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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosures of the prior-filed applications, Application Nos. 62/328102, PCT/IB2017/052453, 15/601864, PCT/IB2017/054379, and 16/107842, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. None of the above-identified applications provide adequate support for a fastener extractor device comprising an external thread, tubular sleeve, or internal thread. The earliest support for the claimed subject matter appears in provisional application 62/733507. Accordingly, the current claims are afforded the effective filing date of this provisional application, which is 19 Sep 2018.
Election/Restrictions
Newly submitted claims 23-25 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the claims to the different species recite the mutually exclusive characteristics of such species (see MPEP 806.04 (f)). Specifically, claims 23-25 recite the at least one engagement feature being an engagement protrusion connected to the bracing surface (embodiment shown in fig 18). This is mutually exclusive to the species originally recited in claims 2-3, which require the at least one engagement feature being an engagement cavity (embodiment shown in fig 4). As the newly recited protrusion structure of claims 23-25 is directed to specific species which is mutually exclusive to the cavity structure of previous claims 2-3, new claims 23-25 are directed to a species which is patentably distinct from the originally presented species.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 23-25 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the concave bracing surface of claim 5, convex bracing surface of claim 6, the shank body in the form of a rectangular prism of claim 19 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5 and 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 5 and 6, claim 5 recites the bracing surface being a concave surface, and claim 6 recites the bracing surface being a convex surface. While the written description generally describes the bracing surface may be flat, concave, or convex (p 5, lines 16-18; p 6, lines 22-23), there is no description or showing of a concave or convex bracing surface in combination with an engagement tooth having a flat face surface as recited in claim 1. From applicant’s drawings, (see figs 4, 15), the described bracing surface 7 is the same as the flat face surface of the engagement tooth 33 (see also the labels provided in applicant’s arguments indicating the flat surface of the tooth is the same as the flat bracing surface). This also makes it unclear how these two limitations can be present simultaneously (see also 112b rejection below. Therefore, there is no disclosure in the original specification of a fastener extractor having both a flat face surface of an engagement tooth and a concave or convex bracing surface as respectively recited in claims 5 and 6. As such, claims 5 and 6 are rejected under 112a for containing new matter and therefore failing to comply with the written description requirement.
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 5-6 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 claims 5-6, claim 5 recites the bracing surface being a concave surface, and claim 6 recites the bracing surface being a convex surface. It is unclear how the bracing surface can be concave or convex while the engagement tooth has a flat face surface as recited in claim 1 (see also 112a rejection above). As shown in applicant’s fig 4, the flat face of the engagement tooth 33 is formed by the bracing surface 7. Therefore, it is unclear how the surface can be both flat and concave or convex. For the purposes of this examination, these claims will be interpreted as best can be understood by examiner and are explained in the rejection below.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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(s) 1-4, 7-12, 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackman (US 2121197, previously cited) in view of Miyazaki (JP 2017-042898, see attached machine translation).
Regarding claim 1, Jackman teaches a fastener extractor device comprising: a drive head (13); at least one torque-tool body (5’); the drive head being terminally and concentrically connected to the torque-tool body (as shown in fig 6); the torque-tool body being positioned opposite to the drive head, along the body (shown in fig 1); the torque tool body extending radially outward from a rotation axis of the torque tool body (torque tool body extends outward from central vertical axis as viewed in fig 6); the torque-tool body being terminally and concentrically connected to the drive head (shown in fig 1); the torque-tool body comprising a plurality of laterally-bracing sidewalls (see annotated fig 9 below) and at least one engagement feature; the plurality of laterally-bracing sidewalls being radially positioned about the rotation axis of the torque-tool body (as shown in fig 9); each of the plurality of laterally-bracing sidewalls comprising at least one lateral edge and a bracing surface (see annotated fig below); and the at least one engagement feature being integrated into a specific sidewall among the plurality of laterally-bracing sidewalls (as shown in fig 9); the at least one engagement feature forming at least one engagement tooth on the bracing surface of the specific sidewall (as shown in annotated fig 9 below); and a face surface of the engagement tooth being flat (face surface of tooth which coincides with bracing surface is flat).
