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 .
Status of Claims
This office action is in reply to the amendment filed on May 20, 2026. Claim 1 has been amended. No additional claims have been added. No further claims have been cancelled. Claim interpretation previously made under 35 USC 112(f) is maintained (note, no claim limitations were previously interpreted under 35 USC 112(f)). The previous 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 rejections are maintained and discussed in greater detail below. Claims 1-10 are currently pending and have been fully examined.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims.
Therefore, the “wherein the protrusion is formed separately from the recess and configured to collapse when the topside of the protective cap comes into contact with a plate-like body” (as in claim 1) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 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” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the 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.
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.
Claims 1-3 and 5-7 are Finally rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gertner (9597785).
In reference to claim 1, Gertner discloses a protective cap (14) to be mounted to a power type rotary tool for screw driving (Column 3, Lines 27-31), the protective cap comprising:
a topside (i.e. topside of 14 including portions 24 and the horizontal upper surface of 14 in Figure 2, also see figure below); and
an underside (i.e. underside of 14 in Figure 1, also see figure below);
wherein a through hole (see figure below) penetrating penetrates between the topside and the underside (Figure 1); and
wherein a surface (i.e. formed from the horizontal upper surface of 14 or formed from 24 and the horizontal upper surface of 14, see Figures 2 and 3) of the topside includes a recess (i.e. at 22 [see Figure 2] or under a second interpretation formed as the horizontal extending opening, see figure below) and a protrusion (20, see Figures 2 and/or 3); and wherein the protrusion is formed separately from the recess (Note, figure 2 clearly shows that protrusion 20 is formed from a different material [i.e. rubber, see Column 3, Line 49] than the recess because of the different crosshatch markings and therefore must have been formed separately from the recess otherwise they would have been formed from the same material and especially is formed separately at least before being “seated within a groove 22” [see Column 3, Line 49] thereby meeting the limitation of the claim. Also, note that the method of forming the device is not germane to the issue of patentability of the device itself and under another interpretation this method limitation has not been given patentable weight) and configured/capable to collapse (because it is formed from a rubber material, which is the same material as used by the applicant to collapse, see paragraphs 116-118) when the topside of the protective cap comes into contact with a plate-like body (see figures below showing various plate-like bodies applying a downward pressure that will make the protrusion collapse from the pressure being applied thereto).
[AltContent: textbox (Second interpretation of the recess )]
[AltContent: arrow][AltContent: connector][AltContent: textbox (Through hole)][AltContent: connector][AltContent: arrow][AltContent: arrow][AltContent: textbox (Topside)][AltContent: textbox (Underside)][AltContent: arrow]
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[AltContent: textbox (Portion of the protrusion that will collapse )]
[AltContent: textbox (Another Plate-like body)][AltContent: arrow]
[AltContent: arrow][AltContent: textbox (Another portion of the protrusion that will collapse )][AltContent: arrow][AltContent: rect][AltContent: arrow][AltContent: rect][AltContent: textbox (Plate-like body)]
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In reference to claim 2, Gertner discloses that a shape of the recess (i.e. under the second interpretation of the recess) formed on the surface of the topside, as viewed from above the topside, includes one or more shapes selected from a radial shape, a concentric circle (Note, since element 14 is described as being a “cylindrical shell or collar 14” [Column 3, Lines 29-30], under the second interpretation of the recess, the recess will also have a cylindrical or concentric circle shape), and a stripe shape.
In reference to claim 3, Gertner discloses that a cross-sectional shape of the recess (i.e. under the first interpretation of the recess formed from 22) includes one or more shapes selected from a square shape (see Figure 2), a U-shape (also see Figure 2), and a V-shape.
In reference to claim 5, Gertner discloses that the topside includes an inclined surface (24) in a cross-section through a central axis (see figure below) of the protective cap.
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In reference to claim 6, Gertner discloses further comprising: a groove (see figure below) formed along a circumferential direction on an outer surface of the protective cap.
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In reference to claim 7, Gertner discloses further comprising: a chamfered portion (24) at which a portion between the topside and an outer surface of the protective cap is chamfered (see figure below).
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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 4, is Finally rejected under 35 U.S.C. 103 as being unpatentable over Gertner (9597785) in view of another embodiment of Gertner (9597785, i.e. the embodiment in Figure 5).
In reference to claim 4, Gertner discloses the claimed invention as previously mentioned above (Figures 1-3), but lacks
a depth of the recess increases from a side of the through hole toward an outer surface side.
However, Gertner (i.e. the embodiment in Figure 5) teaches that it is old and well known in the art at the time the invention was made to provide another embodiment of the collar (see figure below Figure 5) that includes a recess (see figure below) having a depth (see figure below) which increases from a side (i.e. inner side) of a through hole (i.e. a vertical hole or opening extending within collar 14) of toward an outer surface side (see figure below).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the recess in the embodiment of Figures 1-3, of Gertner, with the known technique of providing the recess in the embodiment of Figure 5, as taught by Gertner, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that is simple and more cost efficient to make and use (Column 2, Lines 6-8).
Claims 8 and 10 are Finally rejected under 35 U.S.C. 103 as being unpatentable over Gertner (9597785) in view of Lai (2018/0050439).
In reference to claim 8, Gertner discloses the claimed invention as previously mentioned above, but lacks,
a fixing member including a plurality of protrusions on an inner peripheral surface of the through hole.
