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 .
Claim Rejections - 35 USC § 102
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.
Claims 1, 3, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Riley (U.S. Patent 5,491,898).
Claim 1: Riley discloses a tool (10) comprising: a shaft (24/36) comprising a recess axially extending from a forward end (40) of the shaft (see Fig. 4; column 4, lines 24-26 and 52-53) and a reduced diameter section adjacent a distal end of the shaft (see stepped portion at 28/38 in Fig. 4); a tip insert (12) disposed within the recess of the shaft; and a shield (46) disposed circumferentially about the reduced diameter section adjacent the distal end of the shaft (Fig. 4; column 4, lines 30-31).
It is noted that to the extent the reduced diameter section as claimed is adjacent a distal end of the shaft, and the shield as claimed is disposed about the reduced diameter section, then the shield is by extension also generally adjacent the distal end of the shaft. Additionally, claim 5 (addressed below) implies an unspecified distance between the distal end of the shaft and the shield such that the shield being “adjacent the distal end of the shaft” does not necessarily mean it is directly adjacent and could accommodate some distance therebetween.
Alternatively, the limitation ”the reduced diameter section adjacent the distal end of the shaft” in lines 5-6 could be read as referring to the “reduced diameter section adjacent a distal end of the shaft” of line 3 as a whole rather than limiting the shield to also being adjacent the distal end of the shaft.
Claim 3: Riley further discloses a laterally extending flange (stepped transition between 28 and 38) adjacent the reduced diameter section of the shaft, a forward (right side in Fig. 4) surface of the shield disposed adjacent the laterally extending flange (Id.).
Claim 5: The distal (left) end (26) of the shaft extends past a distal end of the shield (Fig. 4).
Claims 1, 3, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sollami (U.S. PGPub 2012/0013168).
Claim 1: Sollami discloses a tool (e.g. Fig. 9) comprising: a shaft (90/94) comprising a recess axially extending from a forward end (top end in Fig. 9) of the shaft and a reduced diameter section (transition between 90 and 94) adjacent a distal end (lower end) of the shaft; a tip insert (unlabeled but similar to 24 in Fig. 1) disposed within the recess of the shaft; and a shield (98) disposed circumferentially about the reduced diameter section adjacent the distal end of the shaft.
The interpretations of “adjacent the distal end of the shaft” discussed for Riley above apply similarly here.
Claim 3: Sollami further discloses a laterally extending flange (at the transition between 90 and 94) adjacent the reduced diameter section of the shaft, a forward (upper) surface of the shield disposed adjacent the laterally extending flange (Fig. 9).
Claim 5: The distal end of the shaft (lower end of 94) extends past a distal end of the shield (Fig. 9).
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.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Riley in view of Mc Cabe (U.S. Patent 6,769,182).
Claim 2: Riley further discloses a grip sleeve (32) disposed circumferentially around the shaft, but not adjacent a forward end of the shield. However, Mc Cabe teaches a similar tool where, in addition to a rearward grip (42), a second grip (38) may be disposed circumferentially around the shaft (12) adjacent a forward end (bottom side in Fig. 2) of a shield (18). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a grip sleeve disposed circumferentially around the shaft adjacent a forward end of the shield of Riley as taught by Mc Cabe in order to have provided the user with the option of a two-handed grip or an alternative grip option if desired, depending on the situation, noting that the addition of such a grip would not take away any existing function of the Riley tool.
Claim 4: Riley further discloses a laterally extending flange (stepped transition between 28 and 38) adjacent the reduced diameter section of the shaft. In view of a secondary foregrip as taught by Mc Cabe above, a forward surface of the shield would be disposed adjacent a distal end of the grip sleeve (e.g. as shown in Mc Cabe, Fig. 2).
Response to Arguments
Applicant's arguments filed 6/22/2026 have been fully considered but they are not persuasive. Applicant relies on the amendment to claim 1 to overcome the prior art of record, specifically “a shield disposed circumferentially about the reduced diameter section adjacent the distal end of the shaft”. However, discussion of how this limitation may be interpreted are discussed in the rejection above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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/Matthew P Travers/ Primary Examiner, Art Unit 3726
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