Jackman does not teach the fastener extractor including an external thread extending along a shank body between the torque-tool body and drive head, or an internal thread positioned within a tubular sleeve. Miyazaki teaches a fastener extractor device including at least one shank body (fig 6; section of tool with thread 10), an external thread (10), a tubular sleeve (14; fig 7), an internal thread (15) being positioned within the tubular sleeve (fig 7), wherein a drive head (12) terminally and concentrically connected to the shank body (fig 6), a torque-tool body (11) is positioned opposite to the drive head and being terminally and concentrically connected to the shank body (fig 6), wherein the external thread extends along the shank body in between the torque-tool body and the drive head (fig 6), wherein the external thread is laterally connected to the shank body (fig 6). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a shank body with an external thread terminally connected between the torque-tool body and drive head of Jackman, and provide a tubular sleeve with an internal thread within, as this allows a threaded connection to the tubular sleeve, which assists the user in removing a fastener from the torque-tool body as taught by Miyazaki ([0053]).
Regarding claim 2, Jackman, as modified, teaches all the limitations of claim 1 as described above. Jackman further teaches the at least one lateral edge being parallel with the rotation axis (as shown in fig 6); the at least one lateral edge comprising a first lateral edge and a second lateral edge; the first lateral edge and the second lateral edge being positioned opposite to each other across the bracing surface; the at least one engagement feature being an engagement cavity; an entire cross-section of the at least one engagement cavity comprising a curved portion and a straight portion; the curved portion being positioned adjacent to the first lateral edge of the specific sidewall; the straight portion being positioned adjacent to the curved portion, opposite the first lateral edge of the specific sidewall; and, the straight portion extending from the curved portion to the second lateral edge of the specific sidewall (as shown in annotated fig 9 below).
Regarding claim 3, Jackman, as modified, teaches all the limitations of claim 1 as described above. Jackman further teaches the at least one lateral edge being parallel with the rotation axis (as shown in fig 6); the at least one lateral edge comprising a first lateral edge and a second lateral edge; the first lateral edge and the second lateral edge being positioned opposite to each other across the bracing surface (as shown); the at least one engagement feature being an engagement cavity; and the at least one engagement cavity partially traversing normal and into the bracing surface of the specific sidewall such that at least one engagement tooth is formed on the bracing surface of the specific sidewall (see annotated fig below).
Regarding claim 4, Jackman, as modified, teaches all the limitations of claim 1 as described above. Jackman further teaches the at least one lateral edge being parallel with the rotation axis (as shown in fig 6); the at least one lateral edge comprising a first lateral edge and a second lateral edge; the first lateral edge and the second lateral edge being positioned opposite to each other across the bracing surface; and the bracing surface being a flat surface (as shown in fig 9).
Regarding claim 7, Jackman, as modified by Miyazaki, teaches all the limitations of claim 1 as described above. Miyazaki further teaches a first end of the tubular sleeve (included in the modification as detailed in the rejection of claim 1 above) being positioned adjacent to the at least one torque-tool body (bottom end as shown in fig 8); and an opening of the first end having a diameter greater than a diameter of the at least one torque-tool body (as shown in fig 8).
Regarding claim 8, Jackman, as modified by Miyazaki, teaches all the limitations of claim 1 as described above. Miyazaki further teaches the internal thread (included in the modification as detailed in the rejection of claim 1 above) extending along the tubular sleeve (fig 6); the internal thread traversing into the tubular sleeve; the shank body being concentrically positioned within the tubular sleeve (as shown in fig 8); and the internal thread being mechanically engaged to the external thread ([0051]).
Regarding claim 9, Jackman, as modified by Miyazaki, teaches all the limitations of claim 1 as described above. Miyazaki further teaches a nut (13; included in the sleeve provided by Jackman), and the shank body being positioned within the nut (as shown in fig 8).
