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 .
Pro-Se
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at www.uspto.gov/FindPatentAttorney.
Drawings
Figures 12B and 12C should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
All of the drawings provided are objected to because all of the Figures do not comply with many of the requirements set forth in 37CFR1.84 which can be found in its entirety in MPEP section 608.02. Examiner recommends reviewing the Figures of Watt (U.S Patent No. 8534164). Watt for example in Figures 3A-3E shows how to provide different views of the same part. Provided below is are a non-exhaustive set of examples of issues with the drawings:
With respect to Figure 1:
37CFR1.84(u)(1) requires:
Each “view” of the invention to be separately numbered. With 7 different perspectives shown we would except to see Fig. 1A, Fig. 1B, … , Figure 1G.
The term “Figure” is inappropriate and should be “Fig.”
37CFR1.84(m) requires:
Each item shown in cross-section to have the correct material hatch markings. There appear to be at least two cross-sections (the two views found at the bottom of the page) identified in Figure 1.
With respect to Figure 16:
37CFR1.84(p)(3) requires:
No numbers or letters to intersect with cross or mingle with lines within the figures.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Specification
The abstract of the disclosure is objected to because it discusses the purported merits of the invention instead of discussing the structure of the invention itself. Examiner recommends applicant read MPEP 608.01. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b) I. Guidelines for the preparation of patent abstracts. There are sample abstracts in Section E. Sample Abstracts.
The disclosure is objected to because of the following informalities: While applicant’s specification includes the necessary sections, applicant’s specification is deficient in the inclusion of required information with these sections. Most notably within the detailed description:
(j) DETAILED DESCRIPTION OF THE INVENTION: See MPEP § 608.01(g). A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71. The description should be as short and specific as is necessary to describe the invention adequately and accurately. Where elements or groups of elements, compounds, and processes, which are conventional and generally widely known in the field of the invention described, and their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art, they should not be described in detail. However, where particularly complicated subject matter is involved or where the elements, compounds, or processes may not be commonly or widely known in the field, the specification should refer to another patent or readily available publication which adequately describes the subject matter.
In the instant case, there is very little in the Detailed Description of the Invention section that discloses how each of the parts of the invention work and/or interact with each other. For example:
While Figures ## appear to show parts that could allow the device to pivot 90 degrees the specification does not set forth how these parts interact with each other and/or are assembled. Neitzell et al. (U.S Publication No. 20040231170) is an example of a power tool that has a driver that can rotate 90 degrees. Examiner recommends reviewing paragraphs 55-58 of Neitzell as an example of how the Detailed Description of the Invention is used to adequately identify what is shown in the Figures.
While Figures ## appear to show parts that could telescope relative to each other, there is no discussion of how these parts interact and/or move relative to each other to allow for telescopic engagement. Jackson et al (U.S Publication No. 6,038,946) is an example of a tool with a telescoping driver similar to applicant’s invention. Examiner recommends reviewing the Description of the Preferred Embodiments beginning on line 40 of column 4 as an example of how the Detailed Description of the Invention is used to adequately identify what is shown in the Figures.
The use of the terms DeWALT and TWTADE, which are trade names or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Note: Applicant is encouraged to read MPEP sections 608.01(a)-608.01(p). Appropriate correction is required.
NOTE: Applicant should please be aware of New Matter. New Matter is an instance when information is added to the disclosure (specification, abstract, claims, or drawings) that is not supported by the information provided by applicant at the time the application was originally filed. In the present case, adding the subject matter necessary to the specification to adequately understand how to make and use the invention would most likely be considered New Matter and would not be allowed. Applicant should consider filing a “Continuation in Part” which would allow applicant to add the necessary information. For additional information on New Matter and Continuation in Part please see MPEP 608.04 (New Matter) and MPEP 201.08 (Continuation in Part).
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 1-4 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 claims 1-4, each is written in narrative form and are not in the proper format for examination. As set forth in 608.01(i) 37CFR1.75 (e) each claim must include a: (1) preamble; (2) transitional phrase; and (3) the structure of the invention. In the instant case applicant has not claimed a single structure that is capable of performing the functions (ability to extend, ability to bend 90 degrees) indicated. As such each of the claims have an unlimited scope which is not supported by the specification. Patentability rests solely on the limitations found within the claims themselves and not the overall invention as discussed within the specification and drawings. Examiner recommends reviewing the claims found in Hozumi et al (U.S Patent No. 8,276,685) for how to appropriately structure the claims. Examiner also cautions applicant on the introduction of New Matter as outlined above.
Additionally, regarding claims 2 and 4 each recite “the handle” which lack antecedent basis in the claims.
Claim Rejections - 35 USC § 102
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 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jackson (U.S Patent No. 6,038,946).
Regarding claims 1 and 3, Jackson teaches (Figures 1 and 2) a square drive (10) that is capable of extending (Col. 5, line 57 - Col. 6, line 49). The device is capable of being powered (via 16 or any other tool electronic or hand operated tool driver with the appropriate connection).
Claims 2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bone (U.S Publication No. 20030095842) or Wagner (U.S Patent No. 4,170,909).
Regarding claims 2 and 4, Bone teaches (Figures 2, 4, and 10-12) a driver that has the ability to bend 90 degrees (Figures 2 and 12). The rotation locking mechanism are described in paragraphs 62 and 63) of the specification. Applicant should note that examiner understands the Bone does not show a square opening or connection, however examiner is interpreting the term “square drive” to broadly mean a type of connection used to connect a tool to a driver.
Regarding claims 2 and 4, Wagner teaches (Figure 1) a device similar to that of Bone that is capable of rotating 90 degrees. Wagner further specifically states (Col. 10, lines 15-32) the drive may be square.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Weaver (U.S Patent No. 11,602,827), Gomez (U.S Publication No. 20220152794), Huang (U.S Publication No. 20190061136), and Chang (U.S Publication No. 20050166718) teach it is known to for a tool to be both extendable and pivotable.
Su et al. (U.S Patent No. 6,817,424), Izumisawa (U.S Patent No. 6,311,583), Covell et al. (U.S Patent No. 6,144,122), Chang (U.S Patent No. 4,912,349), and Hung et al. (U.S Patent No. 6,364,033) teach placing a spring biased button on the handle to allow for pivotal movement between the handle and drive.
Mathews (U.S Patent No. 4,960,015), Newby et al. (U.S Patent No. 4,376,397), Lyon (U.S Patent No. 3,306,639), Clothier (U.S Patent No. 2,963,930), and Colace (U.S Patent No. 4,905,548) teach extendable torque bar attachments for driving tools.
Note: Applicant is encouraged to review all references cited within this Office action and give examiner a call (phone number below) with any questions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD F LANDRUM whose telephone number is (571)272-5567. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marivelisse Santiago-Cordero can be reached at 571-272-7839. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761
