Detailed Action1
Election/Restriction
Applicant's election without traverse of Group I (figures 3-6) in the reply filed on July 21, 2026 is acknowledged.
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
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.
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 22-24 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 applicant regards as the invention.
Claim 22 recites the member. There is insufficient antecedent basis for this limitation.
Claims 23 and 24 are rejected for depending from claim 22.
Rejections under 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.
Claim 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by USPGPub No. 2024/0391072 (“Liaw”).
Claim 1 recites a method of using a fuel injector removal assembly (¶ [0001]-[0002]), wherein the assembly comprises a fuel injector removal adapter (32), an elongated shaft (31), and an air hammer (1/2) (fig. 1, ¶ [0014]-[0015]), the method comprising: inserting a fuel injector into the fuel injector removal adapter (¶ [0015]); coupling a first end of the elongated shaft to the fuel injector removal adapter (figs. 1-3, ¶ [0028]); coupling the air hammer to a second end of the elongated shaft (figs. 2-3, ¶ [0023] & [0027], where shaft 22 of the air hammer is connected to the second end of elongated shaft 31); and actuating the air hammer (¶ [0001], wherein one of skill in the art appreciates that the tool is actuated to dismantle the fuel injector).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by TWI595980 (“Huang”).
Claim 1 recites a method of using a fuel injector removal assembly (page 3, wherein all references to the Huang specification refer to the machine translation submitted herewith), wherein the assembly comprises a fuel injector removal adapter (6), an elongated shaft (4), and an air hammer (top of page 1 & first and third paragraphs on page 3), the method comprising: inserting a fuel injector into the fuel injector removal adapter (figs. 3-6, first paragraph on page 3); coupling a first end (41) of the elongated shaft to the fuel injector removal adapter (figs. 1-6, first paragraph on page 3); coupling the air hammer to a second end of the elongated shaft (figs. 1-6, page 3, wherein mast 5 is connected to the second end of shaft 4 via elements 1 & 2); and actuating the air hammer (page 3).
Rejections under 35 USC 1032
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 obvious3 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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Huang as applied to claim 1, above, and further in view of Lock Technology Official, Texas Twister | You Must See This New Bi-Directional Air Hammer!, YouTube, Published October 5, 2018, available at https://www.youtube.com/watch?v=TelxdleVUMs (“NPL”).
Regarding claim 11, Huang fails to explicitly teach the air hammer is a bi-directional air hammer. However, this would have been obvious in view of NPL.
NPL is directed to bi-directional air hammers (page 1, wherein all references to NPL refer to the document submitted herewith). NPL teaches that it is known for air hammers to be bi-directional so that they can push/chisel at one end and pull at the other end (pages 2-6). Thus, to have an air hammer that can perform more tasks, it would be obvious to use a bi-directional air hammer in the method of Huang. Since the bi-directional air hammer can function as a regular/standard air hammer it would be predictable to connect and use a bi-directional air hammer to the mast 5 of Huang to dismantle the fuel injector.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Huang as applied to claim 1 above, and further in view of USPGPub No. 2023/0141758 (“Del Rossa”).
Regarding claim 22, Huang fails to explicitly teach the fuel injector removal adapter comprises: a first face comprising a cut-away portion extending through an edge of the first face; a fuel injector-receiving opening positioned on a side of the member and adjoined with the cut-away portion, wherein the fuel injector-receiving opening has a width that is greater than the width of the cut-away portion to form a ridge, the ridge extending radially inward; a pocket positioned within the member and adjoined with the fuel injector- receiving opening and the cut-away portion; and a second face comprising a threaded aperture, wherein the step of inserting the fuel injector into the fuel injector removal adapter involves inserting the fuel injector into the fuel injector-receiving opening. However, this would have been obvious in view of Del Rossa.
Del Rossa is also directed to removing fuel injectors (¶ [0002]). Del Rossa teaches an adapter to engage the fuel injector wherein a tool can be secured to a threaded hole of the adapter to pull the adapter and fuel injector (¶ [0031]-[0032] & [0034]). The adapter comprises: a first face (104) comprising a cut-away portion (112) extending through an edge of the first face (¶ [0028]-[0029]); a fuel injector-receiving opening (108) positioned on a side of the member and adjoined with the cut-away portion (¶ [0030]), wherein the fuel injector-receiving opening has a width that is greater than the width of the cut-away portion to form a ridge, the ridge extending radially inward (¶ [0030]); a pocket positioned within the member and adjoined with the fuel injector- receiving opening and the cut-away portion (¶ [0031]); and a second face comprising a threaded aperture (¶ [0034]), wherein the step of inserting the fuel injector into the fuel injector removal adapter involves inserting the fuel injector into the fuel injector-receiving opening (fig. 5, ¶ [0030]-[0032]). This structure can prevent damage to the fuel injector during removal (¶ [0002], [0004] & [0031]-[0032]).
