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 Species II, claims 1-20 in the reply filed on 9 June 2026 is acknowledged.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “146”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 17 is objected to because of the following informalities: in claim 17, line 1, the word “a” should be added before the word “cylindrical”. Appropriate correction is required.
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.
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 9 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 9 recites “the second fillet defines a third radius of curvature that is substantially the same as the first radius of curvature.” This limitation was not provided in the original disclosure and is also not evident from the drawings.
Claims 4, 7, and 14 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.
Claim 4 recites the limitation "the maximum outer dimension" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the second reduced diameter section" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the maximum outer dimension" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 1-3 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Santamarina et al. (US 10,150,205).
Regarding claim 1, Santamarina et al. discloses an accessory tool 1410 (embodiment of figures 109-110) comprising: an effector end 1414 including: a body 1414 having first end (at 1416) and a second end (right side of large cylindrical portion, see figure 110) opposite the first end, and a base shoulder (corner of second end, see figure 110) adjacent the second end; and a shank 1418/1420 coupled to the effector end, the shank including: a tool engagement portion 1418 configured to be received within a tool and having a hexagonal cross section defining a maximum outer width (see figure 10), a first reduced diameter portion (in torsion zone 1420, see figure 110) disposed adjacent the effector end and defining a minimum outer dimension that is less than the maximum outer width (see figure 110), a fillet (left side of torsion zone 1420 in figure 110) extending contiguous from the first reduced diameter portion and flaring outward to the base shoulder, the fillet defining a first radius of curvature (see figure 110), and a second reduced diameter portion (adjacent right end of tool engagement portion 1418, see figure 110) disposed adjacent the tool engagement portion and configured to receive a ball detent (as is known in the art for a tool engagement portion groove), the second reduced diameter portion defining a second radius of curvature (see figure 110).
Regarding claim 2, Santamarina et al. discloses wherein the second radius of curvature is substantially the same as the first radius of curvature (as seen in figure 110, the first radius of curvature and second radius of curvature are substantially the same at the minimum diameter portions of each).
Regarding claim 3, Santamarina et al. discloses wherein the effector end 1414 includes a socket adapter 1416.
Regarding claim 7, Santamarina et al. discloses wherein the minimum outer dimension (in torsion zone 1420) is a first minimum outer dimension, and wherein the second reduced diameter section (adjacent right end of tool engagement portion 1418) defines a second minimum outer dimension that is substantially similar to the first minimum outer dimension (as seen in figure 110).
Regarding claim 8, Santamarina et al. discloses wherein the first reduced diameter portion is located between the fillet and the second reduced diameter portion (see figure 110), and wherein the second reduced diameter portion is located between the first reduced diameter portion and the tool engagement portion (see figure 110).
Regarding claim 9, Santamarina et al. discloses wherein the fillet is a first fillet (left side of torsion zone 1420) and the shank further includes a second fillet (right side of torsion zone 1420) that is contiguous with an opposite end of the first reduced diameter portion, the second fillet defines a third radius of curvature that is substantially the same as the first radius of curvature (as seen in figure 110, the first radius of curvature and third radius of curvature are substantially the same at the minimum diameter portions of each).
Claims 11-12, 15, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DeBaker (US 8,418,587).
Regarding claim 11, DeBaker discloses an accessory tool 10d comprising: an effector end 18d including: a body 18d having a first end (right side in figure 20) and a second end (left side up to end portion 34d in figure 20) opposite the first end, a base shoulder 34d adjacent the second end, and a first fillet (fillet between tip 18d and end portion 34d, see figure 20) extending radially inward from the base shoulder to the body; and a shank 22d coupled to the effector end, the shank including: a tool engagement portion 14d configured to be received within a tool and having a hexagonal cross section defining a maximum outer width (see figure 20), a reduced diameter portion 30d disposed adjacent the effector end and defining a minimum outer dimension that is less than the maximum outer width (see figure 20), and a second fillet extending outward from the reduced diameter portion to the base shoulder (fillet between reduced diameter portion 30d and the end portion 34d adjacent tip 18d, see figure 20).
Regarding claim 12, DeBaker discloses wherein the second fillet defines an obtuse angle relative to the shank 22d (angle less than 180 degrees, see figure 20).
Regarding claim 15, DeBaker discloses wherein the reduced diameter portion is located between the second fillet and the tool engagement portion 14d (as seen in figure 20).
Regarding claim 17, DeBaker discloses wherein the body 18d includes cylindrical section extending away from the base shoulder that has a plurality of rounded protrusions (rounded protrusions forming the Philips-style tip, see figures 20-21).
Claim 19 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by White et al. (US 2008/0317559 A1).