Regarding claims 10-12, Jackman, as modified, teaches all the limitations of claim 1 as described above. Jackman further teaches the at least one engagement feature comprises a plurality of engagement features (fig 9) the plurality of engagement features being radially positioned about the rotation axis of the torque-tool body and, each of the plurality of engagement features being integrated into a corresponding sidewall from the plurality of laterally-bracing sidewalls (see fig 9); the torque-tool body comprising a first base (tip at bottom as shown in fig 6) and a second base (horizontal cross section at top of engagement features as viewed in fig 6), the first base and the second base each being oriented perpendicular to each of the plurality of laterally-bracing sidewalls (horizontally oriented in fig 6) and, the shank body being adjacently connected to the second base, opposite to the first base (when the shank body of Miyazaki is included between the torque-tool body and drive head as described in the rejection of claim 1 above); and the at least one engagement feature being an engagement cavity (see annotated fig), and an entire cross-section of the engagement cavity being parallel to the first base and the second base (cross section shown in fig 9 is parallel to the first and second bases).
Regarding claim 16-18 and 20, Jackman, as modified by Miyazaki, teaches all the limitations of claim 1 as described above. Jackman further teaches the fastener extractor device is formed in two pieces (when the tubular sleeve of Miyazaki is employed as described in the rejection of claim 1 above); the at least one engagement feature being configured to cut into a fastener sidewall (as shown in fig 9); the tubular sleeve is integrated into the fastener extractor device (when the tubular sleeve of Miyazaki is employed as described in the rejection of claim 1 above); and the at least one lateral edge being parallel with the rotation axis (as shown in fig 6), the at least one lateral edge comprising a first lateral edge and a second lateral edge, the first lateral edge and the second lateral edge being positioned opposite to each other across the bracing surface, and the first lateral edge and the second lateral edge forming a corner (see corners at each lateral edge).
Regarding claim 19, Jackman, as modified, teaches all the limitations of claim 1 as described above. Jackman and Miyazaki do not teach the shank body being in the form of a solid prism (it is unclear if the shank body of Miyazaki is a solid prism, but it appears to be cylindrical rather than prismatic). However, it has been held that changes in shape are obvious modifications for a person of ordinary skill (MPEP 2144.04 IV. B.). As the shape of the shank body would not change the function of the extractor, It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make the shank body of Jackman in the shape of a rectangular prism, still achieving its purpose of providing a connection between the torque-tool body and drive head.
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Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackman and Miyazaki as applied to claim 1 above, and further in view of Nigra (US 1875484, previously cited).
Regarding claim 5, Jackman, as modified, teaches all the limitations of claim 1 as described above. Jackman further teaches the at least one lateral edge being parallel with the rotation axis (as shown in fig 6); the at least one lateral edge comprising a first lateral edge and a second lateral edge; the first lateral edge and the second lateral edge being positioned opposite to each other across the bracing surface. Jackman does not teach the bracing surface is a concave surface (in Jackman the bracing surface is flat). Nigra teaches a fastener extractor device including a bracing surface (16, 17) being a concave surface (fig 5) and a tooth having a flat face surface (18). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the bracing surface of Jackman to be concave, as this allows the extractor to exert rotational force upon the fastener while minimizing expansion forces as taught by Nigra (p 2, col 1, lines 45-56).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackman and Miyazaki as applied to claim 1 above, and further in view of Pool (US 6098499, previously cited).
Regarding claim 6, Jackman, as modified, teaches all the limitations of claim 1 as described above. Jackman further teaches the at least one lateral edge being parallel with the rotation axis (as shown in fig 6); the at least one lateral edge comprising a first lateral edge and a second lateral edge; the first lateral edge and the second lateral edge being positioned opposite to each other across the bracing surface. Jackman does not teach the bracing surface being a convex surface. Pool teaches a fastener extractor device including a bracing surface (70) being a convex surface (fig 3; col 3, lines 10-13) and a tooth having a flat face surface (as best understood, the vertically straight shape of the tooth may be considered flat). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the bracing surface of ‘969 to be convex, as this prevents the extractor from breaking when exposed to high forces as taught by Pool (col 3, lines 53-57).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackman and Miyazaki as applied to claim 1 above, and further in view of Jorneus (US 6419489, previously cited).
