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 .
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.
Claims 6, 17, 18 and 21 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 6 recites the alternative language and/or, which renders the claim indefinite, since it is unclear if either material is being claimed, only the first material or only the second.
Claim 17 recites the limitation "wherein the material forming the cover also fills the cavity…" in lines 1-2, rendering the claim indefinite. Dependent claim 17 eliminates a feature (a cavity) recited in the parent claim.
Claim 18 recites the limitation "fourth material" in line 4, rendering the claim indefinite. Claim 18 depends on claim 4, which only recites for two materials and third material is recited in claim 14.
Claim 21 recites the limitation "wherein the material forming the filling member also fills the cavity…" in lines 1-2, rendering the claim indefinite. Dependent claim 17 eliminates a feature (a cavity) recited in the parent claim.
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 28 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Macioce et al. (2003/0029278 “Macioce”).
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Macioce discloses all of the limitations of claim 28, i.e., a striking tool comprising:
a striking head 12, the striking head being constructed to be usable to perform a striking task hammer; and
a handle 14, the handle being connected to the striking head Fig. 1, and extending in a direction substantially transverse to a striking direction of the striking head Fig. 1, a gripping part 16 being formed on the handle at a position close to a distal end Fig. 1, the distal end being remote from the striking head, wherein the handle 14 is constructed such that during striking, one of vibration nodes formed on the handle is located at the gripping part e.g., 20, 46…102.
Claims 1, 4-8, 12, 13, 23, 25 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tucker (5,911,785).
Tucker discloses all of the limitations of claim 1, i.e., a striking tool comprising:
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a striking head 10, the striking head being constructed to be usable to perform a striking task hammer; and
a handle 12, the handle being connected to the striking head, and extending in a direction substantially transverse to a striking direction of the striking head Fig. 1, wherein the handle comprises a rigid segment having a first rigidity 14 and a flexible segment 16 having a second rigidity sequentially in a distal direction away from the striking head Fig. 4, the second rigidity being less than the first rigidity resilient grip 16, and the handle being provided with a gripping part 16 at a position corresponding to an end of the rigid segment that is connected to the flexible segment Fig. 1.
Regarding claim 4, PA meets the limitations, i.e., the striking tool according to Claim 1, wherein the handle comprises:
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a connecting rod 18 under sleeve 14, a proximal end of the connecting rod being connected to the striking head Fig. 2; and a sheath 16, Figs. 9, 10, the sheath being fitted round the connecting rod and covering a distal end of the connecting rod Fig. 1, wherein a cavity 38 is formed between the distal end of the connecting rod and a distal end of the sheath 16, wherein a part of the handle corresponding to the connecting rod 18 forms the rigid segment @14, and a part of the handle corresponding to the cavity 38 forms the flexible segment Figs. 7-10.
Regarding claim 5, PA meets the limitations, i.e., the striking tool according to Claim 4, wherein the connecting rod 18 is made of a first material, and the sheath is made of a second material resiliently compressible, the second material having a lower hardness than the first material.
Regarding claim 6, PA meets the limitations, as best understood, i.e., the striking tool according to Claim 5, wherein the first material is metal 02:06, and/or the second material is hard plastic.
Regarding claim 7, PA meets the limitations, i.e., the striking tool according to Claim 4, wherein a counterweight 30, 42 is provided at the distal end of the sheath. Note that limitations from specification are not read into the claims.
Regarding claim 8, PA meets the limitations, i.e., the striking tool according to Claim 7, wherein an end opening is formed at the distal end of the sheath, and the counterweight is constructed as a plug 42 which blocks the end opening Fig. 7.
Regarding claim 12, PA meets the limitations, i.e., the striking tool according to Claim 4, wherein an elastic member molded material is provided in the cavity 03:28.
Regarding claim 13, PA meets the limitations, i.e., the striking tool according to Claim 12, wherein the elastic member mold material is constructed as a spring or an elastomeric material resin filling the cavity.
Regarding claim 23, PA meets the limitations, i.e., the striking tool according to Claim 4, wherein the connecting rod 18 is provided with a weight reduction hole 24. Please note that limitations from specification, e.g., fill hole, weight hole, are not read into the claims.
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[AltContent: arrow][AltContent: arrow][AltContent: textbox (PROXIMALEND)][AltContent: textbox (DISTAL END)]Regarding claim 25, PA meets the limitations, i.e., the striking tool according to Claim 4, wherein the sheath 16 comprises a proximal segment and a distal segment which are arranged discretely as defined, e.g., per Fig. 4 of instant application and spaced apart in the direction of extension of the handle annotated Fig. 1.
Regarding claim 26, PA meets the limitations, i.e., the striking tool according to Claim 1, wherein a gripping prevention part projection @ the distal end adjacent to the gripping partis provided on the handle at a position corresponding to that end of the flexible segment which is connected to the rigid segment, the gripping prevention part projection having a larger dimension than the gripping part in a direction perpendicular to the direction of extension of the handle.
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.
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 CFR 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.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Tucker in view of Schroder (7,178,428).
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Tucker meets all of the limitations of claim 2, i.e., [ 2 ], except for the flexible segment 16 to have a shorter length than the rigid segment 14.
Schroder teaches a vibration dampening impact instrument having a handle with a resilient section @42 that is shorter than a rigid section. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of handle of Tucker with shorter resilient section as taught by Schroder to save cost.
