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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Invention I, Species II, claims 1-10 in the reply filed on 8 July 2026 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8 July 2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a locking mechanism” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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.
Claim 6 is 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 6 recites “a locking sleeve comprising a sleeve retention device and a plug”, as if the sleeve retention device and plug are two separate items in the claim. However, the specification discloses that the plug is the sleeve retention device, such that claiming the two items separately is new matter not disclosed in the specification.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation “a locking sleeve comprising a sleeve retention device and a plug”. However, the specification discloses that the plug is the sleeve retention device, such that claiming the two items separately makes it unclear whether these are the same item or two separate items. For the purposes of examination, it has been assumed that these are the same item.
Claim Rejections - 35 USC § 102
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 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.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beaulieu (US 1,225,209).
Regarding claim 1, Beaulieu discloses a tool holder (figure 1), comprising: a main body 8 defining a body axis (rotational axis, not labeled) and comprising a witness hole (not labeled, for screw 11); an extension 5 within the main body along the body axis; and a locking mechanism 11 configured to lock the extension along the body axis relative to the main body when the extension is visible through the witness hole.
Regarding claim 2, Beaulieu discloses wherein the main body 8 comprises a mounting end (top end of sleeve 8 in figure 1) and a mounting collar 18 defining a pair of parallel flats 19.
Claims 1, 3, and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by O (US 5,154,104).
Regarding claim 1, O discloses a tool holder 10, comprising: a main body 14 defining a body axis (not labeled, rotation axis) and comprising a witness hole 32; an extension 16/22 within the main body along the body axis; and a locking mechanism 34 configured to lock the extension along the body axis relative to the main body when the extension is visible through the witness hole.
Regarding claim 3, O discloses wherein the extension 16/22 further comprises a tool head 22 comprising a pilot bore configured to receive a tool and defining internal pilot threading (for receiving thread 70 on rod hanger bolt B).
Regarding claim 8, O discloses wherein the witness hole 32 is a first witness hole, and the main body 14 comprises a second witness hole 32 and the tool holder can vary between a first length when the extension is locked at the first witness hole and a second length when the extension is locked at the second witness hole.
Regarding claim 9, O discloses wherein the main body 14 further comprises a third witness hole 32 and a fourth witness hole 32.
Regarding claim 10, O discloses wherein the first witness hole 32 and the second witness hole 32 define a first opposing pair of witness holes (upper set of holes in figure 2) and the third witness hole 32 and the fourth witness hole 32 define a second opposing pair of witness holes (lower set of holes in figure 2), and wherein a positive stop 36 extends through at least one of the opposing pairs of witness holes (U-shaped bolt 36 may extend through one of the pairs of holes and another pair of holes).
Claims 1 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weissman (US 3,576,076).
Regarding claim 1, Weissman discloses a tool holder 12/14, comprising: a main body 14 defining a body axis (not labeled, rotation axis) and comprising a witness hole 42; an extension 12 within the main body along the body axis; and a locking mechanism 36 configured to lock the extension along the body axis relative to the main body when the extension is visible through the witness hole (the extension 12 is visible through the witness hole 42 through the hole for screw 54, see figures 4-5).
Regarding claim 4, Weissman discloses further comprising a locking sleeve 32 comprising a sleeve bore (inner surface of sleeve) and a guide structure 36, and wherein the main body 14 comprises a complimentary guide structure (outer surface of main body 14) configured to translate the locking sleeve (axially translate during assembly) relative to the main body when the main body is inserted into the sleeve bore of the locking sleeve.
Regarding claim 5, Weissman discloses further comprising a locking sleeve 32 extending over the witness hole 42 in the main body 14.
Regarding claim 6, Weissman discloses further comprising a locking sleeve 32 comprising a sleeve retention device/plug 54, and wherein the plug is inserted into the witness hole 42 of the main body 14 to prevent the locking sleeve from translating relative to the main body (screw 54 prevents axial and rotational translation of the locking sleeve relative to the main body).
Regarding claim 7, Weissman discloses further comprising a locking sleeve 32 comprising a locking lug 36, and wherein the extension 12 defines a locking notch 24 configured to receive the locking lug when the extension is locked relative to the main body 14.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 571-272-3460. 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.
/ERIC A. GATES/Primary Examiner, Art Unit 3722 3 August 2026
Prosecution Insights