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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 C.F.R. § 1.55.
Specification
The abstract of the disclosure is objected to. Examiner suggests amending the first two lines of the abstract as follows: “An insulated torque wrench No new matter should be entered.
Claim Objections
Claims 1, 3, 5, and 10 are objected to because of the following informalities:
“; when” (claim 1, lines 47-48) should be changed to --; and when--;
“two the buckling members” (claim 3, line 2) should be changed to --two buckling members--;
“includes second blocking portion” (claim 5, line 3) should be changed to --includes a second blocking portion--;
“in axial direction” (claim 10, line 30) should be changed to --in the axial direction--;
Appropriate correction is required.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“torque adjustment member” (claim 1, line 5);
“switching member” (claim 1, line 10);
“driving member” (claim 1, lines 10-11);
“first limitation member” (claim 1, line 11);
“second limitation member” (claim 1, line 11);
“buckling member” (claim 2, line 4).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If Applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, Applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
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 1-10 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 1 recites the limitation “the cover being movable relative to the sleeve to be in one of a plurality of shielding positions so that the cover shields at least one of the plurality of torque scale displaying portions and so that the rest of the plurality of torque scale displaying portions are revealed” (lines 40-44). 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 mean that the cover shields one portion of the torque scale (e.g., the value 30 ft-lb), and reveals the “rest” (e.g., all remaining values such as 25 ft-lb, 35 ft-lb, etc.); or does this mean that one of the torque scale unit sets are shielded (e.g., all torque values in metric units) while the other is revealed (e.g., all torque values in imperial units); or something else? For examination purposes, the second interpretation will be used. Examiner suggest amending this limitation (and the “plurality of torque scale displaying portions” term) to clearly define the shielding and revealing as pertaining to the entire unit set of torque values and not individual torque values. Further, as described in the specification, only one value of one unit set of torque values is revealed at a time (e.g., the value 30 ft-lb is revealed, no other values are shown); it is not correct that the “rest” of the torque scale displaying portions are revealed by the cover. Claims 2-10 are rejected on the basis they incorporate this limitation of claim 1.
Claim 10 recites the limitation “the sleeve and the tubular member form the see-through portion” (lines 4-5). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, the “see-through portion” is already defined as part of the sleeve (claim 1); it is unclear how the tubular member, which is separate from the sleeve, could also “form the see-through portion”. Examiner suggests reciting an opening in the tubular member and amending the claim to require both the “see-through portion” and the opening in the tubular member to correspond to the torque scale displaying portions. This limitation will be interpreted as best understood.
Claims 9-10 are indefinite because there is insufficient antecedent basis for the limitations listed below, which render the claims unclear and ambiguous. For examination purposes, these limitations are interpreted as best understood.
“the housing (claim 9, line 3);
“the at least one guiding block” (claim 10, lines 28-29); Examiner suggests changing this to --at least one guiding block from the plurality of guiding blocks--;
“the at least one block” (claim 10, line 30); Examiner suggests changing this to --the at least one guiding block--;
“the housing (claim 10, line 51).
Allowable Subject Matter
Claim 1 would be allowable if rewritten to overcome the claim objection and rejection under 35 U.S.C. § 112(b) as set forth in this Office action.
As allowable subject matter has been indicated, Applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. 37 C.F.R. § 1.111(b) and MPEP § 707.07(a).
The following is Examiner’s statement of reasons for allowance:
The closest prior art of record is US 20110113936 A1 (“Chiang”) and US 20130213195 A1 (“Czympiel”).
Regarding claim 1, Chiang discloses an insulated torque wrench (Abstr.; Fig. 1, wrench as shown) including:
a main body defining an axial direction and including a work portion (Fig. 1, main body including elements 10 and 21, axial direction is along the centerline of main body 10, work portion 21),
the work portion generating a warning sound when receiving a torque larger than a preset torque value (Figs. 11, 12; ¶ 0052; click sound generated when the received torque is larger than the preset torque (via overcoming compression spring 33));
a torque adjustment member being rotatably disposed in the main body, the preset torque value being adjustable by rotating the torque adjustment member (Fig. 2; ¶¶ 0046-0049, torque adjustment member 40 in main body 10 is capable of the recited functions; the limitation “torque adjustment member” is interpreted under § 112(f), which includes screw 20, and equivalents thereof (Spec. Fig. 2));
a sleeve non-rotatably disposed around the main body and including a first engaging portion and a see-through portion (Figs. 3-7, sleeve 61 around main body 10 with first engaging portion 69 and see through portion 63, 64, and the corresponding opening in sleeve 61);
an adjustment assembly including a switching member, a driving member, a first limitation member... (Figs. 1-3, 13-16, adjustment assembly including switching member 50 driving member (portion of element 50 adjacent element 42 (Fig. 15)), first limitation member 73; the limitations “switching member”, “driving member”, and “first limitation member” are interpreted under § 112(f), which respectively include the following and equivalents thereof: “switching member” 41 (Spec. Fig. 2), “driving member” 42 (Spec. Fig. 2), “first limitation member” 43 (Spec. Fig. 2));
