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
Applicant's election with traverse of Group I, and Species A in the reply filed on July 7, 2026 is acknowledged. The traversal is on the ground(s) that that the groups are not distinct and that the species would require the same search and as such the restriction is not proper. This is not found persuasive because as indicated previously the special technical features of group I, which are defined in PCT Rule 13.2 as those technical features which determine a contribution of the claimed invention over the prior art, relate to the functional end of a generic hand tool, similar to the special technical features of group II, which are defined in PCT Rule 13.2 as those technical features which determine a contribution of the claimed invention over the prior art, relate to the functional end. The problem addressed by said features is obviously that of the special technic, shape, elements of group II is not required for group I. Therefore, from the point of view of this Office, the groups of inventions I and II relate to different solutions, which are in addition applicable independently of one another. The substantive matter of said two groups of claimed inventions differ from one another to such a degree, that no technical relationship or technical interaction whatsoever can be determined by means of one or more corresponding special technical features, that would form a single general inventive concept. Therefore, the application does not satisfy the requirement of unity of invention (PCT Rule 13.1 and 13.2). With regards to the species, the argument that the different species require the same general search is not persuasive, since even if the field of search coincides for all groups, the feature being searched are not the same and would impose undue burden.
The requirement is still deemed proper and is therefore made FINAL.
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 1, 5, 7-12, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sergyeynko et al. (8,479,612 “Sergyeynko”).
[AltContent: arrow][AltContent: arrow][AltContent: textbox (O2)][AltContent: textbox (O1)]Sergyeynko meets all of the limitations of claim 1, i.e., a hand-held tool 30 with a working region 26 and a grip region lower part of shaft 24, wherein the grip region is arranged in a grip sleeve 28, wherein the grip sleeve 28 has an end top assigned to the working region 26, as well as an opposite free end bottom, and is configured to be provided with a functional part 40, wherein the grip sleeve 28 furthermore has a passage opening 82 that extends in a longitudinal direction Fig. 3 of the grip sleeve 28 and forms a first opening O1, annotated Fig. 7, which also has a free opening cross section in an unused state, and a second opening O2 annotated Fig. 7, and wherein the functional part 40 is configured to be inserted into said passage opening in order to be mounted on the grip sleeve Fig. 3, wherein the first and the second opening O1, O2 have a substantially elongate 82, and wherein the first opening O1 assigned to the free end lies opposite of the second opening O2, Fig. 7 in an inserting direction of the functional part 40, except for the openings to be substantially rectangular. It would have been obvious to one having ordinary skill in the art, before the effective date of the invention, to form rectangular openings in adapting for a functional part requiring substantially rectangular shaped-opening, since it has been held that changing shape, dependent on work-piece parameters, involves only routine skill in the art. In re Stevens, 101 US PQ 284(CCPA1954).
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Regarding claim 5, PA (prior art, Sergyeynko modified for shape of the workpiece) meets the limitations, i.e., the hand-held tool according to claim 1, wherein the passage opening 82 is formed in the grip sleeve 28 itself in the form of a part of the grip sleeve 28 that is not separable without being destroyed Fig. 3.
Regarding claim 7, PA meets the limitations, i.e., the hand-held tool according to claim 1, wherein the grip sleeve 28 has in a side view a taper that forms the free end, and wherein the first opening O1 is formed in the taper Fig. 3.
Regarding claim 8, PA meets the limitations, i.e., the hand-held tool according to claim 1, further comprising the functional part 40, and wherein the functional part 40 has an engagement section 42 configured for being received in the passage opening 82 and a functional section 40, Fig. 5.
Regarding claim 9, PA meets the limitations, i.e., the hand-held tool according to claim 8, wherein the engagement section 42 is in the form of an insertion section (28), Fig. 9.
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Regarding claim 10, PA meets the limitations, i.e., the hand-held tool according to claim 9, wherein the insertion section 42 of the functional part 40 is configured to be inserted into the passage opening 82 starting from the first opening O1 or the second opening O2, Fig. 5.