Regarding claim 3, PA (prior art, Tucker modified by Schroder) meets the limitations, i.e., the ratio of the length of the rigid segment to the length of the flexible segment to be in the range of 4-10. It would have been obvious to one having ordinary skill in the art, before the effective date of the invention, to modify the invention with regards to dimension or desired size, e.g., form the flexible segment to have a length about five times shorter or less than that of the rigid portion, to adjust the flexibility and/or the stiffness of the handle and/or reach of the handle, in adapting the tool for a particular application, since such modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tucker.
Tucker discloses the claimed invention, except for explicitly disclosing the use of the specific materials for the counterweight. It would have been obvious to one having ordinary skill in the art, before the effective date of the invention to make the cover 42 out of metal, similar to core 18, for strength and longevity, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 10, 11 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Tucker.
Tucker meets all of the limitations of claim 10, except for the particular size of the counterweight and meets claim 11, except for the thickness for the counterweight or cover 42; Tucker meets all of the limitations of claim 27, except for the size of the projection/gripping prevention part.
It would have been obvious to one having ordinary skill in the art, before the effective date of the invention, to modify the invention with regards to dimension or desired size, e.g., 8 mm thick counterweight/cover or about one tenth of the length of the grip, to adjust the flexibility and/or the stiffness of the handle; or to make the gripping prevention part/projection to be about 40 mm long for a better grip, in adapting the tool for a particular application, since such modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
Claims 14-22 and 24, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Tucker in view of Stock et al. (2016/0008966 “Stock”).
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Tucker meets all of the limitations of claim 14 as applied to claim 4 above, except for a cover which encases and covers the sheath, the cover being made of a third material, the third material having a lower hardness than a material forming the sheath.
Stock teaches a vibration dampening striking tool disclosing several embodiments including an embodiment wherein the tool comprises a core 211, a sheath or flexible member 212 and a cover 213 that is made from suitable handle material, e.g., rubber. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the handle of Tucker with the sheath and cover as taught by Stock to augment the dampening feature and further to make it softer than the middle/sheath material for comfort.
Regarding claim 15, PA (prior art, Tucker modified by Stock) meets the limitations, i.e., the striking tool according to Claim 14, except for explicitly disclosing the use of rubber for the third or grip 213 material. Stock teaches the use of thermoplastic rubber [0065] for the inner and outer sleeves 44 and 45. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to use a softer thermoplastic rubber for the outer layer or the grip for comfort as suggested by Stock and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 16, PA meets the limitations, i.e., the striking tool according to Claim 14, wherein the sheath 112 modified by Stock is covered with the cover grip 113 by an overmoulding process [0105] Stock.
Regarding claim 17, PA meets the limitations, i.e., the striking tool according to Claim 14, wherein the material forming the cover 113 also fills the cavity formed at the distal end of the sheath, to form an elastic member arranged in the cavity [0105] Stock.
Regarding claim 18, PA meets the limitations, as best understood, i.e., the striking tool according to Claim 4, wherein the handle further comprises a filling member grip 113, the filling member being arranged between the connecting rod and the sheath in a direction perpendicular to the direction of extension of the handle Figs. 9 and 10, and the filling member being made of a fourth material, the fourth material, except for the fourth material having a lower hardness than the sheath. Stock teaches the use of thermoplastic rubber [0065] for the inner and outer sleeves 44 and 45. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to use a softer thermoplastic rubber for the outer layer or the grip for comfort as suggested by Stock and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 19, PA meets the limitations, i.e., the striking tool according to Claim 18, wherein the fourth material is thermoplastic rubber material as modified by Stock and applied to claim 18.
Regarding claim 20, PA meets the limitations, i.e., the striking tool according to Claim 18, wherein the filling member has a sheath-like structure, at least a part of the connecting rod being accommodated in the sheath-like structure arrangement of Tucker as modified by Fig. 35 of Stock.
Regarding claim 21, PA meets the limitations, i.e., the striking tool according to Claim 18, wherein the material forming the filling member also fills the cavity formed at the distal end of the sheath, to form an elastic member arranged in the cavity Tucker 03:28.
Regarding claim 22, PA meets the limitations, i.e., the striking tool according to Claim 21, wherein the filling member and the elastic member are integrally formed Figs. 8-10. Tucker.
Regarding claim 24, PA meets the limitations, i.e., the striking tool according to Claim 4, wherein the handle 12, except for comprising a fastener, the fastener passing through the sheath and being connected and fixed to the connecting rod. Stock teaches the coupling of the sleeves may be via any attachment process including, but not limited to, via a bonding agent, one or more fasteners, an interference fit, etc. [0105] Stock. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to also use fastener in coupling the sheath to the core as taught by Stock to augment and enhance the retention between the sheath and the core.
Conclusion
Prior art made of record and not relied upon at this time, are considered pertinent to applicant’s disclosure. Lombardi, Mueller, Schroder and Riehle are cited to show related inventions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HADI SHAKERI whose telephone number is (571)272-4495. The fax phone number for forwarding unofficial documents for discussion purposes only is (571) 273-4495. The examiner can normally be reached on M-F.
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, Brian Keller can be reached on 571 272 8548. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hadi Shakeri/
July 1, 2026 Primary Examiner, Art Unit 3723
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