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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,623,328 (hereinafter the ‘328 patent) is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Objections to the Amendments - Formalities
The claim amendments filed January 20, 2026, are objected to as failing to comply with 37 CFR 1.173(b)(2) and (d). Throughout prosecution of this reissue application, amended claims must show all changes made relative to the patent claims (not relative to the immediately preceding amendments), with omitted text enclosed in single brackets and added text underlined. See MPEP § 1453. The claim amendments are improper because they are not marked to show all changes made relative to the patent claims, and because omitted text is shown in strike-through or double brackets rather than single brackets.
The specification amendments filed January 20, 2026, are objected to as failing to comply with 37 CFR 1.173(b)(1) and (d). Changes to the specification must be made by submission of the entire text of an added or rewritten paragraph, including markings pursuant to 37 CFR 1.173(d), with omitted text enclosed in single brackets and added text underlined, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The specification amendments are improper because omitted text is shown in strike-through or double brackets rather than in single brackets.
Consent of Assignee
The Consent of Assignee (PTO/AIA /53) filed January 20, 2026, is defective because the person who signed the submission is not recognized as an officer of the assignee, and the person who signed it has not been established as being authorized to act on behalf of the assignee. See MPEP §§ 325 and 1410.02, subsections I. and V. The document is signed by Ryan Adams having the title of “Plant Head, Oetiker Tool Corporation.” As discussed in MPEP § 324, subsection V(A) (cited in MPEP § 1410.02, subsection I), “[a] person having a title (administrator, general counsel) that does not clearly set forth that person as an officer of the assignee is not presumed to have authority to sign the submission on behalf of the assignee. In this situation, the Office recommends that when such person is authorized to act on behalf of the assignee, the submission clearly indicate the authority.” As noted in the prior Office action, if Ryan Adams is authorized to act on behalf of the assignee, this should be clearly stated on the record.
Claim Rejections - 35 USC § 251 - Original Patent
Claims 1-13 and 17-20 are rejected under 35 U.S.C. 251 for not claiming subject matter directed to the invention disclosed in the original patent. MPEP § 1412.01 explains that “[t]he reissue claims must be for the same invention as that disclosed as being the invention of the original patent.” MPEP § 1412.01 provides the following guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent”:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
Further, the Federal Circuit addressed the “original patent” requirement of 35 U.S.C. 251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014).
With respect to Antares, MPEP § 1412.01, subsection I, explains:
To satisfy the original patent requirement where a new invention is sought by reissue, “… the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares [] at 1363, 112 USPQ2d at 1871. Accordingly, claims drawn to an invention comprising a newly claimed combination of features that were only disclosed in the original patent as suggested alternatives (and not as a single combination) or only as part of the original invention and not as an invention separate from the original invention would not satisfy the original patent requirement.
In the present reissue application, amended reissue claims 1-13 and 17-20 are directed to a combination of features that were disclosed in the original patent only as part of the original invention and not as an invention separate from the original invention. The original patent disclosure consistently described the invention as including first and second jaws arranged to rotate around respective first and second pivots and each being operatively coupled to a cam assembly. See Abstract; col. 1:48-61, 2:44-52, 3:28-40, 4:62-63, etc., and Figs. 1-17. As discussed in the Non-final Office action mailed September 17, 2025, the claims have been broadened to recite only one of the jaws being rotatable about a pivot and operably coupled to a cam member. The original patent did not describe such an embodiment. This rejection is not overcome by the addition of the limitation “wherein at least one of the first jaw and the second jaw is rotated …” in independent claims 1 and 7-10 and “rotating at least one of the first jaw and the second jaw from an open position to a closed position” in independent claims 17 and 19 in the amendment filed January 20, 2026, because the claims still recite only the first jaw being operably coupled to a first cam surface (with no mention of a second cam for the second jaw) and do not require that both of the first and second jaw are rotatable (instead requiring only “at least one” of the jaws to be rotatable). Therefore, amended claims 1-13 and 17-20 do not satisfy the original patent requirement.
Claim Rejections - 35 USC § 251 - Recapture
Claims 7 and 10-13 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claims that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP § 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Recapture Analysis: Step 1
Amended reissue claims 1-13 and 17-20 are broader in scope than the patent claims.
Independent reissue claims 1, 7-10, 17, and 19 do not require the second jaw “arranged to rotate about a second pivot” or “rotating … the second jaw” and omit the operable relationships between the first cam or cam assembly and the second jaw which were present in some form in all of the patent claims. Claims 10 and 19 are also broadened by removing the dependencies from claims 9 and 17, respectively, such that claims 10 and 19 now no longer include the “continuous and stepless” feature recited in claims 9 and 17.
Therefore, step 1 of the three-step test is met for reissue claims 1, 7-10, 17, and 19 and their dependent claims.
Recapture Analysis: Step 2, first sub-step
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP § 1412.02 defines surrendered subject matter as a claim limitation originally relied upon by the applicant in the original prosecution to make the claims allowable over the art.
During prosecution of the ‘328 patent, the examiner rejected claims 1, 2, 7, 9, 17, and 20 under 35 U.S.C. 102 as anticipated by Barnes (U.S. Patent No. 2,861,488, hereinafter Barnes); claims 4 and 5 under 35 U.S.C. 103 as unpatentable over Barnes in view of Chauffeteau et al. (U.S. Patent Pub. 2003/0167881, hereinafter Chauffeteau) or Steiner et al. (U.S. Patent No. 8,312,755, hereinafter Steiner); and claim 6 under 35 U.S.C. 103 as unpatentable over Barnes in view of Lazar et al. (U.S. Patent No. 2,898,790, hereinafter Lazar). The examiner objected to dependent claims 3, 8, 10-16 and 19 as being dependent upon a rejected base claim, but indicated that these claims would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. See Non-final Office action mailed August 1, 2022. The following is the subject matter of the dependent claims indicated by the previous examiner to have been allowable1:
3. The tool of claim 2, wherein:
the first cam member further includes a first reset surface disposed between a first end and a second end of the first cam surface, the second follower surface moving over the first reset surface to move the second jaw from the closed to the open position in response to further rotation of the first cam member when the jaws are in the closed position; and
the second cam member further includes a second reset surface disposed between a first end and a second end of the second cam surface, the first follower surface moving over the second reset surface to move the first jaw from the closed to the open position in response to further rotation of the second cam member when the jaws are in the closed position.
