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 .
Double Patenting
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).
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,269,707. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims 1-20 of the instant application appears to be fully encompassed by, and thus anticipated by, claims 1-20 of US 12,269,707. US 12,269,707 further limits the described components and their arrangement, which are common to both the instant application and patented reference claims, for a state “when the winch adapter is coupled to the winch,” (US 12,269,707, Claims 1, 8, 16), further defines the portion of the winch as being “provided as an annular end,” (US 12,269,707, Claims 2, 9, 17), and further defines the drive connector as “having a central volume defined by a channel extending through at least a portion of the drive connector,” (US 12,269,707, Claim 14). However, the instant application does not appear to include any features which are not anticipated by US 12,269,707.
Claim Objections
Claims 15-20 are objected to because of the following informalities:
Examiner suggests the preamble reciting “the winch adapter” in claims 15-20 should read --the adapter-- for consistency with its reference to “the adapter” in claim 14.
Appropriate correction is required.
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 1-13 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 Claim 1, “a portion of the winch” is recited twice and it is unclear if the second recitation (Claim 1, Ln. 9) is referring to the same portion of the winch as the first recitation (Claim 1, Ln. 4) or if a different portion of the winch is being referred to. For examination purposes, both recitations are assumed to refer to the same portion of the winch. If this interpretation is correct, Examiner suggests the second recitation of “a portion of the winch” (Claim 1, Ln. 9) should read --the portion of the winch--
Claims 2-7 are rejected due to their dependency on claim 1.
Regarding Claim 8, “a portion of the winch” is recited twice and it is unclear if the second recitation (Claim 8, Ln. 11) is referring to the same portion of the winch as the first recitation (Claim 8, Ln. 4) or if a different portion of the winch is being referred to. For examination purposes, both recitations are assumed to refer to the same portion of the winch. If this interpretation is correct, Examiner suggests the second recitation of “a portion of the winch” (Claim 8, Ln. 11) should read --the portion of the winch--
Claims 9-13 are rejected due to their dependency on claim 8.
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.
(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.
Claims 1-2 and 5 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Warboys (US 9,156,652).
Regarding Claim 1, Warboys, Figures 1-5, teaches a winch adapter 2 having an axis of rotation and configured to couple with a winch 44 and to rotate the winch 44 along the axis of rotation when a torque is applied to the winch adapter 2 (See Warboys, Col. 2, Ln. 52-58), the winch adapter 2 comprising:
a body 4 sized to at least partially surround a portion 42 of the winch 44;
a drive connector 6 at least partially surrounded by the body 4 and having an external profile (portion of secondary casing 6 sticking out from primary casing 4; See Warboys, Fig. 1-2, 5) at least partially external to the body 4 and configured to receive a torque (See Warboys, Col. 2, Ln. 52-58); and
an extension member 28 positioned adjacent to the body 4 and movable to be positioned at least partially within the body 4, and wherein at least a portion of the extension member 28 is configured to engage at least a portion 42 of the winch 44 so that the winch 44 may be rotated along the axis of rotation when the torque is applied to the external profile (See Warboys, Col. 2, Ln. 43-50).
Regarding Claim 2, Warboys is advanced above.
Warboys further teaches a handle 20 attached to the extension member 28 for pulling the extension member 28 away from the body 4 to disengage the winch adapter 2 from the portion 42 of the winch 44 (See Warboys, Col. 2, Ln. 43-50).
Regarding Claim 5, Warboys is advanced above.
Warboys further teaches wherein the extension member 28 is secured toward the body 4 (See Warboys, Fig. 1, 3, Col. 2, Ln. 29-32).
Claims 1, 6, 8, 12-16, and 19-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Williams (US 9,616,801).
