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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 2 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12,560,086. This is a statutory double patenting rejection.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,560,086. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 12,560,086 and are thus encompassed by said claims.
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.
Claim(s) 1, 3, 4, 5, 7, 8, 10, 11, 12, 13, 14, 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boart (DE 20119109 U1).
With regard to claim 1, Boart discloses a retainer for a tool comprising an annular body (5) defining a central opening adapted to receive a tool (1) therein in an axial direction and including a first end having a first external diameter, and a second end having a second external diameter; a plurality of protruding bosses (8) extending into the opening from an internal side of the body defining the central opening; and a slot (6/7) formed through the body and extending in the axial direction between the first end and the second end, wherein: in a resting state of the body, the first external diameter and the second external diameter are distinct from one another (fig 3); and the body is elastically deformable into a compressed state wherein the first external diameter and the second external diameter are equal (fig 4).
With regard to claim 3, Boart further discloses the bosses (8) are plainly proximate the first end (17; fig 3).
With regard to claim 4: Boart further discloses (fig 3) shows first end (Amax) having an external diameter greater (the “first” end in this interpretation—applied to claims 4 and 5-- is different from the first end as applied to claim 3, 7, 8, and 9).
With regard to claim 5, Boart further discloses a first width of the slot in a circumferential direction at the first end of the body is greater than a second width of the slot in the circumferential direction at the second end of the body (pg. 4 of translation, “The conical clamping sleeve 5 is preferably made from a rectangular piece of sheet metal cutting - with the exception of the possibly serpentine edges 7. This automatically results in the slot width increasing towards the chisel head 1”).
With regard to claim 7 (as claim 7 depends from claim 3), Boart further discloses the “first” end is at 17 in figure 3 and the external diameter (Amin) is less than the second end diameter (Amax).
With regard to claim 8, Boart further discloses the width of the slot is less at the first end (17; figs. 1-4).
With regard to claim 10, Boart further discloses the bosses (8) are plainly spaced circumferentially (fig. 3).
With regard to claim 11, Boart further discloses the thickness in a radial direction is constant (pg. 4 of translation wherein the retainer is made from a rectangular piece of sheet metal).
With regard to claim 12, Boart further discloses conical frustrum shaped (figs. 1-4).
With regard to claim 13, Boart discloses a tool retainer (5) with annular body defining a central opening adapted to receive a tool (1) therein in an axial direction and including a first end having a first external diameter, and a second end having a second external diameter; a plurality of protruding bosses (8) extending into the central opening from an internal side of the body defining the central opening; and a slot (6/7) formed through the body and extending in the axial insertion direction between the first end and the second end, wherein: in a resting state of the body, the first external diameter and the second external diameter are distinct from one another; and the body is elastically deformable into a compressed state wherein the first external diameter and the second external diameter are equal; and a compression element (for claim 13, the block 9 is interpreted as being the “compression element” –see 103 rejection below where the compression element is interpreted as a washer) defining an opening (10) adapted to receive the tool retainer, the opening having an internal dimension (See translation, second paragraph under “—5—” “the maximum outer diameter A .sub.max facing the chisel head 1 is larger than the inner diameter i of the holder 10, so that the clamping sleeve 5 can be securely clamped in the chisel holder 9. The minimum diameter A .sub.min of the outer surface 12 of the clamping sleeve 5 is preferably smaller or at most 5% larger than the inner diameter i of the holder 10”) less than the first external diameter of the annular body, the compression element adapted to elastically deform the first end of the retainer in a radially inward direction as the compression element is translate over the retainer from the second end toward the first end.
With regard to claim 14, Boart discloses the internal dimension of the opening less than the second external diameter (See translation second paragraph after “—5—” in the translation: “at most 5% larger than the inner diameter”).
With regard to claim 15, Boart further discloses a tool (1), a shank (2), and groove (4).
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.
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) 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boart (DE 20119109 U1) in view of Stiffler (6,824,225).
With regard to claim 13, Boart discloses a tool retainer (5) with annular body defining a central opening adapted to receive a tool (1) therein in an axial direction and including a first end having a first external diameter, and a second end having a second external diameter; a plurality of protruding bosses 8 extending into the central opening from an internal side of the body defining the central opening; and a slot (6/7) formed through the body and extending in the axial insertion direction between the first end and the second end, wherein: in a resting state of the body, the first external diameter and the second external diameter are distinct from one another; and the body is elastically deformable into a compressed state wherein the first external diameter and the second external diameter are equal; and a compression element (washer 11).
Boart is silent regarding the compression element (washer) defining an opening adapted to receive the tool retainer, the opening having an internal dimension less than the first external diameter of the annular body, the compression element adapted to elastically deform the first end of the retainer in a radially inward direction as the compression element is translate over the retainer from the second end toward the first end. Boart amounts to a “base” device.
