DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
2. The use of the term “Allen key”, which is a trade name 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.
Claim Objections
3. Claims 1, 4, 7, and 8 are objected to because of the following informalities:
· Claim 1: “a thread (11)” should be amended to read “a thread (111)” in line 2.
· Claim 4: “comprises annular groove (331)” should be amended to read “comprises an annular groove (331)” for grammatical clarity in line 2.
· Claim 7: “a thread (11)” should be amended to read “a thread (111)” in line 2.
· Claim 8: “The A skewer-wrench” should be amended to read “The skewer-wrench” in line 1.
Appropriate correction are required.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 1-8 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.
· The term “easily” in claims 1 and 7 is a relative term which renders the claim indefinite. The term “easily” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicant is suggested to replace the phrase “so that the former is easily insertable in the later” with -- so that the non-circular rod (34) is insertable in the non-circular bore (121) -- to overcome the 112(b) rejection.
· Claims 1, 2, 4, and 7 contain the trademark/trade name “Allen key”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a hex key and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 102
6. 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.
7. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
8. Claims 1, 2, 3, 5, and 6 are rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Nakajima et al (US9751362B2; hereinafter “Nakajima”).
Regarding claim 1, Nakajima discloses a skewer-wrench combination comprising: a skewer 20 comprising a thread 24 at an end (Refer to the end in the below annotated Fig. 5), a non-circular bore in an opposite end (Refer to the non-circular bore and opposing end in the below annotated Fig. 5), and a groove 22c in a wall (Figs. 5 and 9) of the non-circular bore; a compensator 70 (Figs. 5 and 9) fitted in the groove; and an Allen key (Fig. 9; “The socket 60 includes a socket opening 68, which is in communication with the center hole 51 of the housing 50. The socket opening 68 functions as an engagement portion that engages a rotation tool, such as, an Allen key” per Col. 4, lines 60-62; Examiner reads the combination of the Allen key described in Col. 4, lines 60-62, housing 50 and socket 60 as the claimed Allen key) comprising a non-circular rod 62 (Figs. 5, 8, and 9) compliant with the non-circular bore (Fig. 9), wherein the non-circular rod 62 is smaller than the non-circular bore (Fig. 9) so that the former is easily insertable in the later, wherein the non-circular rod 62 is in tight contact with the compensator 70 as the non-circular rod is inserted in the non-circular bore (Fig. 9).
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Examiner’s annotated Fig. 5 of Nakajima
Regarding claim 2, Nakajima discloses the skewer 20 further comprises a head (Refer to the head in the below annotated Fig. 9), wherein the non-circular bore is in the head (Refer to the non-circular bore in the above annotated Fig. 5 and below annotated Fig. 9), wherein the Allen Key (Refer to the Allen Key as discussed above with respect to claim 1) further comprises a cap (50 “housing”; Fig. 9) for receiving the head.
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Examiner’s annotated Fig. 9 of Nakajima
Regarding claim 3, Nakajima discloses the non-circular rod 62 extending from a center of an internal face of the cap 50 (Refer to the center of an internal face of the cap in the above annotated Fig. 9).
Regarding claim 5, Nakajima discloses the Skewer-wrench combination further comprising a washer 30 around the skewer 20 (Fig. 9).
Regarding claim 6, Nakajima discloses the washer 30 comprises an anti-skid face (34 “non-smooth surface”; Fig. 6).
Claim Rejections - 35 USC § 103
9. 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.
10. 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.
11. 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.
12. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nakajima in view of Klieber (EP2591991A2), as applied to claims 1-3, 5, and 6 above.
Regarding claim 4, Nakajima fails to disclose the Allen key further comprises annular groove (331) for receiving an O-ring.
Klieber, however, teaches an O-ring 80 retention arrangement for releasably retaining a removable tool 60 having Allen-key tips 96 in a bicycle wheel axle assembly, wherein the O-ring 80 is disposed within a groove to retain the tool and provide sealing (Figs. 4, 10, and 11; Para [0062] from the attached English translated document of Klieber).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, and with a reasonable expectation of success, to have modified the Allen key of Nakajima by including an annular groove for receiving an O-ring, as taught by Klieber, as a known retention arrangement for removably retaining the Allen key within the skewer assembly and providing sealing against contamination.
Allowable Subject Matter
13. Claims 7-8 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references discloses bicycle wheel retention assemblies utilizing a U-shaped springs and O-ring.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAEKWON (TAE) CHOI whose telephone number is (571) 272-5805. The examiner can normally be reached on M-F from 9 am to 5 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel (Joe) Morano, can be reached at telephone number (571) 272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAEKWON CHOI/Examiner, Art Unit 3615
/Kip T Kotter/Primary Examiner, Art Unit 3615
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