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 .
Status of Claims
This office action is in response to Applicant's Amendment/Request for Reconsideration filed on 9 December 2025.
Claims 1 – 6, 8 – 11, and 16 are pending. Claims 7 and 12 – 15 are cancelled by Applicant.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 16 October 2025 and 9 January 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the Specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
“a functional member” — claim 1.
Claims 11 and 16 also recites “a functional member”; however, claims 11 and 16 further recites “the functional member includes a plurality of functional members, the plurality of functional members each include an elastic member … and a displacement sensor” wherein the elastic member and the displacement sensor describes sufficient structure to perform the recited function.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
“a functional member” — Paragraph [0017] of the specification describes the functional member as a detection mechanism detects the relative movement of the second housing to the first housing wherein paragraph [0081] describes the detection mechanism as a magnetic-type sensor. Thus, the limitation, “a functional member’, covers the corresponding structure of a magnetic sensor and equivalents thereof.
Paragraph [0018] of the specification describes the functional member as a duct member. Thus, the limitation, “a functional member’, covers the corresponding structure of a duct and equivalents thereof.
Paragraph [0020] of the specification describes the functional member as an elastic member. Thus, the limitation, “a functional member’, covers the corresponding structure of a member with elastic properties and equivalents thereof.
Paragraph [0022] of the specification describes the functional member as a wire harness insertion opening. Thus, the limitation, “a functional member’, covers the corresponding structure of an opening/aperture and equivalents thereof.
Paragraph [0023] of the specification describes the functional member as a main electric switch. Thus, the limitation, “a functional member’, covers the corresponding structure of a switch and equivalents thereof.
Paragraph [0020] of the specification describes the functional member as an attachment member wherein paragraph [0024] describes the attachment member as a dust collecting device or an illumination device. Moreover, paragraph [0080] describes attachment members as accessories to the striking tool. Thus, the limitation, “a functional member’, covers the corresponding structure of a dust collecting device, an illumination device, accessories, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C.
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 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.
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 1 – 3 and 5 – 6 are rejected under 35 U.S.C. 103 as being unpatentable over Widlroither (US 11,274,400 B2).
[AltContent: textbox (Widlroither (US 11,274,400 B2)
Annotated figure 4)]
[AltContent: textbox (Connector C)][AltContent: textbox (23)][AltContent: textbox (25)]
Regarding claim 1, Widlroither discloses a striking tool comprising:
an elongated main housing (10, 14, 17, fig. 4) having a longitudinal axis (5, fig. 4) extending in a first direction (an up-down direction as shown in fig. 4), and including a tool holder (lower portion A of a pipe 10, annotated fig. 4) at one end of the elongated main housing, the tool holder being configured to detachably hold an end tool (6, fig. 3 and 6, fig. 4. Col. 6, ll. 33 – 36 describes a tool 6 exchangeably connected with a driving mechanism 4 between a configuration of a spike driver as shown in figs. 2, 4 and a configuration of a spike puller as shown in fig. 3);
a pair of handles (15, 16, fig. 4), each extending in a second direction (a direction in and out of the page as shown in fig. 4) intersecting with the first direction (Col. 5, ll. 26 – 28 describes a first handle 15 and a second handle 16 arranged laterally on a supporting frame 14);
a motor (2, fig. 4) including a motor output shaft (3, fig. 4);
a controller (20, fig. 4) configured to control driving of the motor;
a controller case (plate B upon which a control 20 rests/held and connectors C, annotated fig. 4) holding the controller; wherein the controller case includes a frame (plate B, annotated fig. 4) partially accommodating the controller therein.
a functional member (25, fig. 4. This limitation is being interpreted under 35 U.S.C. §112(f) to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The examiner deems he vibration dampers 25 made of an elastomer material equivalent to the corresponding structure of a member with elastic properties described in the specification in paragraph [0020] as performing the claimed function) attached to the controller case (via the mounting element 23) and configured to assist striking operation and a functional member mounting portion (connectors C, annotated fig. 4) which protrudes outwards from the frame and to which the functional member is attached (via the mounting element 23), and the functional member mounting portion includes at least one of: (connectors C, annotated fig. 4) that protrudes perpendicularly from the frame
Widlroither discloses the elastic member mounting portion protruding perpendicularly from the frame but does not explicitly disclose the shape of elastic member mounting portion, thus Widlroither does not explicitly disclose that the elastic member mounting portion protrudes cylindrically from the frame.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the shape of the functional member mounting portion/elastic member mounting portion/connectors C to be cylindrical since it has been held that modifying the shape of an element considered a routine expedient to one having ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (In re Dailey, the court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. In the same way, the configuration of the functional member mounting portion/duct member mounting portion/connectors C is a matter of choice which a person of ordinary skill in the art would have found obvious since applicant’s specification provides no persuasive evidence that the particular configuration of the functional member mounting portion/duct member mounting portion/connectors C is significant).
Regarding claim 2, Widlroither discloses the invention as recited in claim 1.
The modified Widlroither further discloses the controller case (plate B upon which a control 20 rests/held and connectors C, annotated fig. 4) is disposed at a position to include the longitudinal axis (5, fig. 4) of the main housing (10, 14, 17, fig. 4) in the first direction (the up-down direction as shown in fig. 4).
Regarding claim 3, Widlroither discloses the invention as recited in claim 1.
The modified Widlroither further discloses when one side of the first direction where the tool holder (lower portion A of a pipe 10, annotated fig. 4) is located is defined as a lower side (below the decoupling line E, fig. 4) and an opposite side where the pair of handles (15, 16, fig. 4) are located is defined as an upper side (above the decoupling line E, fig. 4), the controller case (plate B upon which a control 20 rests/held and connectors C, annotated fig. 4) is disposed at the upper side of the motor.