The compression element (washer) defining an opening adapted to receive the tool retainer, the opening having an internal dimension less than the first external diameter of the annular body, the compression element adapted to elastically deform the first end of the retainer in a radially inward direction as the compression element is translate over the retainer from the second end toward the first end amounts to an “improvement” because it allows for easy assembly.
Stiffler, in the same field of endeavor, describes a compression element (washer) which is used to help assembly the tool and retainer into the bore of the holder (col. 3 lines 47-51). The compression element described by Stifler defined an opening adapted to receive the tool retainer, the opening having an internal dimension less than the first external diameter of the annular body, the compression element adapted to elastically deform the first end of the retainer in a radially inward direction as the compression element is translate over the retainer from the second end toward the first end. Thus Stiffler teaches the “improvement”.
One of ordinary skill in the art before the effective filing date of the claimed invention could have improved device to Boart in the same way, using known techniques of metal working and the results would have been predictable, therefore the combination as recited in claim 13 is unpatentable in view of KSR C Use of Known Technique To Improve Similar Devices (Methods, or Products) in the Same Way.
With regard to claim 14, Boart, as modified, further discloses the internal dimension of the opening of the compression element is less than the second external diameter of the annular body would have been necessary in order to use the washer to compress the ring, and thus would have been a natural result of improving the device to Boart as proposed.
With regard to claim 15, Boart further discloses a tool (1), a shank (2), and groove (4).
With regard to claim 16, Boart discloses a tool holder (9) defining a bore (10) extending therein; a tool (1) having a shank (2); a tool retainer (5) fitted over the shank, including: an annular body defining a central opening receiving the tool therein in an axial direction and including a first end having a first external diameter, and a second end having a second external diameter; a slot (6/7) formed through the body and extending in the axial direction between the first end and the second end, wherein: in a resting state of the body, the first external diameter and the second external diameter are distinct from one another; and the body is elastically deformable into a compressed state wherein the first external diameter and the second external diameter are equal. Boart lacks the compression element (washer) defining an opening adapted to receive the tool retainer, the opening having an internal dimension less than the first external diameter of the annular body.
Boart amounts to a “base” device.
The compression element (washer) defining an opening adapted to receive the tool retainer, the opening having an internal dimension less than the first external diameter of the annular body amounts to an “improvement” because it allows for easy assembly.
Stiffler, in the same field of endeavor, described a compression element (washer) which is used to help assembly the tool and retainer into the bore of the holder (col. 3 lines 47-51). The compression element described by Stifler defining an opening adapted to receive the tool retainer, the opening having an internal dimension less than the first external diameter of the annular body.
Thus Stiffler teaches the “improvement”.
One of ordinary skill in the art before the effective filing date of the claimed invention could have improved the device to Boart in the same way, using known techniques of metal working and the results would have been predictable, therefore the combination as recited in claim 16 is unpatentable in view of KSR C Use of Known Technique To Improve Similar Devices (Methods, or Products) in the Same Way.
With regard to claim 17, Boart, as modified, further discloses the internal dimension of the opening of the compression element is less than an external diameter of the annular body would have been necessary in order to use the washer to compress the ring, and thus would have been a natural result of improving the device to Boart as proposed.
With regard to claim 18, Boart, as modified, further discloses the internal dimension of the opening of the compression element is less than the second external diameter of the annular body would have been necessary in order to use the washer to compress the ring, and thus would have been a natural result of improving the device to Boart as proposed.
With regard to claim 19, Boart further discloses bosses (8) and groove (4).
With regard to claim 20, Boart, as modified, further discloses the first end having a distinct holding force form the second end as such would have been inherent in the Boart device because in an elastic metal sleeve, the force would be proportional to the amount of deformation, and one end plainly deforms more than the other.
Allowable Subject Matter
Claims 2, 6, and 9 would be allowable if the double patenting rejection(s) set forth in this Office action is/are overcome and rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the cited prior art, either alone or in any reasonable combination, fails to teach or suggest all the limitations of the dependent claim(s). Retainers for a tool are known such as those taught by Boart, Stiffler, and Ojanen (2007/0090679). However, the cited prior art lacks in the resting state, a width of the slot tapers between the first end of the body and the second end of the body in the axial direction; and in the compressed state of the body, the width of the slot is generally constant between the first and second ends of the body as required by the dependent claim(s) and it would not have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prior art to achieve applicant’s invention without the benefit of hindsight and applicant’s own disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN F FIORELLO whose telephone number is (571)270-7012. The examiner can normally be reached Mon-Fri 8:00AM-4:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN F FIORELLO/Primary Examiner, Art Unit 3678
BF
09/28/2026