However, Lai (Figure 3) teaches that it is old and well known in the art at the time the invention was made to provide a fixing member (2, similar to the collar 14 of Gertner) including a plurality of protrusions (31) on an inner peripheral surface of a through hole (i.e. hole within 2, Figure 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the fixing member/collar, of Gertner, with the known technique of providing a fixing member/collar including the plurality of protrusions on an inner peripheral surface, as taught by Lai, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device which allows the fixing member/collar to be pushed and locked onto a rod of the screwdriver more smoothly (paragraph 21).
In reference to claim 10, Gertner discloses the claimed invention as previously mentioned above and further discloses a portion (i.e. portion 20) having a rubber hardness, but lacks,
a cushion portion including a material having a rubber hardness that is lower than a rubber hardness of a portion other than the cushion portion, on the surface of the topside.
However, Lai (i.e. the embodiment in Figure 5) teaches that it is old and well known in the art at the time the invention was made to form a fixing member (2, similar to the collar 14 of Gertner) from rubber (paragraph 20).
Thus, when combined with Gertner, the collar (14) would be formed from rubber and would include an upper surface thereof which meets the limitation of the cushion (because it is formed from rubber).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the collar, of Gertner, with the known technique of forming a collar from rubber, as taught by Lai, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device having a flexible collar (see paragraph 20 and claim 3).
The combination above, does not explicitly disclose that the cushion portion includes;
a rubber hardness that is lower than a rubber hardness of a portion (i.e. portion 20) other than the cushion portion, on the surface of the topside.
However, there is no evidence of record that establishes that changing the hardness value of cushion portion would result in a difference in function of the Gertner device. Further, a person having ordinary skill in the art, being faced with modifying the hardness values of cushion portion of Gertner, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed hardness value (i.e. providing a rubber hardness of the cushion portion that is lower than a rubber hardness of a portion [i.e. portion 20] other than the cushion portion). Lastly, applicant has not disclosed that the claimed hardness solves any stated problem, indicating that the hardness “may” be as claimed, and offering other acceptable types of hardness values (i.e. having the same hardness value in paragraph 130, also see paragraphs 120 and 128-129) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the hardness of the cushion portion (i.e. the upper surface of modified collar 14), of Gertner, such that it is lower than a rubber hardness of portion (20) other than the cushion portion, as an obvious matter of design choice within the skill of the art.
Claim 9, is Finally rejected under 35 U.S.C. 103 as being unpatentable over Gertner (9597785).
In reference to claim 9, Gertner discloses the claimed invention as previously mentioned above and further discloses a portion (i.e. portion 20) formed from rubber (Column 3, Line 49), but lacks explicitly disclosing that the rubber has;
a hardness of 30 or more and 90 or less.
There is no evidence of record that establishes that changing the hardness would result in a difference in function of the Gertner device. Further, a person having ordinary skill in the art, being faced with modifying the hardness, of Gertner, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed hardness range. Lastly, applicant has not disclosed that the claimed range solves any stated problem, indicating that the hardness “may” be within the claimed range, and offering other acceptable ranges (e.g., 40 and 80, see paragraph 117) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the hardness of rubber portion, of Gertner, to have a hardness of 30 or more and 90 or less as an obvious matter of design choice within the skill of the art.
Response to Arguments
Applicant's arguments filed May 20, 2026 have been fully considered but they are not persuasive.
Applicant contends that, “The Office Action on page 5 appears to equate a cylindrical collar 14 of Gertner to a protective cap recited in claim 1. In Gertner, a topside of collar 14 is configured for engagement with the workpiece surface during operation. However, as shown in FIGS. 2-3 of Gertner, an O-ring 20 is seated within a groove 22 extending along the length thereof. As such, in Gertner, the O-ring 20 is formed together with the groove 22 as being disposed inside the groove 22. Further, certain portions of the topside of collar 14 are exposed and do not collapse when the topside of the collar 14 comes into contact with the workpiece surface. See, Gertner, col. 3, lines 25-40. As such, Gertner fails to teach the above-noted feature of claim 1, namely "wherein the protrusion is formed separately from the recess and configured to collapse when the topside of the protective cap comes into contact with a plate-like body."
However, the examiner respectfully disagrees with this statement. As discussed in the rejection above, the protrusion is “formed separately” from the recess because protrusion (20) is formed from a different material (i.e. rubber, see Column 3, Line 49) than the recess (see different crosshatch markings in Figure 2) and therefore must have been “formed separately” from the recess otherwise they would have been formed from the same material and especially before being “seated within a groove 22” (see Column 3, Line 49). Furthermore, the method of forming the device is not germane to the issue of patentability of the device itself and under the “another interpretation” (as previously discussed above) this method limitation has not been given patentable weight. Next, the examiner has provided other annotated figures above that clearly show when an object (i.e. the plate-like object) is placed onto the topside of collar (14) and applies a downward pressure, the O-ring/protrusion (20) is configured/capable to collapse (because it is formed from a rubber material, which is the same material as used by the applicant for collapsing, see paragraphs 116-118) when the topside of the protective cap comes into contact with the plate-like body. Again, because the material used for the protrusion is the same material as used by the applicant (see paragraphs 116-118), the protrusion will similarly collapse when the plate-like object applies the downward pressure to the protrusion thereby meeting the limitations of the claim. Since, all of the structural limitations have been met, the examiner believes that the rejection is proper.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723
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