In this case, each of Huang and Del Rossa are directed to a device for removing a fuel injector. Del Rossa teaches a known adapter that is configured to couple to the fuel injector and can prevent damage thereto. Further, since the adapters of each of Huang and Del Rossa are configured to attach to a threaded end of a shaft, it would be predictable to substitute the adapter of Del Rossa for the adapter of Huang because the threaded end (41) of the shaft of Huang can threadably engage the threaded aperture on the second face of the adapter of Del Rossa. Thus, to prevent damage to a fuel injector, it would be obvious to substitute the removal adapter of Huang with the removal adapter taught by Del Rossa.
Claim 23 recites the first end of the elongated shaft comprises a threaded portion, and wherein the step of coupling the first end of the elongated shaft to the fuel injector removal adapter involves inserting the threaded portion of the first end into the threaded aperture. This is taught as detailed in the rejection to claim 22, above. Specifically, the threaded end 41 of the shaft 4 of Huang (see figs. 1 & 6 of Huang) threadably engages the threaded aperture on the second face of the removal adapter of Del Rossa.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Liaw as applied to claim 1 above, and further in view of Del Rossa.
Regarding claim 22, Liaw fails to explicitly teach the fuel injector removal adapter comprises: a first face comprising a cut-away portion extending through an edge of the first face; a fuel injector-receiving opening positioned on a side of the member and adjoined with the cut-away portion, wherein the fuel injector-receiving opening has a width that is greater than the width of the cut-away portion to form a ridge, the ridge extending radially inward; a pocket positioned within the member and adjoined with the fuel injector- receiving opening and the cut-away portion; and a second face comprising a threaded aperture, wherein the step of inserting the fuel injector into the fuel injector removal adapter involves inserting the fuel injector into the fuel injector-receiving opening. However, this would have been obvious in view of Del Rossa.
Del Rossa is also directed to removing fuel injectors (¶ [0002]). Del Rossa teaches an adapter to engage the fuel injector wherein a tool can be secured to a threaded hole of the adapter to pull the adapter and fuel injector (¶ [0031]-[0032] & [0034]). The adapter comprises: a first face (104) comprising a cut-away portion (112) extending through an edge of the first face (¶ [0028]-[0029]); a fuel injector-receiving opening (108) positioned on a side of the member and adjoined with the cut-away portion (¶ [0030]), wherein the fuel injector-receiving opening has a width that is greater than the width of the cut-away portion to form a ridge, the ridge extending radially inward (¶ [0030]); a pocket positioned within the member and adjoined with the fuel injector- receiving opening and the cut-away portion (¶ [0031]); and a second face comprising a threaded aperture (¶ [0034]), wherein the step of inserting the fuel injector into the fuel injector removal adapter involves inserting the fuel injector into the fuel injector-receiving opening (fig. 5, ¶ [0030]-[0032]). This structure can prevent damage to the fuel injector during removal (¶ [0002], [0004] & [0031]-[0032]).
In this case, each of Liaw and Del Rossa are directed to a device for removing a fuel injector. Del Rossa teaches a known adapter that is configured to couple to the fuel injector and can prevent damage thereto. Further, since the adapters of each of Liaw and Del Rossa are configured to attach to a threaded end of a shaft, it would be predictable to substitute the removal adapter of Del Rossa for the removal adapter of Liaw because the threaded end of the shaft of Liaw can threadably engage the threaded aperture on the second face of the adapter of Del Rossa. Thus, to prevent damage to a fuel injector, it would be obvious to substitute the removal adapter of Liaw with the removal adapter taught by Del Rossa.
Claim 23 recites the first end of the elongated shaft comprises a threaded portion, and wherein the step of coupling the first end of the elongated shaft to the fuel injector removal adapter involves inserting the threaded portion of the first end into the threaded aperture. This is taught as detailed in the rejection to claim 22, above. Specifically, the threaded end of the shaft of Liaw (see fig. 2 of Liaw) threadably engages the threaded aperture on the second face of the removal adapter of Del Rossa.
Claims 21 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Liaw as applied to claims 1 and 23, respectively, and further in view of USPGPub No. 2022/0134518 (“the ‘518 reference”).