8. The tool of claim 7, wherein the first jaw includes an indicator surface on an end of the of the first jaw opposite the first jaw portion.
10. The tool of claim 9, wherein the cam assembly includes:
a first shaft operably coupled to the clutch;
a first cam member operably coupled between the shaft and the second follower; and
a second cam member operably coupled between the shaft and the first follower.
19. The method of claim 17, further comprising displaying an indicating surface when the first jaw and the second jaw are in the closed position, the indicating surface being disposed on an end of the one of the first jaw and the second jaw.
In response, Applicant amended independent claims 1, 9, and 17 to recite the clutch being configured to allow “continuous and stepless” free-rotation in the first direction about the axis and argued that the “continuous and stepless” feature was not taught by Barnes. Applicant rewrote claims 3 and 8 in independent form, without the “continuous and stepless” limitation. Applicant amended claim 10 to include all the limitations of independent claim 9 but did not amend the preamble, maintaining the dependency of claim 10 from claim 9. Similarly, Applicant amended claim 19 to include all the limitations of independent claim 17 but did not amend the preamble, maintaining the dependency of claim 19 from claim 17. See Response filed November 11, 2022.
The examiner issued a Notice of Allowance on December 9, 2022. Independent claims 1, 3, 8, 9, and 17 were allowed as patent claims 1, 7, 8, 9, and 17.
Considering the prosecution history discussed above, there appear to be three distinct features that were separately relied upon to distinguish the claimed invention from the prior art:
(A) the “continuous and stepless” feature of the clutch (as recited in independent patent claims 1, 9, and 17);
(B) the first and second reset surfaces of the first and second cam members in operable relationship with the follower surfaces of the first and second jaw to move the first and second jaws to open and closed positions (as recited in independent patent claim 7); or
(C) the indicator surface on the end of the first jaw (as recited in independent patent claim 8).
At least one of these features (A)-(C) was introduced into each of the independent claims in order to distinguish the claimed invention over the prior art, such that these features constitute surrender-generating limitations (SGL).
Because of the ambiguity of the November 11, 2022 amendment of claim 10, it is unclear whether the allowable subject matter indicated by the examiner with respect to claim 10 constitutes a SGL. Because patent claim 10 retained its dependency from claim 9, which recited the “continuous and stepless” limitation argued by Applicant to be the distinguishing feature over the prior art, claim 10 is considered for purposes of this recapture analysis to have been distinguished from the prior art by virtue of the “continuous and stepless” limitation of claim 9.
Recapture Analysis: Step 2, second sub-step
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitations are directed to limitations relied upon by Applicant in the original application to make the claims allowable over the art.
Reissue claim 7 is broadened with respect to patent claim 7 to entirely omit a second cam member and a second follower surface of the second jaw, and to omit “the second follower surface moving over the first reset surface to move the second jaw from the closed to the open position in response to further rotation of the first cam member when the jaws are in the closed position; and the second cam member further includes a second reset surface disposed between a first end and a second end of the second cam surface, the first follower surface moving over the second reset surface.” Reissue claim 7 also does not include the “continuous and stepless” feature of the clutch or the indicator surface of the first jaw. Reissue claim 7 includes some of the details of the surrendered subject matter and omits some of the details of the surrendered subject matter. Therefore, step 2 of the three-part test is met for reissue claim 7.
Reissue claim 10 is broadened with respect to patent claim 10 to entirely omit the “continuous and stepless” feature of the clutch (due to the amendment of claim 10 to remove the dependency from claim 9). Reissue claim 10 also does not include the first and second reset surfaces of first and second cam members, or the indicator surface of the first jaw. Therefore, step 2 of the three-part test is met for reissue claim 10 and its dependent claims.
For clarity and completeness, the examiner notes that step 2 of the three-part test is not met for reissue claims 1, 8-9, and 19 and their dependent claims, because claims 1 and 9 retain the “continuous and stepless” feature, and claims 8 and 19 retain the “indicator surface” or “indicating surface” feature.
Recapture Analysis: Step 3
The third step in the recapture analysis considers the significance of claim limitations that were added and deleted during prosecution of the patent to be reissued in order to determine whether the reissue claims are materially narrowed in other respects so as to avoid the recapture rule. As set forth in MPEP § 1412.02, subsection II(C), if a surrender-generating limitation (SGL) has not been entirely eliminated from a claim in the reissue application but rather has been made less restrictive in the reissue claim, “[i]t must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture.”
In this case, reissue claim 7 modifies the SGL by retaining the first reset surface of the first cam member configured to move the first jaw from a closed to an open position in response to further rotation of the first cam member when the jaws are in the closed position, and by omitting a second cam member including a second reset surface and a second follower surface of the second jaw in the operable relationship previously described in patent claim 7. Although reissue claim 7 is narrower in some aspects than the original claims (i.e., the claims as presented in the original application prior to surrender) due to the retained limitations noted above, the retained limitations are well known in the prior art, as evidenced by Parramore (U.S. Patent No. 4,221,048, hereinafter Parramore) and Rozmus (U.S. Patent No. 2,861,491, hereinafter Rozmus), discussed below in the rejections of claim 7 under 35 U.S.C. 102. Thus, the retained limitations do not avoid impermissible recapture. See MPEP § 1412.02, subsection II.C.
Reissue claim 10 entirely eliminates the “continuous and stepless” SGL due to the amendment of claim 10 to remove its dependency from claim 9. While claim 10 does include portions of the subject matter indicated as allowable during the prosecution of the ‘328 patent, claim 10 also removes the second cam member operably coupled between the shaft and the first follower and the operable relationship of the first cam member to the second follower of the second jaw. These limitations are not sufficient to avoid impermissible recapture because they are well known in the prior art, as evidenced by Rozmus, discussed below in the rejection of claim 10 under 35 U.S.C. 102. See MPEP § 1412.02, subsection II.C.
Therefore, reissue claims 7 and 10-13 improperly recapture surrendered subject matter.