the switching member being rotatably disposed on the main body, the switching member being movable between a first position and a second position in the axial direction relative to the main body, the switching member including a second engaging portion, the switching member being movable in the axial direction relative to...the first limitation member (Figs. 1-3, 13-16, switching member 50 is rotatable and movable in the axial direction relative to the main body 10, and includes second engaging portion 53, switching member 50 is movable axially relative to the first limitation member 73),
the switching member and the driving member being rotatable with each other, the driving member and the torque adjustment member being rotatable with each other (Figs. 1-3, 13-16, switching member 50, driving member (portion of element 50 adjacent element 42 (Fig. 15)), and torque adjustment member 40 are rotatable with each other),
the driving member and the first limitation member being connected to each other in the axial direction, in the axial direction the switching member being blocked by the first limitation member (Figs. 1-3, 13-16, first limitation member 73 and driving member (portion of element 50 adjacent element 42 (Fig. 15)) are connected in the axial direction (Fig. 16), where the first limitation member 73 blocks the movement of the switching member 50 in the axial direction),
an insulation layer including an insulated grip and an insulated sleeve, the insulated sleeve being disposed around the main body, the work head being protrusive out beyond the insulated sleeve, the insulated grip being disposed around the switching member, the insulated grip and the switching member being rotatable with each other (Figs. 1-3, insulation layer including insulated grip 60 around switching member 50 and insulated sleeve 13 around main body 10, work head 21 protrudes beyond insulated sleeve 13, switching member 50 rotatable relative to insulated grip 60; ¶ 0043);
and a torque display assembly including a torque scale displaying barrel and a cover, the torque scale displaying barrel being disposed in the sleeve and rotatable with the torque adjustment member, the torque scale displaying barrel including a plurality of torque scale displaying portions... (Figs. 1-3, torque display assembly including torque scale displaying barrel 45 and cover (top portion of element 61), barrel 45 rotates with torque adjustment member 40 and has a plurality of torque scale displaying portions 48),
the plurality of torque scale displaying portions being arranged in the axial direction, the plurality of torque scale displaying portions corresponding to the see-through portion (Figs. 1-3, 13-14, plurality of torque scale displaying portions 48 arranged in the axial direction and corresponding to the see-through portion 63, 64, and the corresponding opening in sleeve 61),
wherein when the switching member is in the first position, the second engaging portion is engaged with the first engaging portion so that the sleeve and the switching member are rotatable with each other; when the switching member is in the second position, the second engaging portion is disengaged from the first engaging portion (Figs. 13-16, switching member 50 with second engaging portion 53 interacts with first engaging portion 69 of sleeve 61 as recited, first position shown in Fig. 16, second position is shown in Fig. 15).
Chiang does not disclose the limitations:
an adjustment assembly including a switching member, a driving member, a first limitation member and a second limitation member (the limitation “second limitation member” is interpreted under § 112(f), which includes “second limitation member” 44 (Spec. Fig. 2) and equivalents thereof);
the switching member being movable in the axial direction relative to the driving member and the first limitation member,
the second limitation member being connected between the first limitation member and the driving member;
the plurality of torque scale displaying portions being configured to display torque values in different units respectively,
the cover being movably disposed on the sleeve,
the cover being movable relative to the sleeve to be in one of a plurality of shielding positions so that the cover shields at least one of the plurality of torque scale displaying portions and so that the rest of the plurality of torque scale displaying portions are revealed.
Czympiel discloses:
the plurality of torque scale displaying portions being configured to display torque values in different units respectively (Figs. 3-4, metric and imperial torque value sets 14/15),
the cover being movably disposed on the sleeve (Figs. 3-4, cover 13, 18 moves laterally relative to sleeve 3),
the cover being movable relative to the sleeve to be in one of a plurality of shielding positions so that the cover shields at least one of the plurality of torque scale displaying portions and so that the rest of the plurality of torque scale displaying portions are revealed (Figs. 3-4, cover 13, 18 shields one of the metric or imperial torque value sets 14/15 while revealing the other; see interpretation under § 112(b) rejection).
The prior art of record does not disclose all of the limitations of claim 1 in a manner that would result in the recited combination without using impermissible hindsight based on Applicant’s disclosure. In view of the prior art of record and its deficiencies, Applicant’s invention is novel, non-obvious, and allowable as claimed. Claims 2-10 are allowable for depending from claim 1 (subject to overcoming the applicable objections and § 112(b) rejections).
Status of Claims
Claims 1-10 are pending. Claims 1-10 are rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure:
US 20180050442 A1 (“Ballsieper”) discloses a torque wrench with a torque indicator that can be covered by a setting ring (Abstr.; Fig. 4);
US 20190084135 A1 (“Guo”) discloses a torque wrench with a torque indicator that can be covered by a setting ring (Abstr.; Figs. 1-2);
US 2448095 A (“Hallett”) discloses a torque wrench with a torque indicator and slidable setting mechanism (Figs. 1-2);
US 2887921 A (“Livermont”) discloses a torque wrench with a torque indicator that can be covered by a setting ring (Figs. 1-2);
US 3165014 A (“Grabovac”) discloses a torque wrench with a torque indicator that can be covered by a setting ring (Fig. 1);
TW M543149 U (“Chiang2”) discloses a torque wrench (Figs. 1-5);
TW I645944 B (“Chiang3”) discloses a torque wrench (Figs. 1-10).
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.
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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.
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/KENT N SHUM/ Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
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