Regarding Claim 1, Williams, Figures 1-6, teaches a winch adapter 50 having an axis of rotation and configured to couple with a winch 10 and to rotate the winch 10 along the axis of rotation when a torque is applied to the winch adapter 50 (See Williams, Col. 8, Ln. 20-47), the winch adapter 50 comprising:
a body 52 sized to at least partially surround a portion 24 of the winch 10 (flange 70 of spindle 52 surrounds collar 24; See Williams, Fig. 1);
a drive connector 54 at least partially surrounded by the body 52 and having an external profile 58 at least partially external to the body 52 and configured to receive a torque (See Williams, Fig. 3-4, Col. 8, Ln. 20-47); and
an extension member 56 positioned adjacent to the body 52 and movable to be positioned at least partially within the body 52 (See Williams, Fig. 5-6, Col. 6, Ln. 28-31), and wherein at least a portion of the extension member 56 is configured to engage at least a portion 24 of the winch 10 so that the winch 10 may be rotated along the axis of rotation when the torque is applied to the external profile 58 (See Williams, Col. 8, Ln. 31-37).
Regarding Claim 6, Williams is advanced above.
Williams further teaches wherein the external profile 58 of the drive connector 54 is a first piece 74, and the portion of the drive connector 54 configured to be at least partially surrounded by the body 52 is a second piece 72 configured to be insertable into the portion 24 of the winch 10 (See Williams, Fig. 1-4, Col. 5, Ln. 43-51).
Regarding Claim 8, Williams, Figures 1-6, teaches a winch adapter 50 having an axis of rotation and configured to couple with a winch 10 and to rotate the winch 10 along the axis of rotation when a torque is applied to the winch adapter 50 (See Williams, Col. 8, Ln. 20-47), the winch adapter 50 comprising:
a body 52 sized to at least partially surround a portion 24 of the winch 10 (flange 70 of spindle 52 surrounds collar 24; See Williams, Fig. 1);
a drive connector 54 having an external profile 58 at least partially external to the body 52 and configured to receive a torque (See Williams, Fig. 3-4, Col. 8, Ln. 20-47);
an internal portion 68 at least partially surrounded by the body 52, the internal portion 68 extending opposite the external profile 58 (See Williams, Fig. 3-4, Col. 5, Ln. 40-51); and
an extension member 56 positioned adjacent to the body 52 and movable to be positioned at least partially within the body 52 (See Williams, Fig. 3-6, Col. 6, Ln. 28-31), and wherein at least a portion of the extension member 56 is configured to engage at least a portion 24 of the winch 10 so that the winch 10 may be rotated along the axis of rotation when the torque is applied to the external profile 58 (See Williams, Col. 8, Ln. 31-37).
Regarding Claim 12, Williams is advanced above.
Williams further teaches wherein the extension member 56 is secured toward the body 52 (See Williams, Fig. 3-4, Col. 8, Ln. 34-42).
Regarding Claim 13, Williams is advanced above.
Williams teaches where the extension member 56 is movable to be positioned at least partially within the internal portion 68 (See Williams, Fig. 3-4, Col. 8, Ln. 20-47).
Regarding Claim 14, Williams, Figures 1-6, teaches an adapter 50 having an axis of rotation for coaxially coupling with a winch 10 and configured to rotate the winch 10 along the axis of rotation when a torque is received at the adapter 50 (See Williams, Col. 8, Ln. 20-47), the adapter 50 comprising:
a body 52 sized to at least partially surround a portion 24 of the winch 10 (flange 70 of spindle 52 surrounds collar 24; See Williams, Fig. 1);
a drive connector 54 at least partially external to the body 52, the drive connector 54 having an external profile 58 to receive the torque (See Williams, Fig. 3-4, Col. 8, Ln. 20-47); and
a coupling mechanism (subassembly of lift nub 90 on inner cylinder 54, engagement bolt 56, and lift groove 92 on engagement bolt 56; See Williams, Col. 6, Ln. 42-67) configured to couple the drive connector 54 to the portion 24 of the winch 10 such that the portion 24 of the winch 10 rotates in response to the external profile 58 receiving the torque (See Williams, Col. 8, Ln. 31-44).