For further discussion of this issue, see Response to Arguments below.
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.
Claims 11-13 and 19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 11 recites the limitation “the first shaft” in line 2. There is insufficient antecedent basis for this limitation in the claims, because claim 10 (from which claim 11 depends) has been amended to delete “a first shaft” and insert “a shaft.” For the purpose of examination, “the first shaft” in claim 11 will be interpreted to mean --the shaft--. Claims 12-13 are rejected in view of their dependency from claim 11.
Regarding claim 19, the limitation “when the first jaw are in the closed position” in lines 11-12 renders the claim indefinite because lines 9-10 recite “rotating at least one of the first jaw and a second jaw from an open position to a closed position” and thus do not necessarily require that the first jaw be rotated to the closed position. It is unclear whether the step of “displaying an indicating surface” as recited in lines 11-12 is a required step in the claimed method or is a conditional step performed only when it is the first jaw that rotates to the closed position. (In other words, it is unclear whether the claim would encompass a method in which it is the second jaw that rotates to the closed position and the step of displaying the indicating surface does not occur.)
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 7, 8, and 19 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Parramore (U.S. Patent No. 4,221,048, hereinafter Parramore).
Regarding claim 7, Parramore discloses a tool (multi-stroke tool, Fig. 4; col. 3:50-4:2) comprising: a first jaw (anvil 29) including a first follower surface (see annotated Fig. 4 below), the first jaw (29) arranged to rotate about a first pivot (12); a second jaw (fixed anvil 26) adjacent the first jaw (29); a first cam member (cam 13) rotatable about a shaft (axial shaft 15, see Fig. 2; col. 2:38-47, 3:50-54), the first cam member (13) being operably coupled to the first jaw (26; via support cheeks 2a, 2b); at least one movable handle (operating handle 18, see Fig. 2; col. 2:53-68, 3:50-54) operably coupled to the first cam member (13); and a clutch (ratchet wheels 14 engaged by pawl 20; col. 2:57-3:7, 3:50-54) disposed on the shaft (cam 13 and ratchet wheels 14 “all being rotatably mounted … upon a common axial shaft 15,” col. 2:42-45) and operably coupled to the first cam member (13, via locating pins 24; see Fig. 2; col. 3:18-32, 50-54), the clutch (14) configured to allow free-rotation in a first direction about the shaft (15) and prevent rotation in an opposite second direction (col. 2:63-3:7; “the ratchet drive operates in one direction only,” col. 3:65-4:2); wherein the first cam member (13) further includes a first reset surface disposed between a first end and a second end of a first cam surface (see annotated Fig. 4 below) configured to move the first jaw (29) from a closed to an open position in response to further rotation of the first cam member (13) when the jaws (26, 29) are in the closed position (“cam 13 being so disposed that once the anvils have reached full closure, the anvil 29 is retracted by the next following operating stroke,” col. 3:61-65; see also col. 3:8-17); and wherein the first jaw (29) is rotated during movement of the at least one handle (18; col. 2:63-68, col. 3:50-54).
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Regarding claim 8, Parramore discloses a tool (multi-stroke tool, Fig. 4; col. 3:50-4:2) comprising: a first jaw (anvil 29) arranged to rotate about a first pivot (12); a second jaw (fixed anvil 26) adjacent the first jaw (29); a first cam member (cam 13) rotatable about a shaft (axial shaft 15, see Fig. 2; col. 2:38-47, 3:50-54), the first cam member (13) being operably coupled to the first jaw (26; via support cheeks 2a, 2b); at least one movable handle (operating handle 18, see Fig. 2; col. 2:53-68, 3:50-54) operably coupled to the first cam member (13); and a clutch (ratchet wheels 14 engaged by pawl 20; col. 2:57-3:7, 3:50-54) disposed on the shaft (cam 13 and ratchet wheels 14 “all being rotatably mounted … upon a common axial shaft 15,” col. 2:42-45) and operably coupled to the first cam member (13, via locating pins 24; see Fig. 2; col. 3:18-32, 50-54), the clutch (14) configured to allow free-rotation in a first direction about the shaft (15) and prevent rotation in an opposite second direction (col. 2:63-3:7; “the ratchet drive operates in one direction only,” col. 3:65-4:2); wherein the first jaw (29) has a first jaw portion (male crimping die 31) and the second jaw (26) has a second jaw portion (female crimping die 28), the first and second jaw portions (28, 31) cooperating to crimp an object in response to a movement of the at least one movable handle (col. 3:50-4:2); wherein the first jaw (29) is rotated in response to movement of the at least one movable handle (18; col. 2:63-68, col. 3:50-54); and wherein the first jaw (29) includes an indicator surface (see annotated Fig. 4 above) on an end of the first jaw (29) opposite the first jaw portion (31). The examiner notes that the surface of the first jaw (29) opposite the first jaw portion (31), indicated above, will become visible to a user as the first jaw is rotated to the closed position, thus indicating to the user that the first jaw is closed. Claim 8 does not require, nor does Applicant’s specification describe, any distinctive markings or indicia on the indicator surface. Thus, the surface of the jaw (29) that becomes visible to the user as the first jaw is closed is considered to read on an indicator surface as claimed.
Regarding claim 19, Parramore discloses a method of crimping an object (using multi-stroke tool, Fig. 4; col. 3:50-4:2) comprising: moving a handle (operating handle 18, see Fig. 2; col. 2:53-68, 3:50-54); rotating a cam assembly (cam 13) in a first direction about a shaft (axial shaft 15, see Fig. 2; col. 2:38-47, 3:50-54) in response to movement of the handle (18; col. 2:63-68; 3:50-54), the cam assembly (13) having a first cam surface engaged with a first follower surface of a first jaw (anvil 29); preventing rotation in a second direction about the shaft (15) with a clutch (ratchet wheels 14 engaged by pawl 20; col. 2:57-3:7, 3:50-4:2), the clutch (14) being disposed on the shaft (cam 13 and ratchet wheels 14 “all being rotatably mounted … upon a common axial shaft 15,” col. 2:42-45) and operably coupled to the cam assembly (col. 2:42-44; col. 3:50-54), the second direction being opposite from the first direction (“the ratchet drive operates in one direction only,” col. 3:65-66); rotating the first jaw (29) from an open position to a closed position to crimp the object in response to rotation of the cam assembly (col. 3:61-4:2); and displaying an indicating surface (see annotated Fig. 4 above) when the first jaw (29) is in the closed position, the indicating surface being disposed on an end of the first jaw (29). As discussed above, the end surface of the first jaw (29), indicated above, will become visible to a user (i.e., displayed) as the first jaw is rotated to the closed position, thus indicating to the user that the first jaw is closed. Claim 19 does not require, nor does Applicant’s specification describe, any distinctive markings or indicia on the indicating surface. Thus, the surface of the jaw (29) that becomes visible to the user as the first jaw is closed is considered to read on an indicating surface that is displayed as claimed.
