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 .
Examiner’s Comments
This office action is in response to the application filed on 1/14/2025.
Claims 1-18 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/14/2025 and
5/20/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
The specification needs to be updated to include US12,246,418
Appropriate correction is required.
Claim Interpretation
5. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims (1, 7 and 14) in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
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.
7. Claim(s) 1-3, 6-8, 11-16 and 18 are rejected under 35 U.S.C. 102(a1) as
being anticipated by Junkers et al. (US 9308632) hereinafter (Junker).
With regard to claim 1, Junker discloses a torque wrench (100) operable to exert a torque on a workpiece, the torque wrench comprising: a housing (101); a drive element (110, 111) for engaging the workpiece; a drive actuator (107, 106) for transmitting a torque to the drive element (110, 111); and a gauge (col.13, line 59) configured to detect a bending strain (The twisting and fastener-bending forces are limited and least destructive when turning force 191, the reaction force, is transferred perpendicular to turning force axis B.sub.1 in plane 140. Col.6, lines 34-39) indicative of a torque exerted by the drive element (110, 111) to the workpiece.
With regard to claim 2, Junker discloses the torque wrench (100), further comprising a control system (737) configured to calculate (with torque regulation system 759 col.13, lines 3-4) the torque based on the bending strain.
With regard to claim 3, Junker discloses the torque wrench (100), wherein the drive actuator (107, 106) includes a lever arm for rotating the drive element (110, 111), and wherein the bending strain is a bending strain of the lever arm (108).
With regard to claim 6, Junker discloses the torque wrench (100), further comprising a sensor (144, 744 measuring torque and capable of sensing rotation) configured to detect and communicate rotation of the drive element (110, 111) and to a control system (737).
With regard to claim 7, Junker discloses a torque wrench (100) operable to exert a torque on a workpiece (131), the torque wrench comprising: a housing (101); a drive element (110, 111) for engaging the workpiece (131); a drive actuator (107, 106) for transmitting a torque to the drive element (110, 111); and a gauge (col.13, line 59) configured to detect a reaction force exerted on a reaction member of the housing (101) indicative of a torque exerted by the drive element (110, 111) to the workpiece (131).
With regard to claim 8, Junker discloses a torque wrench (100), wherein the gauge includes a strain gauge (col.13, line 59).
With regard to claim 11, Junker discloses a torque wrench (100), further comprising a control system (737) configured to calculate (with torque regulation system 759 col.13, lines 3-4) the torque based on the reaction force.
With regard to claim 12, Junker discloses the torque wrench (100), further comprising a sensor (144, 744 measuring torque and capable of sensing rotation) configured to detect rotation of the drive element (110,111).
With regard to claim 13, Junker discloses the torque wrench (100), further comprising a sensor (144, 744 measuring torque and capable of sensing rotation) configured to detect and communicate rotation of the drive element (110,111) and to a control system (737).
With regard to claim 14, Junker discloses the torque wrench (100), operable to exert a torque on a workpiece (131), the torque wrench comprising: a housing (101); a drive element (110, 111) for engaging the workpiece (131); a drive actuator (107, 106) for transmitting a torque to the drive element (110, 111); a gauge (strain gauge col.13, line 59) coupled (“coupled” has been interpreted as not direct) to at least one of the housing and the drive actuator, the gauge (strain gauge col.13, line 59) being configured to detect a characteristic indicative of a torque exerted by the drive element (110, 111) to the workpiece (131); and a sensor (144, 744 measuring torque and capable of sensing rotation) supported by the housing and configured to detect rotation of the drive element (110, 111).
With regard to claim 15, Junker discloses the torque wrench (100), wherein the sensor (144, 744 are ferromagnets) is configured to detect a position of a magnet driven to rotate due to rotation of the drive element (110, 111).
With regard to claim 16, Junker discloses the torque wrench (100), further comprising a rotating member (110) driven to rotate by rotation of the drive element (111), the sensor (144, 744 measuring torque and capable of sensing rotation) being configured to detect rotation of the rotating member (110) to thereby detect rotation of the drive element (111).
With regard to claim 18, Junker discloses the torque wrench (100), wherein the sensor (144, 744 measuring torque and capable of sensing rotation) is configured to communicate the rotation of the drive element (110,111) to a control system (737).
Double Patenting
8. 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).
9. 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.
10. Claims 1-3, 5-7, 10 and 14 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-2, 4-6 and 9 of U.S. Patent No. 12,246,418. Although the claims at issue are not identical, they are not patentably distinct from each other because a person having ordinary skill in the art would have found the claims of the instant application to have been obvious variations of the claims of the patent. The claims of the patent and the claims of the present application are both directed to a torque wrench including a housing, a drive element, a drive actuator and gauge configured to detect a bending strain.
While the claims of the present application and the claims of the patent may have variations and differences in their scope and terminology, the variations and differences would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention.
Patented claims 1-2, 4-6 and 9 disclose all of the structure defined in application claims 1-3, 5-7, 10 and 14. Therefore, patented claims 1-2, 4-6 and 9 are in essence a “species” of the generic invention of application claims 1-3, 5-7, 10 and 14. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claims 1-3, 5-7, 10 and 14 are anticipated by patented claims 1-2, 4-6 and 9, application claims 1-3, 5-7, 10 and 14 are not patentably distinct from patented claims 1-2, 4-6 and 9.
The application claims and patented claims match-up as follows:
Application Claims Patent Claims US 12,246,418
1, 3, 7, 14 1, 5, 6
2 2
5 4
6 9
10 6
Allowable Subject Matter
11. Claims 4, 9 and 17 are objected to as being dependent upon a rejected
base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claim 4, Junker discloses the torque wrench, but fails to disclose or teach in combination, wherein the gauge includes a first gauge coupled to the lever arm and further comprising a second gauge coupled to the lever arm and configured to detect the bending strain.
With regard to claim 9, Junker discloses the torque wrench, but fails to disclose or teach in combination, wherein the gauge includes a first gauge, and further comprising a second gauge configured to detect the reaction force exerted on a reaction member of the housing.
With regard to claim 17, Junker discloses the torque wrench, but fails to disclose or teach in combination, wherein the drive element includes a sprocket having sprocket teeth, and wherein the rotating member includes a gear having gear teeth engaging the sprocket teeth.
Conclusion
12. Refer to attachment for notice of references cited and recommended for
consideration based on their disclosure of limitations of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANIEL C. CHUKWURAH whose telephone number is (571)272-4457. The examiner can normally be reached M-F & T-F 7-4:30 IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at 571-260-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHANIEL C CHUKWURAH/Primary Examiner, Art Unit 3731
11/14/2025