C.F.R. § 1.121(d). No new matter should be entered. If the changes are not accepted by the examiner, Applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The title of the invention has a typo; “WRECH” should be changed to --WRENCH--. Examiner notes that this typo exists in the Application Data Sheet, while the title is correctly spelled in the filed specification. Appropriate correction is required.
Claim Objections
Claims 14, 17-18, and 20 are objected to because of the following informalities:
“a torque handle” (claim 14, line 9) should be changed to --the torque handle--;
“further comprising a magnet configured wherein the torque head comprises a magnet” (claim 17, lines 1-2) should be changed to --wherein the torque head comprises a magnet--;
“a target body” (claim 17, lines 2-3) should be changed to --the target body--;
“configured magnetically engage” (claim 18, line 2) should be changed to --configured to magnetically engage--;
“a target body” (claim 18, line 2) should be changed to --the target body--;
“a torque handle” (claim 20, line 1) should be changed to --the torque handle--.
Appropriate correction is required.
Double Patenting
Examiner is aware of Applicant’s copending application: 18/901,425, titled “OIL FILTER WRENCH”, which has pending claims directed to similar subject matter. Currently, the claims in this application and the copending application are sufficiently delineated and are patentably distinct from each other. Accordingly, a statutory double patenting rejection under 35 U.S.C. § 101 or a nonstatutory double patenting rejection is not appropriate at this time, but may be applied should the claims of this application and/or the copending application be amended such that the claims of this application are no longer patentably distinct from the claims of the copending application. MPEP § 804.
Applicant is advised of its duty of disclosure, candor, and good faith to identify its own copending applications and patents that disclose similar subject matter, as well as prior art and other information from the prosecution of its own copending applications and patents, that are material to the patentability (including double patenting) of this application. MPEP §§ 2001.04, 2001.05, 2001.06, 2001.06(a)-(e).
Claim Rejections – 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. § 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18 and 20 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.
Claim 18 recites the limitation “further comprising a plurality of magnets, each of the magnets configured...” (lines 1-2). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, does this “plurality of magnets” include the “magnet” recited in parent claim 17; or is this a separate plurality of magnets? Further, does the term “each of the magnets” refer each magnet of the plurality of magnets; or does it refer to each magnet of plurality of magnets and the previously recited magnet in claim 17; or something else? For examination purposes, this limitation is interpreted as best understood.
Claim 20 recites the limitation “wherein bracket receives [the] torque handle” (line 1). There is insufficient antecedent basis for the limitation “bracket” in the claim (this is read as “the bracket”), which renders the claim unclear and ambiguous. For examination purposes, this limitation is interpreted as “wherein the body receives [the] torque handle”.
The following is a quotation of 35 U.S.C. § 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. § 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. § 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. § 112(d) or pre-AIA 35 U.S.C. § 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 16 recites only the limitation “wherein the grip surface is textured”, which substantively the same as the limitation “the grip surface having a texture” in claim 14. Because claim 16 depends from claim 14, claim 16 fails to further limit the subject matter of claim 14. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections – 35 U.S.C. § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Lemmo
Claims 14-16 and 20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by US 6227078 B1 (“Lemmo”).
Regarding claim 1, Lemmo discloses a torque head of a wrench (Abstr.; Figs. 3, 4, 4a, 5; 5:16-24, torque head 20 that is capable of attaching to a drive tool to form a wrench; see 3:15-34) comprising:
a body (Figs. 3, 4, 4a, 5, body including elements 10 and 22);
a grip surface disposed upon the body, the grip surface having a texture (Figs. 3, 4, 4a, 5, grip surface including surface of elements 38, 13, 14, 11, and 7, the grip surface having a texture at reference 11 (see Fig. 4; 3:15-34, “angled facets 11”));
and an interface at least partially disposed upon the body opposite the grip surface and configured to engage with a bracing member (Figs. 3, 4, 4a, 5, interface 18 is on the body opposite the grip surface and capable of engaging with a bracing member (e.g., a drive tool); 5:16-24; see 3:15-34; Examiner notes that “a bracing member” is not positively recited),
wherein
the grip surface is configured to engage with a target body (Figs. 3, 4, 4a, 5; 6:63-7:12, the grip surface is capable of engaging with an oil filter; Examiner notes that “a target body” is not positively recited),
the interface is configured to engage a torque handle (Figs. 3, 4, 4a, 5, interface 18 is capable of engaging with a torque handle (e.g., a drive tool); 5:16-24; see 3:15-34; Examiner notes that “a torque handle” is not positively recited),
and the torque head is configured to transfer torque from [the] torque handle to the target body when the grip surface engages with the target body and the interface engages with the torque handle and receives torque from the torque handle (Figs. 3, 4, 4a, 5; 6:63-7:12, the torque head is capable of transferring torque as recited when engaged with an oil filter and a torque handle (e.g., a drive tool) and torque is applied to the torque handle).