Regarding Claim 15, Williams is advanced above.
Williams further teaches wherein the coupling mechanism (subassembly of lift nub 90 on inner cylinder 54, engagement bolt 56, and lift groove 92 on engagement bolt 56; See Williams, Col. 6, Ln. 42-67) comprises an extension member 56 mounted adjacent the body 52 and movable to be positioned at least partially within the body 52 (See Williams, Fig. 3-6, Col. 6, Ln. 28-31).
Regarding Claim 16, Williams is advanced above.
Williams further teaches wherein when the torque is applied to the external profile 58, the portion 24 of the winch 10 and the drive connector 54 configured to rotate at different rates (before engagement bolt 56 is fully engaged, inner 54 rotates at a different rate than collar 24 of winch 10; See Williams, Col. 8, Ln. 29-42).
Regarding Claim 19, Williams is advanced above.
Williams further teaches an internal portion 68 extending opposite the external profile 58 (See Williams, Fig. 3-4, Col. 5, Ln. 40-51), the internal portion 68 configured to be at least partially surrounded by the body 52 and insertable into the portion 24 of the winch 10 (See Williams, Fig. 3-4, Col. 8, Ln. 20-47).
Regarding Claim 20, Williams is advanced above.
Williams further teaches where the extension member 56 is movable to be positioned at least partially within the internal portion 68 (See Williams, Fig. 3-4, Col. 8, Ln. 20-47).
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, 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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Warboys (US 9,156,652), as applied to claims 1-2 and 5 above, and further as evidenced by Reynolds (US 9,114,965) and Reilly (US 6,705,597)
Regarding Claim 3, Warboys is advanced above.
Warboys further teaches wherein the external profile (portion of secondary casing 6 sticking out from primary casing 4; See Warboys, Fig. 1-2, 5) comprises a drill socket 58 operable to receive a drill socket driver 56 coupled to a power drill 54 for powered winding of the winch 44 when the winch adaptor 2 is coupled to the winch 44 (See Warboys, Col. 2, Ln. 52-58).
Although Warboys does not explicitly teach the drill socket and the drill socket driver as being hex shaped and instead discloses a square drive socket and square shaped mating driver, alternate shapes can be used for mating rotary tools with tool adapters provided that the torque required can be sustained, as evidenced by Reynolds (See Reynolds, Col. 2, Ln. 32-34) and Reilly (See Reilly, Col. 2, Ln. 29-43) and the selection of a hexagonal shape is an obvious matter of design choice.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Warboys with the external profile comprising a hex drill socket operable to receive a hex drill socket driver coupled to a power drill for the purpose of coupling the drill socket with the drill driver and allowing torque transfer from the power drill to the winch adapter (See Warboys, Col. 2, Ln. 52-58).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Warboys (US 9,156,652), as applied to claims 1-2 and 5 above, and further in view of Reynolds (US 9,114,965).
Regarding Claim 4, Warboys is advanced above.
Warboys teaches all the elements of the winch adapter except for wherein the external profile is coupleable to a socket wrench for winding the winch, wherein the socket wrench is not directly coupleable to the winch.
However, Reynolds, Figures 1-5, teaches wherein the external profile 104 is coupleable to a socket wrench for winding the winch, wherein the socket wrench is not directly coupleable to the winch (“the socket portion 104 may also comprise an outer portion in the shape of a hexagon, or similar, to allow for easy use with other hand-actuated tools”; See Reynolds, Col. 2, Ln. 26-28).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Warboys with an external profile couplable to a socket wrench, as taught by Reynolds, for the purpose of increasing ease of use with other hand tools (See Reynolds, Col. 2, Ln. 26-28).
Claims 10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Williams (US 9,616,801), as applied to claims 1, 6, 8, 12-16, and 19-20 above, and further in view of Reilly (US 6,705,597).
Regarding Claim 10, Williams is advanced above.