Claims 7-8, 10, and 19 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Rozmus (U.S. Patent No. 2,861,491, hereinafter Rozmus).
Regarding claim 7, Rozmus discloses a tool (pivoted jaw tool, Figs. 1-2) comprising a first jaw (15; col. 2:46-51) including a first follower surface (roller cam rider 35; col. 2:70-3:3), the first jaw (15) arranged to rotate about a first pivot (jaw pivot 17); a second jaw (16) adjacent the first jaw (15); a first cam member (cam 30; col. 2:67-69) rotatable about a shaft (drive pivot pin 14), the first cam member (30) being operably coupled to the first jaw (15; see Fig. 1); at least one movable handle (second handle 12 “fixed to the frame structure in a relatively pivotable fashion,” col. 2:40-42) operatively coupled to the first cam member (30; col. 2:49-64); and a clutch (ratchet wheels 23 engaged by drive pawls 24 and detents 26) disposed on the shaft (“ratchet wheels 23 … are pivotally carried by the pin 14,” col. 2:54-56) and operably coupled to the first cam member (30), the clutch (23) configured to allow free-rotation in a first direction about the shaft (14) and prevent rotation in an opposite second direction (col. 2:57-62), wherein the first cam member (30) includes a first reset surface (pocket recess 42; col. 3:26-35) disposed between a first end and a second end of a first cam surface (Fig. 1) configured to move the first jaw (15) from a closed to an open position in response to further rotation of the first cam member (30) when the jaws (15, 16) are in the closed position (col. 3:26-35); and wherein the first jaw (15) and the second jaw (16) are rotated during movement of the at least one handle (12; col. 2:52-54).
Regarding claim 8, Rozmus discloses a tool (pivoted jaw tool, Figs. 1-2) comprising a first jaw (16; col. 2:46-51) arranged to rotate about a first pivot (jaw pivot 18); a second jaw (15) adjacent the first jaw (16); a first cam member (cam 30; col. 2:67-69) rotatable about an shaft (drive pivot pin 14), the first cam member (30) being operably coupled to the first jaw (16; see Fig. 1); at least one movable handle (second handle 12 “fixed to the frame structure in a relatively pivotable fashion,” col. 2:40-42) operatively coupled to the first cam member (30; col. 2:49-64); and a clutch (ratchet wheels 23 engaged by drive pawls 24 and detents 26) disposed on the shaft (“ratchet wheels 23 … are pivotally carried by the pin 14,” col. 2:54-56) and operably coupled to the first cam member (30), the clutch (23) configured to allow free-rotation in a first direction about the shaft (14) and prevent rotation in an opposite second direction (col. 2:57-62), wherein the first jaw (16) has a first jaw portion (at crimping region 20) and the second jaw (15) has a second jaw portion (at crimping region 20) cooperating to crimp an object in response to movement of the at least one movable handle (col. 2:46-49; 3:25-45); wherein the first jaw (15) and the second jaw (16) are rotated in response to movement of the at least one handle (12; col. 2:52-54); and wherein the first jaw (16) includes an indicator surface (see annotated Fig. 1 below) on an end of the first jaw (16) opposite the first jaw portion. The surface of the first jaw (16) opposite the first jaw portion, indicated above, is visible to a user when the first jaw is rotated to the closed position, as shown in Fig. 1, thus indicating to the user that the first jaw is closed. As noted above, claim 8 does not require (and Applicant’s specification does not describe) any distinctive markings or indicia on the indicator surface. Thus, the surface of the jaw (16) that becomes visible to the user when the first jaw is closed is considered to read on an indicator surface as claimed.
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Regarding claim 10, Rozmus discloses a tool (pivoted jaw tool, Figs. 1-2) comprising a first jaw (15) arranged to rotate about a first pivot (jaw pivot 17) between an open position and a closed position (col. 2:46-51), the first jaw (15) having a first jaw portion (at crimping region 20) on a first end and a first follower (roller cam rider 35; col. 2:70-3:3) on a second end; a second jaw (16) having a second jaw portion (at crimping region 20) on a first end and a second follower (roller cam rider 36) on a second end; a cam assembly (cam 30 on drive pivot pin 14; col. 2:67-69) arranged to rotate about a shaft (drive pivot pin 14), the cam assembly (14, 30) being operably coupled to the first follower (35) and the second follower (36) to move the first jaw (15) from the open position to the closed position in response to rotation of the cam assembly (col. 3:37-44); and a clutch (ratchet wheels 23 engaged by drive pawls 24 and detents 26) disposed on the shaft (“ratchet wheels 23 … are pivotally carried by the pin 14,” col. 2:54-56) and operably coupled to the cam assembly (14, 30) to allow rotation in a single direction (col. 2:57-62), wherein the cam assembly (14, 30) a first cam member (cam 30) operably coupled between the shaft (14) and the first follower (35; see Fig. 1); and wherein the first jaw (15) and the second jaw (16) are rotated in response to rotation of the cam assembly (col. 2:52-54).
