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/Restrictions
Claims 2 – 4 and 6 – 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention Group (Inventions Groups I, II, and IV – XIV), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 10, 2026.
Applicant's election with traverse of Invention Group III in the reply filed on March 10, 2026 is acknowledged. The traversal is on the ground(s) that that the shared technical features between Invention Group III and each of Invention Groups I, II, and IV – XIV are not taught by the prior art. Therefore, Applicant argues, unity of invention exists between each of the Invention Groups. This is not found persuasive because, as explained in the rejection of claim 1 below, the prior art of Kim (Korean Patent Number KR 2009-0119331 A, cited in IDS) anticipates the shared technical features of claim 1.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 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.
Claim 26 is 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 26 recites the limitation “... the mass is made from a dense material.” The phrase “a dense material” is indefinite for several reasons. First, Examiner notes that all “mass” has density. Therefore, Applicant’s intent regarding the limitation is unclear. Furthermore, if the limitation were to be interpreted such that the ‘mass’ is made from a material having a high relative density, then the phrase “dense material” is a term of degree. Because the phrase “dense material” is not defined in the Specification, the metes and bounds of the limitation are unclear. For the purposes of this Office Action, Examiner will interpret the limitation as “... the mass is made from the second material.”
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.
Claim(s) 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (Korean Patent Number KR 2009-0119331 A, cited in IDS).
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 including a mass (figure 4, element 120 being the ‘handle’ and ‘mass’; machine translation page 2, last paragraph – page 3), the handle being movable relative to the shaft between the first and second ends (figure 4, elements 120 and 110; machine translation, pages 3 – 4).
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) 5 and 21 - 28 are rejected under 35 U.S.C. 103 as being unpatentable over Kim as applied to claim 1 above, and further in view of Lawless (U.S. Patent Application Publication Number 2006/0075606).
As to claim 5, Kim teaches the mass and the handle being a single element, such that the mass is not disposed within a bore of the handle. However, Kim further teaches that the outer surface of the handle is knurled, so as to increase grip by a user (figure 4, element 120; machine translation, page 3). Lawless teaches a hand tool (abstract) comprising: a shaft including a first end and a second end opposite the first end (figures 1 and 3, element 12 being the ‘shaft,’ element 15 being the ‘first end,’ and element 16 being the ‘second end’; paragraph 18); and a handle including a mass disposed on the shaft (figures 1 – 3, element 18 being the ‘handle’ and element 17 being the ‘mass’; paragraph 18). Lawless further teaches that the mass is disposed within a bore of the handle (figures 1 – 3, elements 17 and 18; paragraph 18), wherein the handle is grip cover (figures 1 – 3, element 18; paragraph 18). It would have been obvious to one skilled in the art to substitute the knurled surface of Kim for the grip cover of Lawless, because Lawless teaches that the grip cover acts to increase grip of the handle by a user (paragraph 18), as desired by Kim (machine translation, page 3).
Examiner notes that when the handle and mass of Kim is provided with the grip cover of Lawless, then then grip cover may reasonably be considered the ‘handle’ and the ‘hammer’ element 120 may reasonably be considered the ‘mass,’ such that the mass is disposed within a bore of the handle.
As to claim 21, Kim teaches that the mass is moveable by a user from the second end to the first end to impact the cap assembly (figure 4, elements 120 and 110; 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, Lawless teaches that the mass is concentric with the longitudinal axis (figure 3, elements 17 and 18).
As to claim 24, Lawless teaches that the mass is fixed to the handle (figure 3, elements 17 and 18; paragraph 18).
As to claim 25, Lawless teaches that the handle is made form a first material and the mass is made from a second material that is different than the first material (figure 3, elements 18 and 17; paragraph 18).
As to claim 26, Lawless teaches that the handle is made form a plastic material (figure 3, element 18; paragraph 18) and the mass is made from the second material (figure 3, element 17; paragraph 18).
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
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