DETAILED ACTION1
REJECTIONS UNDER 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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.
Claim 5 is rejected under 35 U.S.C. 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 5 recites the engaging portion. Parent claim 1 does not introduce an engaging portion. Thus, this constitutes improper antecedent basis. As best understood claim 5 is referring back to the engaging section. Claim 5 has been examined accordingly.
REJECTIONS UNDER 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 obvious2 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant Admitted Prior Art (AAPA) in view of WO 2008/115491 to Carroll.
Claim 1 recites a tool holder device. AAPA relates to such a device. See Specification [0002]-[0006] and Figs. 7-8. AAPA teaches a tool holder assembly having a…tool holder (82) configured to receive a cutter holder (90) and having an engaging section (83). AAPA further teaches a positioning unit (81) detachably assembled to the tool holder assembly as shown by the bolts holding the unit onto the magazine (70). AAPA also teaches an auxiliary wrench having an engaging recessed-portion able to engage with the engaging section (82) in the form of the lower wrench in figure 8.
AAPA does not teach three features of claim 1. First, AAPA does not teach that the positioning unit [has]… at least one restricting protrusion…disposed at a surface of [a] board of the unit. (Figure 8 of the specification does show the positioning unit (81) has a distinct top surface structure, but no protrusion[s]). Second, AAPA does not teach the wrench has restricting recessed-portion[s] able to engage with each one of the…protrusion[s]. Third, AAPA does not teach the opening[s] of these restricting recessed portions faces the same direction as the main engaging recess. These features, however, would have been obvious in view of Carroll.
Carroll relates to changing a tool bit from a power tool using a pair of wrenches. See Carroll [0004]. Thus, Carroll is analogous art to AAPA. Carroll teaches a first wrench is used to prevent rotation of the tool spindle, while a second wrench is used to twist the item being removed. Id. This is the same type of two-wrench operation shown in AAPA. Carroll teaches a first wrench designed to be held in place by the environment, rather than a user’s hand for the advantage of freeing up the second hand of the user. See Carroll [0010]-[0011] and Fig. 4. Carroll specifically teaches having the first wrench rest against two points of contact of a surface to prevent rotation. See Carroll [0010]. It is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). In this case, it would have been obvious to modify AAPA with a no-hands wrench designed to impinge on two points of contact on a surface to obtain the benefit of freeing the second hand of the user.
The only remaining question is whether such a modification would naturally result in protrusions on the board surface, corresponding recessed-portions and a common opening direction. Engineering logic dictates they would. Figure 8 of Applicant’s specification shows the lower first wrench needs to be prevented from rotating along the axis of the tool bit (100). Thus, one of ordinary skill would have known as an engineering principle that the wrench would need to impinge on two structures extending up in this same axis. Thus, these impinging structures would need to protrude from somewhere on the tool or surface. One of ordinary skill would further know that these impinging structures could not be placed in the entry path of the wrench. Thus, the logical placement of such protrusions would be laterally offset or slightly behind the wrench engagement region. In other words, on the surface of the board. One potential solution would be to place two impinging structures on either side of the existing wrench crescent. But one of ordinary skill would also know that the farther away from the point of rotation the points of impingement were located the more effective they would be (for the same reason wrenches have extended handles). Thus, it would have been obvious as a matter of common sense to place two protrusions on the board surface, offset from the engaging section (82, 83). Such an offset would require the wrench to have two engagement regions for the protrusions, hence the recessed-portions would also be obvious as a matter of common sense. Finally, since the wrench needs to be slid horizontally into position with the wrench crescent open to the engaging area the openings to engage with the protrusions would likewise need to face the same direction as a matter of engineering principle. Put another way, a person of ordinary skill having read Carroll and recognizing the benefit of a no-hands lower wrench would logically create applicant’s claimed device working from first principles with little difficulty or effort.
Claim 2 recites the positioning unit has at least one positioning protrusion. For purposes of this rejection, the non-flat regions around the periphery of the positioning unit are deemed to be positioning protrusions. These protrusions are directly adjacent to and at the same level as the board in figures 7-8 of the specification. As such, they are disposed at the same surface of the board. This protruding surface is curved and has the same curvature as the bottom region of the crescent of the lower wrench. As such, the auxiliary wrench has a positioning recessed-portion formed at the bottom face of the engaging recessed-portion and able to engage with each one of the at least one positioning protrusion. Regarding claim 3, the curvature also teaches that the positioning protrusion has an abutted face being curved and facing to a periphery of the board because the outer surface (i.e. abutted portion) of the protrusion is the curved region. Figure 8 further shows that the positioning recessed-portion has a positioning abutting-face being curved, corresponding to the abutted face being curved in shape, and able to abut against the abutted face of each one of the at least one positioning protrusion under this interpretation. Regarding claim 4, Carroll teaches the need for two positioning protrusions.
Claim 5 recites the engaging [section] has multiple pairs of engaging faces. Figures 7-8 of the specification show such flat engaging faces that the sides of the lower wrench engage with. These faces are also parallel to each other and facing to opposite directions. Claim 5 then recites the engaging recessed-portion has two engaging abutting-faces opposite to each other and able to respectively abut against the two engaging faces of each one of the multiple pairs of engaging faces. These are the sides of the wrench crescent that engage those flat faces as shown in figures 7-8 of AAPA. Claims 6-8 recite the same features as claim 5 and are all rejected for the same reasons.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”