Regarding claim 19, White et al. discloses an accessory tool 11/12/25 comprising: an effector end 11/12 including: a body 11/12 having first end 16, a second end (left side of larger cylindrical portion in figure 5) opposite the first end, and an engagement mechanism 11 configured to engage corresponding features of a socket 14 to detachably couple the socket to the accessory tool, and a base shoulder (corner of second end, see figure 5) adjacent the second end; and a shank 25 coupled to the effector end, the shank including: a tool engagement portion 25 configured to be received within a tool and having a hexagonal cross section defining a maximum outer width, a first reduced diameter portion (reduced diameter portion on the right of shank 25, see figure 5) disposed adjacent the effector end and defining a minimum outer dimension that is less than the maximum outer width, and a second reduced diameter portion (reduced diameter portion on the left of shank 25, see figure 5) disposed adjacent the tool engagement portion and configured to receive a ball detent (as is known in the art for a tool engagement portion groove).
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 of this title, 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 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Santamarina et al. (US 10,150,205).
Regarding claims 4-6, Santamarina et al. discloses wherein the shank 1418/1420 defines a first length, wherein the first reduced diameter section defines a second length (L). Santamarina et al. does not disclose wherein the maximum outer dimension of the first reduced diameter portion is a diameter that is 70% to 98% of the maximum outer width, wherein the second length is 10% to 30% of the first length, or wherein the second length is between 4 mm and 8 mm. However, these diameter and length dimensions are result-effective variable because Santamarina et al. teaches that it is desirable to optimize these dimensions using the provided formulae to be able to better control the locations of breakage of the driving tool during a tool operation. Therefore, it would have been an obvious matter of design choice to make the diameters and lengths to be within the claimed ranges for the purpose of optimizing the operation of the driving tool, because it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, involves only routine skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007)
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Santamarina et al. (US 10,150,205) in view of JP 3195433 U.
Regarding claim 10, Santamarina et al. discloses the invention substantially as claimed, except Santamarina et al. does not disclose wherein the shank has a first hardness that is less than a second hardness of the effector end. JP 3195433 U teaches the use of an accessory tool that comprises a shank 12 having a lower hardness that a treated high hardness inside portion 11a of a socket 11 for the purpose of protecting the socket portion from indentations during operation of the accessory tool. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have modified the socket of Santamarina et al. with the high hardness heat treatment in the socket as taught by JP 3195433 U in order to prevent damage to the socket during operation of the accessory tool.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over DeBaker (US 8,418,587).
Regarding claims 13-14, DeBaker discloses the invention substantially as claimed, except DeBaker does not disclose wherein the obtuse angle of the second fillet is 110 degrees to 140 degrees, or wherein the maximum outer dimension of the reduced diameter portion is 70% to 98% of the maximum outer width. However, these diameter and length dimensions are result-effective variable because it is known in the art that it is desirable to optimize these dimensions to better control the locations of breakage of the driving tool during a tool operation. Therefore, it would have been an obvious matter of design choice to make the diameters and lengths to be within the claimed ranges for the purpose of optimizing the operation of the driving tool, because it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, involves only routine skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007)
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over DeBaker (US 8,418,587) in view of Neitzell (US 2015/0196995 A1).
Regarding claim 16, DeBaker discloses the invention substantially as claimed, except DeBaker does not disclose wherein the shank has a first hardness that is less than a second hardness of the effector end. However, DeBaker does teach that it may be desirable to impart a varying hardness along the length of the accessory tool. Neitzell teaches the use of a tool accessory 10 that comprises a shank portion 22 that has a lower hardness than an effector end 18 for the purpose of reducing wear to the effector end while increasing torsional resiliency of the shank. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have modified the effector end and shank of Neitzell with the high hardness effector end and lower hardness shank as taught by Neitzell in order to prevent wear to the effector end while not diminishing the torsional resilience of the shank.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over DeBaker (US 8,418,587) in view of Allen (US 2014/0023445 A1).
Regarding claim 18, DeBaker discloses the invention substantially as claimed, except DeBaker does not disclose wherein the body is a socket adapter and includes a spring loaded detent. Allen teaches the use of an accessory tool 18 that comprises a body 66 with a spring loaded detent 70 for the purpose of easily removing the accessory tool from an effector tool portion 14. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have replaced the effector end of DeBaker with a socket adapter with spring loaded detent as taught by Allen in order to be able to use the accessory tool with different effector ends.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over White et al. (US 2008/0317559 A1).
Regarding claim 20, White et al. discloses wherein the body 11/12 of the effector end defines a first length, wherein the accessory tool 11/12/25 defines a second length measured between the engagement mechanism 11 of the body and the first end of the body. White et al. does not disclose wherein the second length is approximately 35% to 65% of the first length. However, it would have been an obvious matter of design choice to make the different portions of the device of whatever relative sizes were desired for the purpose of providing a desired extension length to the accessory tool, since such a modification would have involved a mere change in the proportions of components. A change in proportion is generally recognized as being within the level of ordinary skill in the art. In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gischus et al. (US 2012/0275875 A1) teaches a tool with two reduced diameter portions.
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.
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/ERIC A. GATES/Primary Examiner, Art Unit 3722 2 July 2026
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