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 .
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 Objections
Claims 2-4 and 22 are objected to because of the following informalities: the language of each of the claims is awkwardly worded and grammatically incorrect. Appropriate correction is required.
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.
Claim(s) 1, 19 and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,284,073 A to (Wright et al.).
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Regarding claim 1, (Wright et al.) discloses a tool (wrench socket 10) adapted to engage a head of a fastener 20 having corners 26 and flanks 22 with flank lengths that respectively extend between two adjacent corners 26 (Col. 4, lines 34-40), the tool 10 comprising: a surface having recesses (corner clearance recesses 38) and sidewalls (side walls 36), wherein each of the sidewalls 36 extends between two adjacent recesses 38 and includes a contact point 44 that is adapted to engage one of the flanks 22 at a distance of about 30 to 60 percent of half the flank length away from one of the corners (see Fig. 3).
Regarding claims 19 and 27, the tool of (Wright et al.) according to claim 1, further comprises a socket body (generally cylindrical body 30) having an axial bore (work receiving cavity 34), and the surface is an inner surface disposed in the axial bore (Col. 4, lines 41-53).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,284,073 A to (Wright et al.) as applied to claim 1 above.
(Wright et al.) as applied to claim 1 above, provides a tool according to claims 2-4, but does not explicitly state that the particular distance at which the contact point engages one of the flanks is at a distance of about 40 to 55 percent of half the flank length away from one of the corners (claim 2); of about 40 percent of half the flank length away from one of the corners (claim 3); or, of about 45 percent of half the flank length away from one of the corners.
However, absent any demonstration of criticality, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to configure the surface of (Wright et al.) such that the contact point is about 40 to 55 percent of half the flank length; about 40 percent of half the flank length; or, about 45 percent of half the flank length away from one of the corners, since it has been held that where the general conditions of a claim (or claims) are disclosed in the prior art, i.e., (Wright et al), it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also: In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929).
Claim(s) 20 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,284,073 A to (Wright et al.) as applied to claim 1 above, in view of US 6,354,175 B1 to (Dobson et al.).
(Wright et al.) as applied to claim 1 above, provides a provides a tool having a surface having recesses and sidewalls… wherein the surface is an inner surface disposed in the axial bore of a socket. (Wright et al.) does not provide such a surface in a wrench body.
However, (Dobson et al.) provides a similar surface having recesses 20 and sidewalls 18… (e.g., Figs. 3 and 4), and teaches that the surface may be an inner surface disposed in the axial bore of a socket (nut driver socket 10), or inter alia, a wrench body (“a closed box end wrench 30 and closed end wrench 40”)(Figs. 5 and 6)(Col. 2, lines 65-67 and Col. 3, lines 1-2).
Therefore, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to have modified (Wright et al.) by applying the surface having recesses and sidewalls… to the body of a wrench, as taught by (Dobson et al.).
Double Patenting
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.
Claims 1 and 5-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 9,718,170. Although the claims at issue are not identical, they are not patentably distinct from each other because the features of claims 1 and 5-8 are described in the patent claims.
Claims 1, 5-14, 19, 20, 27 and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-39 of U.S. Patent No. 10,442,060. Although the claims at issue are not identical, they are not patentably distinct from each other because the features of claims 1, 5-14, 19, 20, 27 and 28 are described in, or may be inferred from, the patent claims.
Claims 21-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,806,843. Although the claims at issue are not identical, they are not patentably distinct from each other because the features of claims 21-23 are described in the patent claims.
Claims 1-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,162,120. Although the claims at issue are not identical, they are not patentably distinct from each other because the features of claims 1-28 are described in, or may be inferred from, the patent claims.
Conclusion
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 (. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/David B. Thomas/
Primary Examiner, Art Unit 3723
/DBT/
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