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 .
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.
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.
Claims 1-6 and 8-18 are 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.
Regarding claim 1, the phrase "pin-like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim 1 also recites: “wherein this can be achieved by” – it is unclear what “this” is referring to.
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 (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.
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 1-4, 6, 9, 11 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lutolf et al. (hereafter “Lutolf”)(US 2018/0161968).
With regards to claim 1, Lutolf discloses a pressing tool comprising:
a housing (20)defining a central longitudinal axis;
pressing jaws (46, 48)arranged outside the housing, wherein the pressing jaws are configured to be pivoted from a closed position into an open position about a pivoting axis that is fixed relative to the housing, wherein one or both pressing jaws are configured to be pivoted into the open position by hand of a user by acting upon the respective pressing jaw on an end of the pressing jaw that faces the housing;
a pin-like holding projection (unlabeled, area where switch 72 is located) protruding from the housing the holding projection and having a longitudinal extent with a free end, the holding projection protruding from the housing at an acute angle relative to the longitudinal axis, as seen in at least Figure 5;
an actuating switch (72) provided on the holding projection and configured to be moved in the direction of the central longitudinal axis of the housing in order to active a pressing operation when acted upon by a finger of the user’s hand,
wherein the housing is configured to be encircles by the user’s hand in a hand region of the housing having the actuating switch, as described in at least paragraph 0054, and
wherein a front face is partially formed by the housing and partially formed by the actuating switch and the front face is exposed towards the pressing jaws in the direction of the longitudinal axis, as seen in Figure 5,
wherein a dimension of the holding projection transverse to the longitudinal extent is smaller than a smallest diameter of the hand region and in that a complete circumferential clearance of the holding projection with respect to the housing is realized in a plane that extends through the holding projection perpendicular to the longitudinal extent, and an outer edge contour of the holding projection runs into a terminal edge of the front edge of the housing and extends perpendicular to the longitudinal axis so that finger of the suer’s hand, which initially holds the associated pressing jaw in the open position, can change from the pressing jaw to the actuating switch during a single-handed operation of the pressing tool, wherein this can be achieved by sliding the finger in the direction of the actuating switch form the open position of the pressing jaw, as seen in Figure 5..
With regards to claim 2, Lutolf discloses wherein the actuating switch forms a portion of the front face, as seen in Figure 5.
With regards to claim 3, Lutolf discloses wherein a longitudinal extent of the holding projection is smaller than a width of the user's hand, as seen in Figure 5.
With regards to claim 4, Lutolf discloses wherein the actuating switch (72) is formed in a surface of the holding projection that faces the pressing jaws, as seen in at least Figure 5.
With regards to claim 6, Lutolf discloses wherein the holding projection only retains the actuating switch, as seen in Figure 5.
With regards to claim 9, Lutolf discloses wherein the actuating switch is formed in a surface of the holding projection that faces the pressing jaws, as seen in Figure 5.
With regards to claims 11 and 14, Lutolf discloses wherein the holding projection only retains the actuating switch, as seen in Figure 5.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5, 10, 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Lutolf in view of Lefavour et al. (hereafter “Lefavour”)(US 2008/0087064).
Lutolf discloses wherein the actuating switch is a trigger switch. Lutolf discloses the invention substantially as claimed except for wherein the actuating switch is a rocker switch.
Lefavour is relied upon to teach a pressing tool having a actuating switch that can be a push button or a rocker switch, paragraph 0022. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute Lutolf’s switch with Lefavour’s rocker switch because simple substitution of one known element for another yield predictable results require only routine skill in the art. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)].
Claims 8, 12, 15, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Lutolf in view of Grevel (US Patent 5,797,298).
Lutolf discloses the invention substantially as claimed except for wherein both pressing jaws have an actuating trough configured to receive a finger of the user on ends proximate to the housing. Grevel is relied upon to teach a hand tool having finger grips (28) on jaws 16. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, that Lutolf’s pressing tool would have actuating trough, as taught by Grevel, since Grevel teaches its commonly known that a hand tools include a finger trough.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERESA M EKIERT whose telephone number is (571)272-1901. The examiner can normally be reached Monday-Friday 8AM-4:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Templeton can be reached at 571-270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TERESA M EKIERT/ Primary Examiner, Art Unit 3725
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