Regarding claim 11, PA meets the limitations, i.e., the hand-held tool according to claim 8, wherein the functional section 40 at least partially covers an end face @O1 or O2 of the free end of the grip sleeve 28 in the inserted state of the functional part 40, Fig. 5.
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Regarding claim 12, PA meets the limitations, i.e., the hand-held tool according to claim 8, wherein the functional section has an identification surface nail setter 56 or is designed in the form of a loop 92, Fig. 8.
Regarding claim 17, PA meets the limitations, i.e., the hand-held tool according to claim 9, wherein the insertion section 42 of the functional part 40 is configured to be inserted into the passage opening 82 starting from the second opening O2.
Regarding claim 18, PA meets the limitations, i.e., the hand-held tool according to claim 17, wherein the functional part 40 being inserted starting from the second opening O2 protrudes outward beyond the first opening O1 at least partially via tie 92.
Claims 2, 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over PA as applied to claim 1 above, and further in view of Foley (6,701,560).
PA (prior art, Sergyeynko modified for shape of the workpiece) meets all of the limitations of claim 2, i.e., the hand-held tool according to claim 1, except for providing two tool parts as recited.
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Foley teaches a nail pulling tool in a form of a pair of pliers comprising two tool parts 10, 20 are provided and arranged so as to intersect one another in a joint region 50, wherein each tool part forms the working region 30, 40, 100, 110 on one side of the joint region 50 and the grip region 10, 20 on the other side.
It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to further modify the modified invention of PA with two tool parts as taught by Foley to versify the tool by adapting it for pulling function. Further, it would have been obvious to one having ordinary skill in the art, before the effective date of the invention, to provide the on-board tool storage for the other tool part for storing an accessory, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikes, 86 USPQ 70.
Regarding claim 3, PA (prior art, Sergyeynko modified for shape and by Foley) meets the limitations, i.e., the hand-held tool according to claim 2, wherein the hand-held tool is pliers or scissors.
Regarding claim 6, PA meets the limitations, i.e., the hand-held tool according to claim 2, wherein the passage opening 82 is formed on a side of the first and/or second grip sleeve 10 that respectively faces the other grip sleeve 20.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over PA as applied to claim 1 above, and further in view of Beach (180,521).
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PA (prior art, Sergyeynko modified for shape of the workpiece) meets the limitations, i.e., the hand-held tool according to claim 1, except for the hand-held tool to be a knife or a screwdriver.
Beach teaches a screwdriver A on a hammer head Fig. 1, partially shown here. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to further modify the modified invention of PA with two screwdriver as taught by Beach in versifying the tool by adapting it for pulling function.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over PA as applied to claim 1 above, and further in view of Arnold (5,819,606).
PA (prior art, Sergyeynko modified for shape of the workpiece) meets all of the limitations of claim 13, i.e., the hand-held tool according to claim 12, except for the functional section 40 to have an identification surface and wherein the identification surface extends in a cross section perpendicular or at an obtuse angle to the insertion section 42 of the functional part 40
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Arnold teaches a plastic identification insert, e.g., in form of a band 42, Fig. 12 formed around a socket for identifying the size, or other identification means e.g., logo 38. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to further modify the modified invention of PA with identification marks as taught by Arnold to provide, e.g., the size of the nail setter.
Regarding claim 14, PA (prior art, Sergyeynko modified for shape and by Arnold) meets the limitations, i.e., the hand-held tool according to claim 12, wherein the functional section 40 has identification surface 38, and wherein the identification surface is exposed outward in the instead state of the functional part.
Allowable Subject Matter
Claims 15 and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Prior art made of record and not relied upon at this time, are considered pertinent to applicant’s disclosure. Bond, Shepard and Buell 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.
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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/
September 22, 2026 Primary Examiner, Art Unit 3723
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