Regarding claim 19, Rozmus discloses a method of crimping an object (using pivoted jaw tool, Figs. 1-2) comprising: moving a handle (second handle 12 “fixed to the frame structure in a relatively pivotable fashion,” col. 2:40-42); rotating a cam assembly (cam 30; col. 2:67-69) in a first direction about a shaft (drive pivot pin 14) in response to movement of the handle (12), the cam assembly (30) having a first cam surface (40-43; col. 3:26-27) engaged with a first follower surface (roller cam rider 36, col. 2:70-3:3) of a first jaw (16; col. 2:46-51); preventing rotation in a second direction about the shaft (14) with a clutch (ratchet wheels 23 engaged by drive pawls 24 and detents 26) disposed on the shaft (“ratchet wheels 23 … are pivotally carried by the pin 14,” col. 2:54-56) and operably coupled to the cam assembly (30), and the second direction being opposite the first direction (col. 2:57-62); rotating the first jaw (16) and a second jaw (15) from an open position to a closed position to crimp an object in response to rotation of the cam assembly (col. 3:26-44); and displaying an indicating surface (see annotated Fig. 1 above) when the first jaw (16) and the second jaw (15) are in the closed position (Fig. 1), the indicating surface being disposed on an end of the first jaw (16). As discussed above, the surface of the first jaw (16) opposite the first jaw portion, indicated above, is visible to a user (i.e., displayed) when the first jaw is rotated to the closed position, as shown in Fig. 1, thus indicating to the user that the first jaw is closed. As noted above, claim 19 does not require (and Applicant’s specification does not describe) any distinctive markings or indicia on the indicator surface. Thus, the surface of the jaw (16) that becomes visible to the user when the first jaw is closed is considered to read on an indicating surface displayed to a user as claimed.
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.
Claims 1-2, 6, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Parramore in view of Wikipedia, “Ratchet (device)” (non-patent literature; hereinafter Wikipedia).
Regarding claim 1, Parramore discloses a tool (multi-stroke tool, Fig. 4; col. 3:50-4:2) comprising: a first jaw (anvil 29) arranged to rotate about a first pivot (12); a second jaw (fixed anvil 26) adjacent the first jaw (29); a first cam member (cam 13) rotatable about a shaft (axial shaft 15, see Fig. 2; col. 2:38-47, 3:50-54), the first cam member (13) being operably coupled to the first jaw (26; via support cheeks 2a, 2b); at least one movable handle (operating handle 18, see Fig. 2; col. 2:53-68, 3:50-54) operably coupled to the first cam member (13); and a clutch (ratchet wheels 14 engaged pawl 20; col. 2:57-3:7, 3:50-54) disposed on the shaft (15) and operably coupled to the first cam member (13, via locating pins 24; see Fig. 2; col. 3:18-32, 50-54), the clutch (14) configured to allow free-rotation in a first direction about the shaft (15) and prevent rotation in an opposite second direction (col. 2:63-3:7; “the ratchet drive operates in one direction only,” col. 3:65-4:2); wherein the first jaw (29) is rotated during movement of the at least one handle (18; col. 2:63-68, col. 3:50-54).
Parramore does not teach that the rotation allowed by the clutch is continuous and stepless. However, to solve the problem of reducing backlash of a ratchet mechanism, Wikipedia teaches a “smooth, toothless ratchet with a high friction surface such as rubber” (pg. 1, under Backlash heading), which is understood to allow continuous and stepless free-rotation in a first direction due to the smooth, toothless construction of the ratchet, and to prevent rotation in an opposite second direction due to compressibility of the high friction surface. Specifically, Wikipedia teaches: “The pawl bears against the surface at an angle so that any backward motion will cause the pawl to jam against the surface and thus prevent any further backward motion. Since the backward travel distance is primarily a function of the compressibility of the high friction surface, this mechanism can result in significantly reduced backlash” (bottom of pg. 1- top of pg. 2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Parramore by replacing the toothed ratchet mechanism with a smooth, toothless ratchet mechanism which allows the free rotation to be continuous and stepless, as taught by Wikipedia, in order to reduce backlash.
Regarding claim 2, the modified Parramore teaches the claimed invention substantially as claimed, as set forth above for claim 1. Parramore further teaches the first jaw (29) includes a first follower surface (see annotated Fig. 4 above) and the first cam (13) includes a first cam surface engaging the first follower surface to rotate the first jaw (29) from an open position to a closed position (“cam 13 being so disposed that once the anvils have reached full closure, the anvil 29 is retracted by the next following operating stroke,” col. 3:61-65; see also col. 3:8-17).
Regarding claim 6, the modified Parramore teaches the claimed invention substantially as claimed, as set forth above for claim 1. Parramore further teaches the first jaw (29) has a first jaw portion (male crimping die 31) and the second jaw (26) has a second jaw portion (female crimping die 28) cooperating to crimp an object in response to movement of the at least one movable handle (col. 3:61-4:2).
Regarding claim 17, Parramore discloses a method of crimping an object (using multi-stroke tool, Fig. 4; col. 3:50-4:2) comprising: moving a handle (operating handle 18, see Fig. 2; col. 2:53-68, 3:50-54); rotating a cam assembly (cam 13) in a first direction about a shaft (15) in response to movement of the handle (18; col. 2:63-68; 3:50-54), the cam assembly (13) having a first cam surface engaged with a first follower of a first jaw (anvil 29); preventing rotation in a second direction about the shaft (15) with a clutch (ratchet wheels 14 engaged by pawl 20; col. 2:57-3:7, 3:50-4:2) disposed on the shaft (15) and operably coupled to the cam assembly (col. 2:42-44; col. 3:50-54), the second direction being opposite from the first direction, wherein the clutch (14) is configured to allow free rotation in the first direction (“the ratchet drive operates in one direction only,” col. 3:65-66); and rotating the first jaw (29) from an open position to a closed position to crimp the object in response to rotation of the cam assembly (col. 3:61-4:2).
Parramore does not teach that the rotation allowed by the clutch is continuous and stepless. However, to solve the problem of reducing backlash of a ratchet mechanism, Wikipedia teaches a “smooth, toothless ratchet with a high friction surface such as rubber” (pg. 1, under Backlash heading), which is understood to allow continuous and stepless free-rotation in a first direction due to the smooth, toothless construction of the ratchet, and to prevent rotation in an opposite second direction due to compressibility of the high friction surface. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Parramore by replacing the toothed ratchet mechanism with a smooth, toothless ratchet mechanism which allows the free rotation to be continuous and stepless, as taught by Wikipedia, in order to reduce backlash.
