DETAILED ACTION
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 and 22 – 29 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (Korean Patent Number KR 2009 0119331 A, cited in IDS) in view of Sharpe (U.S. Patent Number 5,680,800).
As to claim 1, Kim teaches a tool bit extractor for removing a drill bit stuck in a workpiece (machine translation, page 1, paragraph 1), the tool bit extractor comprising: a shaft including a first end, a second end opposite the first end, and a longitudinal axis extending between the first and second ends (figure 4, element 110 being the ‘shaft,’ left end of element 110 being the ‘first end,’ and right end of element 110 being the ‘second end’; machine translation, page 2, last paragraph); and a cap assembly disposed at the first end of the shaft (figure 4, element 112 being the ‘cap assembly’; machine translation, pages 2 – 3); a bit retention assembly disposed at the second end of the shaft (figure 4, elements 111, 113, and 150 being the ‘bit retention assembly’; machine translation, pages 2 – 3), the bit retention assembly including an opening configured to receive the drill bit (figure 4, right end of element 150 having the ‘opening’; machine translation, page 3); and a handle (figure 4, element 120 being the ‘handle’; machine translation, page 2, last paragraph – page 3), the handle being movable relative to the shaft from the second end to the first end to impact the cap assembly (figure 4, elements 120, 110, and 112; machine translation, pages 3 – 4).
However, while Kim teaches the handle, Kim does not teach the structure of the handle. Sharpe teaches a tool (abstract) comprising: a shaft including a first end, a second end opposite the first end, and a longitudinal axis extending between the first and second ends (figure 1, element 50 being the ‘shaft,’ element 52 being the ‘first end,’ and element 54 being the ‘second end’; column 2, lines 12 – 20); and a handle (figures 1 – 3, element 12 being the ‘handle’; column 2, lines 21 – 29), the handle being movable relative to the shaft from the second end to the first end (figure 1, elements 12 and 50; column 2, lines 25 – 29 and column 3, lines 36 – 38). Sharpe further teaches that the handle is plastic and defines a bore (figures 2 and 3, element 19 being the ‘bore’; column 2, lines 30 – 38), the handle including a mass disposed within the bore (figures 2 and 3, element 22 being the ‘mass’; column 2, lines 35 – 38), the mass being made from metal (figures 2 and 3, element 22; column 2, lines 56 – 59), the handle being moveable with the mass relative to the shaft from the second end to the first end (figures 1 – 3, elements 12, 22, and 50; column 2, lines 25 – 29 and column 3, lines 36 – 38). It would have been obvious to one skilled in the art to form the handle of Kim from plastic and to further the handle with a bore housing a metallic mass, as taught by Sharpe, because Sharpe teaches that the plastic handle provides the benefit of increasing grip by a user, as desired by Kim (machine translation, page 3), while the metallic mass acts increase the weight of the handle, as desired by Kim (machine translation, page 3), and acts to protect the handle when the handle is moved along the shaft (column 2, lines 56 – 67), as taught by Kim (machine translation, pages 3 – 4).
As to claim 22, Kim teaches that the cap assembly includes an abutting surface that limits axial movement of the handle along the shaft (figure 4, right surface of element 112 being the ‘abutting surface’; machine translation, page 3), and wherein the bit retention assembly also limits axial movement of the handle along the shaft (figure 4, element 111; machine translation, page 3).
As to claim 23, Sharpe teaches that the mass is concentric with the longitudinal axis (figures 2 and 3, elements 22 and 12).
As to claim 24, Sharpe teaches that the mass is fixed to the handle (figures 2 and 3, elements 22 and 12; column 2, lines 56 – 67).
As to claim 25, the discussion of claim 1 is incorporated herein.
As to claim 26, the discussion of claim 1 is incorporated herein.
As to claim 27, it is the position of the Examiner that either the first or second end of the shaft defines a shank operable to couple with a power tool (figure 4, left and right ends of element 110).
As to claim 28, Kim teaches that the bit retention assembly is removably coupled to the second end of the shaft (figure 4, element 150 and 110; machine translation, page 3). Examiner notes that in this interpretation of Kim, only element 150 is being interpreted as the ‘bit retention assembly,’ rather than the combination of elements 111, 113, and 115.
As to claim 29, Sharpe further teaches a fastener, wherein the mass is fixed to the handle with a fastener (figures 1 – 3, element 32 being the ‘fastener’; column 2, lines 21 – 29). Examiner notes that this can be found because the fastener of Sharpe at least minimally acts to ensure that the mass is secured and fixed to the handle (figures 1 – 3, elements 32, 12, and 22). It would have been obvious to one skilled in the art to provide handle of Kim with a fastener, as taught by Sharpe, because Sharpe teaches that the fastener acts to secure the handle to a given position along the shaft (figures 1 – 3, elements 32, 12, and 50; column 2, lines 21 – 29). It is the position of the Examiner that one skilled in the art would find this to be beneficial to the bit retention assembly of Kim because it would allow the handle to be secured in place when the bit retention assembly is not being actively used or is being stored, so as to prevent breakage of the bit retention assembly or accidental injury by a user transporting the bit retention assembly.
Response to Arguments
Applicant’s arguments, see pages 5 - 8, filed July 23, 2026, with respect to the rejection(s) of claim(s) 1 and 22 - 29 under Kim in view of Lawless have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kim in view of Sharpe.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure
Zhao (U.S. Patent Application Publication Number 2014/0331827) teaches a tool comprising a shaft including a first end and a second end opposite the first end; and a handle including a mass, the mass being made from metal.
Chiang (U.S. Patent Number 7,905,163) teaches a tool comprising a shaft including a first end, a second end opposite the first end, and a longitudinal axis extending between the first and second ends; a cap assembly disposed at the first end of the shaft; and a handle defining a bore, the handle including a mass disposed within the bore, the mass being made from metal.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
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