CTNF 18/811,407 CTNF 76901 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Claim Rejections - 35 USC § 112 07-30-01 AIA The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Claims 15-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 15 recites “a center of mass defined at a location closer to the working end than the drive end…”; however, in the written description of the present and all of the parent applications, every instance of “a center mass” is “defined at a location closer to the first end than the second end…” or “defined closer to the drive end than to the working end…”, e.g., paragraphs [0003]-[0004], [0043], and [0046] in the present application, wherein the “first portion having a drive end” and the “second portion including a working end that is opposite the drive end.” Therefore, the recitation in claim 15 that “a center of mass defined at a location closer to the working end than the drive end” is new matter. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by US 7127969 B2 to (Hsieh) . Regarding claim 7, (Hsieh) discloses a tool accessory, comprising: a body (sockets 20, 40, 50, 60, 70, 80 and 90) comprising: a tipping axis (axis C); a first portion comprising a first end (first end 24) and a first aperture (“a quadrangular hole (not shown)” – Col. 2, lines 9-10) located at the first end; a second portion (second end 26) comprising a second end opposite the first end (24) along the tipping axis (C) and a second aperture (a hexagonal or dodecagonal fitting hole 22) located at the second end (26); a tipping point (e.g., annular rib 30 in Fig. 3) disposed along the body between the first portion (24) and the second portion (26); and a center of mass defined at a location closer to the first end (24) than the second end (26)(although not explicitly stated, it would appear in Fig. 3, there is a mass near “center S” closer to the first end 24) such that, when the tool accessory (socket 30) is rested on a surface, the center of mass causes the tool accessory to tip at the tipping point (30) and to rest on a portion of the first portion (24)(Fig. 3). PNG media_image1.png 286 377 media_image1.png Greyscale Regarding claim 8, in (Hsieh), the second portion (26) is substantially cylindrical such that it has a constant diameter (“According to a first embodiment, the socket 20 of the present invention is a cylindrical socket with unified diameter.” – Col. 2, lines 4-6) . Double Patenting 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-34 AIA PNG media_image2.png 744 440 media_image2.png Greyscale PNG media_image3.png 705 442 media_image3.png Greyscale Claim s 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-7 of U.S. Patent No. 9,956,670 . Although the claims at issue are not identical, they are not patentably distinct from each other because all of the salient limitations of pending claim 1-6 are described in patent claims 1-7 . 08-34 AIA PNG media_image4.png 880 437 media_image4.png Greyscale PNG media_image5.png 689 460 media_image5.png Greyscale Claim s 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-6 of U.S. Patent No. 10,688,630 . Although the claims at issue are not identical, they are not patentably distinct from each other because all of the salient limitations of pending claim 1-14 are described in patent claims 1-6 . PNG media_image6.png 790 458 media_image6.png Greyscale PNG media_image7.png 880 437 media_image7.png Greyscale Conclusion Claims 7 and 8 are rejected as having been anticipated by (Hsieh); claims 1-14 are rejected under nonstatutory double patenting; and claims 15-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as reciting new matter. Any inquiry concerning this communication or earlier communications from the examiner should be directed to David B. Thomas whose telephone number is (571) 272-4497 . The examiner’s e-mail address is: dave.thomas@uspto.gov . The examiner can normally be reached on Mon-Fri 11:30-7:30. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached on (313) 446-6546. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /David B. Thomas/ Primary Examiner, Art Unit 3723 /DBT/ Application/Control Number: 18/811,407 Page 2 Art Unit: 3723 Application/Control Number: 18/811,407 Page 3 Art Unit: 3723 Application/Control Number: 18/811,407 Page 4 Art Unit: 3723 Application/Control Number: 18/811,407 Page 5 Art Unit: 3723 Application/Control Number: 18/811,407 Page 6 Art Unit: 3723 Application/Control Number: 18/811,407 Page 7 Art Unit: 3723 Application/Control Number: 18/811,407 Page 8 Art Unit: 3723 Application/Control Number: 18/811,407 Page 9 Art Unit: 3723
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