Regarding claim 20, the modified Parramore teaches the claimed invention substantially as claimed, as set forth above for claim 1. Parramore further teaches moving the first jaw (29) from the closed position to the open position in response to further movement of the handle (18) after the first jaw (29) and the second jaw (26) are in the closed position (“once the anvils have reached full closure, the anvil 29 is retracted by the next following operating stroke,” col. 3:61-65).
Claims 1-3, 6, 9, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Rozmus in view of Wikipedia.
Regarding claim 1, Rozmus discloses a tool (pivoted jaw tool, Figs. 1-2) comprising a first jaw (15; col. 2:46-51) arranged to rotate about a first pivot (jaw pivot 17); a second jaw (16) adjacent the first jaw (15); a first cam member (cam 30; col. 2:67-69) rotatable about a shaft (drive pivot pin 14), the first cam member (30) being operably coupled to the first jaw (15; see Fig. 1); at least one movable handle (second handle 12 “fixed to the frame structure in a relatively pivotable fashion,” col. 2:40-42) operatively coupled to the first cam member (30; col. 2:49-64); and a clutch (ratchet wheels 23 engaged by drive pawls 24 and detents 26) disposed on the shaft (14) and operably coupled to the first cam member (30), the clutch (23) configured to allow free-rotation in a first direction about the shaft (14) and prevent rotation in an opposite second direction (col. 2:57-62); wherein the first jaw (15) and the second jaw (16) are rotated during movement of the at least one movable handle (12; col. 2:52-54).
Rozmus does not teach that the rotation allowed by the clutch is continuous and stepless. However, to solve the problem of reducing backlash of a ratchet mechanism, Wikipedia teaches a “smooth, toothless ratchet with a high friction surface such as rubber” (pg. 1, under Backlash heading), which is understood to allow continuous and stepless free-rotation in a first direction due to the smooth, toothless construction of the ratchet, and to prevent rotation in an opposite second direction due to compressibility of the high friction surface. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Rozmus by replacing the toothed ratchet mechanism with a smooth, toothless ratchet mechanism which allows the free rotation to be continuous and stepless, as taught by Wikipedia, in order to reduce backlash.
Regarding claim 2, the modified Rozmus teaches the claimed invention substantially as claimed, as set forth above for claim 1. Rozmus further teaches the first jaw (15) includes a first follower surface (roller cam rider 35; col. 2:70-3:3) and the first cam (30) includes a first cam surface engaging the first follower surface to rotate the first jaw (15) from an open position to a closed position (col. 3:26-44).
Regarding claim 3, the modified Rozmus teaches the claimed invention substantially as claimed, as set forth above for claim 1. Rozmus further teaches a biasing member (spring 21) coupled between the first jaw (15) and the second jaw (16), the biasing member (21) biasing the first jaw (15) towards the open position (“spring 21 is fixed to the jaws 15, 16 to urge the jaws toward an open position,” col. 2:49-51).
Regarding claim 6, the modified Rozmus teaches the claimed invention substantially as claimed, as set forth above for claim 1. Rozmus further teaches the first jaw (15) has a first jaw portion (at crimping region 20) and the second jaw (16) has a second jaw portion (at crimping region 20) cooperating to crimp an object in response to movement of the at least one movable handle (col. 2:46-49; 3:25-45).
Regarding claim 9, Rozmus discloses a tool (pivoted jaw tool, Figs. 1-2) comprising a first jaw (15) arranged to rotate about a first pivot (jaw pivot 17) between an open position and a closed position (col. 2:46-51), the first jaw (15) having a first jaw portion (at crimping region 20) on a first end and a first follower (roller cam rider 35) on a second end (col. 2:70-72); a second jaw (16) having a second jaw portion (at crimping region 20) on a first end and a second follower (roller cam rider 36) on a second end (col. 2:70-72); a cam assembly (cam 30; col. 2:67-69) arranged to rotate about a shaft (drive pivot pin 14), the cam assembly (30) being operably coupled to the first follower (35) and the second follower (36; col. 3:1-3) to move the first jaw (15) from the open position to the closed position in response to rotation of the cam assembly (col. 3:26-44); and a clutch (ratchet wheels 23 engaged by drive pawls 24 and detents 26) disposed on the shaft (14) and operably coupled to the first cam member (30), the clutch (23) configured to allow free-rotation in a single direction (col. 2:57-62); wherein the first jaw (15) and the second jaw (16) are rotated in response to the rotation of the cam assembly (col. 2:52-54).
Rozmus does not teach that the rotation allowed by the clutch is continuous and stepless. However, to solve the problem of reducing backlash of a ratchet mechanism, Wikipedia teaches a “smooth, toothless ratchet with a high friction surface such as rubber” (pg. 1, under Backlash heading), which is understood to allow continuous and stepless free-rotation due to the smooth, toothless construction of the ratchet. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Rozmus by replacing the toothed ratchet mechanism with a smooth, toothless ratchet mechanism which allows the free rotation to be continuous and stepless, as taught by Wikipedia, in order to reduce backlash.
Regarding claim 17, Rozmus discloses a method of crimping an object (using pivoted jaw tool, Figs. 1-2; “for crimping electrical connectors,” col. 1:37-38; col. 1:63-61, 3:26-4:3) comprising moving a handle (second handle 12, col. 2:40-42; “handle 12 is … pivoted towards the handle 10 against the action of spring 25 to cause the ratchet wheels 23 to advance,” col. 2:57-62); rotating a cam assembly (cam 30) in a first direction about a shaft (14) in response to movement of the handle (“jaw actuation cam 30 is fixed to the ratchet wheels 23 to pivot with them about the drive pivot 14,” col. 2:67-69), the cam assembly (30) having a first cam surface engaged with a first follower (cam rider 35) of a first jaw (15; col. 3:1-3); preventing rotation in a second direction about the shaft (14) with a clutch (ratchet wheels 23 engaged by drive pawls 24 and detents 26) disposed on the shaft (14) and being operably coupled to the cam assembly (30), the second direction being opposite the first direction, wherein the clutch (23) is configured to allow rotation in the first direction (as part of “uni-directional drive mechanism,” col. 2:52-67); and rotating the first jaw (15) and a second jaw (16) from an open position to a closed position to crimp the object in response to rotation of the cam assembly (col. 2:52-54, 3:26-4:3).