Regarding claim 15, Lemmo discloses the torque head of claim 14 as applied above and further discloses wherein the grip surface is concave (Figs. 3, 4, 4a, 5, portion of grip surface including elements 13, 14, 11, and 7 has a concave shape).
Regarding claim 16, Lemmo discloses the torque head of claim 14 as applied above and further discloses wherein the grip surface is textured (Figs. 3, 4, 4a, 5, the grip surface having a texture at reference 11 (see Fig. 4; 3:15-34, “angled facets 11”)).
Regarding claim 20, Lemmo discloses the torque head of claim 14 as applied above and further discloses wherein bracket receives [the] torque handle via a square drive receiver (Figs. 3, 4, 4a, 5, interface 18 with a square drive receiver is capable of receiving a torque handle (e.g., a drive tool); 5:16-24; see Fig. 2; 3:15-34 (“square cutout 18”); Examiner interprets this limitation to mean that the body is capable of receiving a torque handle, and not as a method step where a torque handle is attached to the body; Examiner notes that the “torque handle” is not positively recited).
Claim Rejections – 35 U.S.C. § 103
This application currently names joint inventors. In considering patentability of the claims, the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential 35 U.S.C. § 102(a)(2) prior art against the later invention.
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.
Lemmo in view of Sun
Claim 17 is rejected under 35 U.S.C. § 103 as being unpatentable over US 6227078 B1 (“Lemmo”) in view of CN 106926189 A (“Sun”) (citations are to the translation filed herewith).
Lemmo pertains to an oil filter wrench (Abstr.; Figs. 1-5). Sun pertains to an oil filter wrench (Abstr.; Figs. 1-3; ¶ 0008). These references are in the same field of endeavor.
Regarding claim 17, Lemmo discloses the torque head of claim 14 as applied above. Lemmo does not explicitly disclose [] wherein the torque head comprises a magnet, the magnet configured to magnetically engage with [the] target body during engagement between the torque head and the target body. However, the Lemmo/Sun combination makes obvious this claim.
Sun discloses [] wherein the torque head comprises a magnet, the magnet configured to magnetically engage with [the] target body during engagement between the torque head and the target body (Figs. 1-2; ¶¶ 0028, 0030, magnet 15 attached to body 1 is capable of magnetically engaging with a metal oil filter; Examiner notes that the “target body” is not positively recited).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Sun with Lemmo by adding a magnet to the body (e.g., at the bottom of the body at the concave grip surface). This would have been obvious to a person of ordinary skill in the art because the magnet would provide for a stronger attachment between the body and an oil filter (e.g., a metal one), and would also reduce the probability of oil spillage from the oil filter because “The annular magnet 15 attracts the oil filter element to prevent it from detaching from the cylinder 1.” (Sun ¶ 0030).
Lemmo in view of Sun and Owens
Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over US 6227078 B1 (“Lemmo”) in view of CN 106926189 A (“Sun”) (citations are to the translation filed herewith) and US 20190389041 A1 (“Owens”).
Lemmo pertains to an oil filter wrench (Abstr.; Figs. 1-5). Sun pertains to an oil filter wrench (Abstr.; Figs. 1-3; ¶ 0008). Owens pertains to an oil filter removal tool (Abstr.; Figs. 1A-9). These references are in the same field of endeavor.
Regarding claim 18, the Lemmo/Sun combination makes obvious the torque head of claim 17 as applied above. Lemmo and Sun do not explicitly disclose a plurality of magnets, each of the magnets configured [to] magnetically engage with [the] target body during engagement between the torque head and the target body. However, the Lemmo/Sun/Owens combination makes obvious this claim.
Owens discloses a plurality of magnets, each of the magnets configured [to] magnetically engage with [the] target body during engagement between the torque head and the target body (Fig. 7B; ¶ 0037, “Magnets can be disposed on side walls 77a or floor 77b of the cup to retain the cup on the filter.”; Examiner notes that the “target body” is not positively recited).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to further modify the Lemmo/Sun combination with the teachings of Owens to use a plurality of magnets instead of a single magnet, positioned such that each of them magnetically engages an inserted metal oil filter. This would have been obvious to a person of ordinary skill in the art because the additional magnets would provide for an even stronger attachment force between the body and the oil filter and would “assist with holding the cup on the filter when applying force” (Owens ¶ 0037). Further, Applicant states no novel or unexpected result due to having multiple magnets (Spec. ¶¶ 0038-0039). In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced”); MPEP § 2144.04(VI)(B).
Status of Claims
Claims 1-20 are pending. Claims 1-13 and 19 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention.
Claims 14-18 and 20 are rejected.
Conclusion
The prior art made of record on Form PTO-892 and not relied upon is considered pertinent to Applicant’s disclosure because the references pertain to oil filter wrenches having features similar to the disclosed inventions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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 S CARTER can be reached at (571)272-4475. 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.
/KENT N SHUM/ Date: June 29, 2026Examiner, Art Unit 3723
Prosecution Insights