Williams further teaches wherein the external profile 58 is coupled to a power drill 60 for powered winding of the winch 10 when the winch adaptor 50 is coupled to the winch 10 (See Williams, Fig. 1, Col. 8, Ln. 42-47).
Williams teaches all the elements of the winch adapter except for a hex drill socket and a hex drill socket driver.
However, Reilly, Figures 1-5, teaches wherein the external profile 50 comprises a drill socket 54 operable to receive a drill socket driver 106 coupled to a power drill 12 for powered winding of the winch 14 when the winch adaptor 10 is coupled to the winch 14 (See Reilly, Col. 5, Ln. 17-37).
Although the embodiment in Reilly (See Reilly, Fig. 4C-4D) does not show the drill socket and the drill socket driver as being hex shaped and instead illustrates a square drive socket and square shaped mating driver, Reilly discloses “The means for lockably and releasably interengaging may include a driver receptacle formed in the head portion … a complementary shaped driver component (e.g. a square drive) is attached to and driven rotatably by the rotary driven power apparatus. The drive component is inserted into and thereby lockably interengaged with the driver receptacle in the head portion of the winch winding tool. When the power driver is operated, the drive component rotates the head portion and thereby axially rotates the elongate body portion of the adapter tool. This causes the engaged flexible component and spindle to be wound as previously described,” (See Reilly, Col. 2, Ln. 29-43) which implies that alternate shapes of sockets and drivers (e.g., hex shaped) can be used for mating the rotary power tool with the tool adapter. Therefore, the selection of a hexagonal shape is an obvious matter of design choice.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Williams and Reilly to provide the external profile with a hex drill socket operable to receive a hex drill socket driver coupled to a power drill for the purpose of coupling the drill socket with the drill driver and allowing torque transfer from the power drill to the winch adapter (See Reilly, Col. 7, Ln. 23-30).
Regarding Claim 18, Williams is advanced above.
Williams further teaches wherein the external profile 58 of the drive connecter 54 is configured to couple with a power drill 60 to provide the torque (See Williams, Fig. 1, Col. 8, Ln. 42-47).
Williams teaches all the elements of the winch adapter except for a hex drill socket assembly.
However, Reilly, Figure 7, teaches wherein the external profile 99b of the drive connecter 50b is configured to couple with a rotary power tool 12b through a hex drill socket assembly (distal universal joint component 109b and hex socket 113b; See Reilly, Col. 6, Ln. 51-57) to provide the torque.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Williams and Reilly to configure the external profile to couple with a power drill through a hex drill socket assembly for the purpose of coupling the drive connector with the power drill and allowing torque transfer from the power drill to the winch adapter (See Reilly, Col. 7, Ln. 23-30).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Williams (US 9,616,801), as applied to claims 1, 6, 8, 12-16, and 19-20 above, and further in view of Reynolds (US 9,114,965).
Regarding Claim 11, Williams is advanced above.
Williams teaches all the elements of the winch adapter except for wherein the external profile is coupleable to a socket wrench for winding the winch, wherein the socket wrench is not directly coupleable to the winch.
However, Reynolds, Figures 1-5, teaches wherein the external profile 104 is coupleable to a socket wrench for winding the winch, wherein the socket wrench is not directly coupleable to the winch (“the socket portion 104 may also comprise an outer portion in the shape of a hexagon, or similar, to allow for easy use with other hand-actuated tools”; See Reynolds, Col. 2, Ln. 26-28).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Williams with an external profile couplable to a socket wrench, as taught by Reynolds, for the purpose of increasing ease of use with other hand tools (See Reynolds, Col. 2, Ln. 26-28).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIFFANY DOMONIQUE JEFFERSON whose telephone number is 571-272-0403. The examiner can normally be reached Monday-Friday 10:30am-7:30pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Victoria Augustine can be reached at 313-446-4858. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.D.J./Examiner, Art Unit 3654
/Victoria P Augustine/Supervisory Patent Examiner, Art Unit 3654
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