Rozmus does not teach that the rotation allowed by the clutch is continuous and stepless. However, to solve the problem of reducing backlash of a ratchet mechanism, Wikipedia teaches a “smooth, toothless ratchet with a high friction surface such as rubber” (pg. 1, under Backlash heading), which is understood to allow continuous and stepless free-rotation in a first direction due to the smooth, toothless construction of the ratchet, and to prevent rotation in an opposite second direction due to compressibility of the high friction surface. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Rozmus by replacing the toothed ratchet mechanism with a smooth, toothless ratchet mechanism which allows the free rotation to be continuous and stepless, as taught by Wikipedia, in order to reduce backlash.
Regarding claim 20, the modified Rozmus teaches the claimed invention substantially as claimed, as set forth above for claim 1. Rozmus further teaches moving the first jaw (15) from the closed position to the open position in response to further movement of the handle (12) after the first jaw (15) and the second jaw (16) are in the closed position. Specifically, Rozmus teaches, “In Figure 1, the rollers 35, 36 are in contact with the drive surfaces 40, 41 at the point where the surfaces are the maximum distance from the axis of rotation. This is the conclusion of a crimping cycle. As the cam 50 is indexed clockwise by the ratchet mechanism, the rollers drop into the pocket recesses 43, 42 as the jaws shift under the urging of spring 21. This concludes a work cycle and the jaws assume an open position.” Col. 3:26-46.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Rozmus in view of Wikipedia, in further view of Steiner et al. (U.S. Patent No. 8,312,755, hereinafter Steiner).
Regarding claim 4, the modified Rozmus teaches the claimed invention substantially as claimed, as set forth above for claim 3. Rozmus does not teach that the biasing member is a compression spring (the spring 21 illustrated in Fig. 1 of Rozmus apparently being a tension spring). However, Steiner teaches a similar tool (crimping tool 70, Figs. 2, 4, and 7-10) with a biasing member (spring 86) coupled between first and second jaws (40, 42) to bias the first jaw (40) toward an open position (“to assist in forcing the crimping jaws apart,” col. 2:50-53), wherein the biasing member (86) is a compression spring (as shown in Figs. 2, 4, and 8-10). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Rozmus by replacing the tension spring of Rozmus with a compression spring as taught by Steiner, since this involves only the simple substitution of one known biasing arrangement for jaws of a crimping tool for another known biasing arrangement for jaws of a crimping tool, to yield the predictable result of forcing jaws of the crimping tool to an open position.
Claims 5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Rozmus or Parramore in view of Wikipedia, in further view of Lazar et al. (U.S. Patent No. 2,898,790, hereinafter Lazar).
Regarding claim 5, the modified Rozmus or the modified Parramore teaches the claimed invention substantially as claimed, as set forth above for claim 1. Rozmus and Parramore do not teach a cam handle operably coupled to rotate the first cam member to advance the position of the first jaw from the open position toward the closed position. However, Lazar teaches a similar multi-stroke tool (Figs. 1-2) comprising a cam handle (key 76, Fig. 2; col. 2:22-23) operably coupled to rotate a first cam member (20) in a first direction to advance the position of a movable jaw (14) from an open position toward a closed position. Lazar teaches that the cam handle (76) advantageously permits “the cam to be rotated to any desired position without movement of the handles.” Col. 2:22-23. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Rozmus or the invention of Parramore by adding a cam handle as taught by Lazar operably coupled to rotate the first cam member, in order to permit operation of the cam without movement of the tool handles.
Regarding claim 18, the modified Rozmus or the modified Parramore teaches the claimed invention substantially as claimed, as set forth above for claim 17. Rozmus and Parramore do not teach advancing movement of the first jaw from the open to the closed position in response to movement of a cam handle operably coupled to the cam assembly. However, Lazar teaches a similar method of crimping using a multi-stroke tool (Figs. 1-2) comprising the step of moving a first jaw (14) from an open position to a closed position in response to movement of a cam handle (key 76, Fig. 2; col. 2:22-23) that is operably coupled to a cam assembly (20). Lazar teaches that this advantageously permits “the cam to be rotated to any desired position without movement of the handles.” Col. 2:22-23. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Rozmus or the invention of Parramore by adding the step of advancing the first jaw from the open position to the closed position in response to movement of a cam handle operably coupled to rotate the cam assembly, as taught by Lazar, in order to permit operation of the cam without movement of the tool handles.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Rozmus in view of Lazar.
Regarding claim 11, Rozmus teaches the claimed invention substantially as claimed, as set forth above for claim 10. Rozmus does not teach a cam handle operably coupled to the shaft opposite the cam assembly. However, Lazar teaches a similar multi-stroke tool (Figs. 1-2) comprising a cam handle (key 76, Fig. 2; col. 2:22-23) operably coupled to a shaft (cam shaft 30) opposite a cam assembly (20). Lazar teaches that the cam handle (76) advantageously permits “the cam to be rotated to any desired position without movement of the handles.” Col. 2:22-23. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Rozmus by adding a cam handle as taught by Lazar operably coupled to the shaft opposite the cam assembly, in order to permit operation of the cam without movement of the tool handles.
Regarding claim 12, the modified Rozmus teaches the claimed invention substantially as claimed, as set forth above for claim 11. Rozmus further teaches a movable handle (second handle 12 “fixed to the frame structure in a relatively pivotable fashion,” col. 2:40-42) operably coupled to the cam assembly (col. 2:49-64), and a stationary handle (handle 10 “rigidly fixed to a frame structure 11,” col. 2:40-41) operably coupled to the first pivot (the first pivot 17 being mounted on the frame structure 11, see Figs. 1-2).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Rozmus in view of Lazar, in further view of Steiner.