Regarding claim 21, Liaw fails to explicitly teach the assembly further comprises a thread adapter configured to facilitate the step of coupling the first end of the elongated shaft to the fuel injector removal adapter. The examiner is taking Official Notice that adapters are well known in the art of power tools in order to connect a bit/accessory to a tool that has a different type or size of connection. For example, the ‘518 reference teaches an adapter 102 to connect bit 106 to connection/drive 120 of tool 104 (fig. 1, ¶ [0033]). The connection/drive 120 of the tool can be any suitable locking mechanism and engages a complementary connection 118 in first end 114 of the adapter, and the connection 108 of the bit 106 is different than the connection 120 and is configured to engage a complementary connection 122 in second end 116 of the adapter (fig. 1, ¶ [0035]-[0036]). The engagement/locking between connections 120 & 122 is a threaded connection (fig. 2, ¶ [0036]).
In this case, Liaw teaches attaching coupling element 32 to an air hammer via shaft 31. As detailed above, one of skill in the art appreciates that threaded adapters are known and allow a shaft to connect to other elements that don’t have a complementary connection to the connection of the shaft. Thus, to allow the shaft 31 of Liaw to connect to a threaded aperture of the removal adapter that has different sized threads than the threads on the end of the shaft, it would be obvious to provide a threaded adapter having a threaded aperture at one end configured to screw on the end of the shaft, and having a threaded protrusion configured to fit within the threaded aperture of the removal adapter.
Regarding claim 24, Liaw fails to explicitly teach a thread adapter, wherein the thread adapter comprises a protrusion at a first face and an aperture at a second face, wherein the method further comprises: inserting the protrusion into the threaded aperture of the fuel injector removal adapter; and inserting the first end of the elongated shaft into the aperture of the thread adapter. However, this would have been obvious for the same reasons detailed in the rejection to claim 21, above. Specifically, it would be obvious to provide a threaded adapter having a threaded aperture at one end configured to screw on the end of the shaft, and having a threaded protrusion configured to fit within the threaded aperture of the removal adapter. This threaded adapter allows the shaft 31 of Liaw to connect to a threaded aperture of the removal adapter that has different sized threads than the threads on the end of the shaft.
Claims 21 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Huang as applied to claims 1 and 23 above, respectively, and further in view of the ‘518 reference.
Regarding claim 21, Huang fails to explicitly teach the assembly further comprises a thread adapter configured to facilitate the step of coupling the first end of the elongated shaft to the fuel injector removal adapter. The examiner is taking Official Notice that adapters are well known in the art of power tools and are used connect a bit/accessory to a tool that has a different type or size of connection. For example, the ‘518 reference teaches an adapter 102 to connect bit 106 to connection/drive 120 of tool 104 (fig. 1, ¶ [0033]). The connection/drive 120 of the tool can be any suitable locking mechanism and engages a complementary connection 118 in first end 114 of the adapter, and the connection 108 of the bit 106 is different than the connection 120 and is configured to engage a complementary connection 122 in second end 116 of the adapter (fig. 1, ¶ [0035]-[0036]). The engagement/locking between connections 120 & 122 is a threaded connection (fig. 2, ¶ [0036]).
In this case, Huang teaches attaching coupling element 6 to a air hammer via shaft 4. As detailed above, one of skill in the art appreciates that threaded adapters are known and allow a connection of a shaft to connect to other elements that don’t have a complementary connection to the connection of the shaft. Thus, to allow the shaft 4 of Huang to connect to a threaded aperture of the removal adapter that has different sized threads than the threads on the end of the shaft 4, it would be obvious to provide a threaded adapter having a threaded aperture at one end configured to screw on the end of the shaft 4, and having a threaded protrusion configured to fit within the threaded aperture of the removal adapter.
Regarding claim 24, Huang fails to explicitly teach a thread adapter, wherein the thread adapter comprises a protrusion at a first face and an aperture at a second face, wherein the method further comprises: inserting the protrusion into the threaded aperture of the fuel injector removal adapter; and inserting the first end of the elongated shaft into the aperture of the thread adapter. However, this would have been obvious for the same reasons detailed in the rejection to claim 21, above. Specifically, it would be obvious to provide a threaded adapter having a threaded aperture at one end configured to screw on the end of the shaft of Huang, and having a threaded protrusion configured to fit within the threaded aperture of the removal adapter. This threaded adapter allows the shaft of Huang to connect to a threaded aperture of the removal adapter that has different sized threads than the threads on the end of the shaft.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
Prosecution Insights