Regarding claim 13, Jackman, as modified, teaches all the limitations of claim 1 as described above. Jackman further teaches the torque-tool body comprising a first base (tip at bottom as shown in fig 6) and a second base (horizontal cross section at top of engagement features as viewed in fig 6), the shank body being adjacently connected to the second base, opposite to the first base (when the shank body of Miyazaki is included between the torque-tool body and drive head as described in the rejection of claim 1 above). Jackman does not teach the torque-tool body tapering from the second base towards the first base. Jorneus teaches a fastener extractor device including a torque-tool body (21) tapering from a second base toward a first base (fig 5; tapers from element 23 toward tip). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the torque-tool body of Jackman to taper from the second base toward the first base, as this allows the device to firmly wedge into a fastener as taught by Jorneus (col 4, lines 20-23).
Claims 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackman and Miyazaki as applied to claim 1 above, and further in view of Fruhm (US 6352011, previously cited).
Regarding claim 14, Jackman as modified, teaches all the limitations of claim 1 as described above. Jackman, as modified, teaches the extractor device includes a first shank body and first torque tool body (at “at least one” shank body and torque tool body identified in the rejection of claim 1 above). Jackman does not teach a second shank body and second torque-tool body having substantially the same arrangement and structure of the first shank body and first torque-tool body. Fruhm teaches an extractor device including a drive head (14), first and second shank bodies (28, 30), and first and second torque tool bodies (24, 26), the first shank body and second shank body being positioned opposite to each other across the drive head (fig 1); the first and second torque tool bodies being terminally and concentrically connected to the first and second shank bodies opposite the drive head (fig 2). It would have been obvious for a person having ordinary skill in the art at the effective time of filing the invention to provide the fastener extractor device of Jackman with a second shank body and second torque tool body arranged opposite each other across a drive head to provide the device with the capability of engaging differently sized fasteners and allowing a chuck tool to drive the tool as taught by Fruhm (col 1, lines 39-43; col 3, lines 36-41).
Regarding claim 15, Jackman, as modified, teaches all the limitations of claim 14 as described above. Miyazaki further teaches the at least one external thread comprises a first external thread (10; the external thread described in the rejection of claim 1 above) extending along a first shank body in between a first torque tool body and a drive head and being laterally connected to the first shank body (as shown in fig 6). While Jackman only teaches a single external thread, as detailed in the rejection of claim 14 above, Fruhm renders obvious the use of first and second shank bodies on opposite sides of the drive head. When applied to Jackman, It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a second external thread on and laterally connected to the second shank body between the second torque-tool body and drive head, as this allows the tubular sleeve to be threadedly connected to the second shank body, which assists the user in removing a fastener from the torque-tool body as taught by Miyazaki ([0053]).
Response to Arguments
Applicant's arguments filed 20 May 2026 have been fully considered but they are not persuasive. Applicant argues that the drawings need not show the claimed features of claims 5-6 and 19, stating that drawings are not necessary to understand the claimed convex bracing surface, concave bracing surface, or rectangular prism shape of the shank body. Examiner respectfully disagrees. As the inventive concept of the application is a specific shape and constructional features of the claimed fastener extractor, it is critical to show these features in drawings to fully explain the invention. See also the 112a and 112b rejections of claims 5-6 above, which at least are partially necessitated by the lack of drawings of the claimed subject matter. See also 37 CFR 1.83 (a), which states “The drawing in a nonprovisional application must show every feature of the invention specified in the claims.” This interpretation is fully consistent with applicant’s specification, as the flat face surface of the tooth 33 is formed by the bracing surface 7 as shown in applicant’s figure 4.
Regarding claim 1 and its dependents, applicant argues that Jackman does not teach a face surface of the engagement tooth being flat. However, as shown in annotated figure 9 of Jackman above, the bracing surface provides a flat face surface of the engagement tooth as claimed.
Applicant’s terminal disclaimer and amendments have overcome the previous double patenting rejections, the drawing objections of previous claims 21-22, and rejections under 112b. However, new issues are raised under 112a and 112b as detailed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723 /BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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