Regarding claim 13, the modified Rozmus teaches the claimed invention substantially as claimed, as set forth above for claim 12. Rozmus further teaches a biasing member (spring 21, Fig. 1; col. 2:49-51) coupled between the first jaw (15) and the second jaw (16). Rozmus does not teach that the biasing member is disposed between the first pivot and the first jaw portion. However, Steiner teaches a similar tool (crimping tool 70, Figs. 2 and 7-10) with a biasing member (spring 86) coupled between first and second jaws (40, 42) and disposed between a first pivot and a first jaw portion of the first jaw (40), “to assist in forcing the crimping jaws apart” (col. 2:50-53), which is the same function performed by the biasing member of Rozmus but in a different location. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Rozmus by relocating the biasing member to be between the first pivot and the first jaw portion, as taught by Steiner, in order to assist in forcing the jaws apart to the open position. The examiner notes that this involves only the simple substitution of one known biasing arrangement for jaws of a crimping tool for another known biasing arrangement for jaws of a crimping tool, to yield the predictable result of forcing jaws of the crimping tool to an open position.
Response to Arguments
Applicant's arguments filed January 20, 2026, have been fully considered.
With respect to the drawings, the examiner agrees that the amendments have overcome the objections set forth in the prior Office action.
With respect to the specification, the examiner notes that the specification amendment is not properly marked in the manner required by 37 CFR 1.173, as discussed in the objections set forth above. The examiner notes for clarity that the content of the specification amendment filed January 20, 2026, would overcome the objections set forth in the prior Office action, but that the specification amendments need to be refiled in proper format.
With respect to the Consent of Assignee, the examiner notes that the same problem identified in the prior Office action is present in the new Consent of Assignee filed January 20, 2026. Both documents were signed by the same person, Ryan Adams, who does not have apparent authority to sign on behalf of the assignee because his title (“Plant Head”) does not clearly set forth that he is an officer of the assignee. Moreover, Applicant has not identified any statement on the record that Ryan Adams is in fact authorized to act on behalf of the assignee. For example, the examiner finds no statement in Applicant’s Remarks which would clearly indicate that Ryan Adams has such authority. This issue can be remedied either by making a clear statement on the record that Ryan Adams is authorized to act on behalf of the assignee, or by supplying a Consent of Assignee that is signed by a person having apparent authority to sign (e.g., chief executive officer, president, vice-president, secretary, or treasurer), consistent with MPEP § 324.
With respect to the Statement Under 37 CFR 3.73(c), the examiner agrees that the new statement filed January 20, 2026, corrects the issue noted in the prior Office action. Accordingly, the objection to the Statement Under 37 CFR 3.73(c) is withdrawn.
With respect to the rejections under 35 U.S.C. 251 (Original Patent), the examiner notes that the claim amendments to recite functional limitations of “at least one of” the first jaw and the second jaw do not overcome the rejection because the claims still recite only the first jaw being operably coupled to a first cam surface (with no mention of a second cam for the second jaw) and do not require that both of the first and second jaw are rotatable (instead requiring only “at least one” of the jaws to be rotatable). Therefore, the rejections based on failure to meet the original patent requirement are maintained, as set forth above.
With respect to the rejections under 35 U.S.C. 251 (Recapture), Applicant argues that the omitted limitations are not surrender-generating limitations because “during examination of the granted patent, Applicant expressly indicated that the amendment to the claims did not constitute any waiver or disclaimer of the right to pursue the originally filed claims.” Remarks, pg. 12. This argument is not persuasive because such disclaimers cannot be applied in reissue applications to overcome the statutory requirements of 35 U.S.C. 251. A reissue application is not a continuation of the original patent application but instead an application for reissue of the granted patent to correct an error as governed by 35 U.S.C. 251. The courts have consistently held that surrender of subject matter during prosecution in order to obtain a patent is not an error within the meaning of 35 U.S.C. 251. See In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984).
With respect to the rejections under 35 U.S.C. 112(b), the examiner agrees that the amendments have overcome the rejections set forth in the prior Office action. However, new grounds of rejection under 35 U.S.C. 112(b) are set forth above in response to Applicant’s amendment.
With respect to the rejections under 35 U.S.C. 102, Applicant argues that Parramore and Rozmus do not disclose a clutch in general. The examiner maintains that the ratchet and pawl mechanisms disclosed by Parramore and Rozmus fall within the broad scope of the term “clutch.” In reissue applications, claims are given their broadest reasonable interpretation in light of the specification. Under the broadest reasonable interpretation, the words of the claims are given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111. The plain meaning of the term “clutch” is “a mechanism for engaging or disengaging a shaft that drives a mechanism or is driven by another part,”2 which is not inconsistent with the ‘328 patent specification. While the ‘328 patent specification discloses a sprag clutch, the rejected claims are not so limited. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The ratchet mechanisms of Parramore and Rozmus are mechanisms for engaging or disengaging the shaft (14 of Rozmus, 15 of Parramore) for one-way rotation driven by actuation of the handles to drive movement of one or more cams to open and close the jaws, and are thus reasonably understood to be clutches as claimed. Applicant further argues that Parramore and Rozmus do not specifically teach a clutch that is “disposed on a shaft” as now recited in the amended claims. This argument is not persuasive because Parramore and Rozmus both clearly teach that the ratchet mechanism is disposed on a shaft (14 of Rozmus, 15 of Parramore), as set forth above in response to Applicant’s amendment.
With respect to the rejections under 35 U.S.C. 103, Applicant argues that none of the cited references teach a clutch in general, or specifically a clutch disposed on a shaft. Applicant’s arguments with respect to Rozmus and Parramore are addressed above. Applicant’s arguments with respect to Wikipedia, Steiner, and Lazar are not persuasive because these references are not relied upon to teach the argued feature. (Additionally, the examiner notes for completeness that one of ordinary skill in the art would readily understand that the ratchet mechanisms described by Wikipedia are conventionally disposed on a shaft which serves as the axis of rotation of the ratchet, whether it is toothed or toothless, and that Lazar explicitly teaches a cam shaft 30, Fig. 1, on which the cam and ratchet mechanism are disposed.)
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET.
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/Laura Davison/Reexamination Specialist, Art Unit 3993
Conferees:/WILLIAM C DOERRLER/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 For clarity of the record, the examiner notes that claims 11-16 depended from claim 10, such that the limitations of claim 10 are understood to be the subject matter identified by the previous examiner as having been allowable.
2 Random House Kernerman Webster’s Dictionary, 2010. Retrieved February 3, 2026 from https:thefreedictionary.com/clutch, definition 10a.