Regarding claim 5, Widlroither discloses the invention as recited in claim 1.
The modified Widlroither further discloses the main housing (10, 14, 17, fig. 4) includes a first housing (10, fig. 4) and a second housing (14, 17, fig. 4) that is, together with the pair of handles (15, 16, fig. 4), movable relative to the first housing (Col. 5, ll. 56 – 64), the functional member (25, fig. 4) includes a plurality of functional members (Col. 5, ll. 11 – 13 describes having four vibration dampers 25) , the plurality of functional members each include an elastic member (Col. 5, Il. 43 — 47 and 53 — 55 describes a vibration decoupling device 22 having a vibration damper 25 made of an elastomer material) disposed to intervene between the first housing and the second housing, a duct member (32, 34, fig. 4) configured to transfer cooling air between the first housing and the second housing (Col. 6, Il. 52 — 63 describes a coolant line 34 or duct leading from a cooler 32 in the lower portion of a supporting frame 14, as shown in figure 4, across a decoupling plane E into a pipe 10 wherein col. 4, Il. 6 – 8 describes the coolant line can use air from a fan as a cooling medium), the motor (2, fig. 4) is disposed at the first housing (As shown in fig. 4), and the pair of handles and the controller case are disposed at the second housing (As shown in fig. 4).
Regarding claim 6, Widlroither discloses the invention as recited in claim 1.
The modified Widlroither further discloses the main housing (10, 14, 17, fig. 4) includes a first housing (10, fig. 4) and a second housing (14, 17, fig. 4) that is, together with the pair of handles (15, 16, fig. 4), movable relative to the first housing (Col. 5, ll. 56 – 64), the functional member includes an elastic member (25, fig. 4) disposed between the first housing and the second housing, the motor (2, fig. 4) is disposed at the first housing, and the pair of handles and the controller case (plate B upon which the control 20 rests/held and connectors C, annotated fig. 4) are disposed at the second housing.
Claims 8 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Widlroither (US 11,274,400 B2), in view of Braun (US 2021/0268636 A1).
Regarding claim 8, Widlroither discloses the invention as recited in claim 1.
The modified Widlroither does not explicitly disclose the functional member includes a main electric switch for the controller to control the driving of the motor.
However, Braun, in the same field of endeavor, teaches a controller case (56, fig. 6) having a functional member (58, fig. 6) wherein the functional member is a main electric switch for the controller (44, fig. 6) to control the driving of the motor (18, fig. 1).
Braun is evidence that having the functional member to include the main electric switch for the controller to control the driving of the motor was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the striking tool of the modified Widlroither with the functional member to include the main electric switch for the controller to control the driving of the motor, as taught by Braun. Additionally, the one having ordinary skill in the art would have been motivated to modify the striking tool of the modified Widlroither with the functional member to include the main electric switch for the controller to control the driving of the motor, as taught by Braun, in order to provide the main electric switch and other electronics on or near the controller so that all electronics are localized for convenient access and repair.
Regarding claim 9, Widlroither discloses the invention as recited in claim 1.
The modified Widlroither does not explicitly disclose the functional member includes a wireless communication interface.
However, Braun, in the same field of endeavor, teaches a controller case (56, fig. 2) having a functional member (46, fig. 6) wherein the functional member is a wireless communication interface ([0030] describes a monitoring unit configured transmit information wirelessly to an external device/smartphone 100).
Braun is evidence that having the functional member that includes a wireless communication interface was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the striking tool of the modified Widlroither with the functional member that includes a wireless communication interface, as taught by Braun. Additionally, the one having ordinary skill in the art would have been motivated to modify the striking tool of the modified Widlroither with the functional member that includes a wireless communication interface, as taught by Braun, in order to transmit status information, based on the status variables acquired by the electronic components of the controller, to an external device like a smartphone. This status information can include a geographical position of striking tool ([0030]) wherein a user can track the striking tool if it is lost or stolen.
Regarding claim 10, Widlroither discloses the invention as recited in claim 1.
The modified Widlroither does not explicitly disclose the functional member includes a main electric switch for the controller to control the driving of the motor and a wireless interface; and the functional member mounting portion includes a main electric switch mounting portion and a wireless communication interface mounting portion adjacent to each other in a longitudinal direction of the controller.
However, Braun, in the same field of endeavor, teaches a controller case (56, fig. 2) having a functional member (58, fig. 6) wherein the functional member includes a main electric switch for the controller (44, fig. 6) to control the driving of the motor (18, fig. 1), and a wireless interface (46, fig. 6); and the functional member mounting portion includes a main electric switch mounting portion (contact interface 62, fig. 6 – see [0026]) and a wireless communication interface mounting portion (electronic module housing 62, fig. 6 – see [0027]) adjacent to each other in a longitudinal direction of the controller (As shown in fig. 6).
Braun is evidence that having the functional member to include the main electric switch for the controller to control the driving of the motor and the functional member mounting portion to include a main electric switch mounting portion was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Additionally, Braun is evidence that the functional member that includes a wireless communication interface and the functional member mounting portion includes the wireless communication interface mounting portion adjacent to the main electric switch mounting portion in the longitudinal direction of the controller was also known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the striking tool of the modified Widlroither with the functional member to include the main electric switch for the controller to control the driving of the motor, as taught by Braun. Additionally, the one having ordinary skill in the art would have been motivated to modify the striking tool of the modified Widlroither with the functional member to include the main electric switch for the controller and a wireless interface; and the functional member mounting portion to include the main electric switch mounting portion and the wireless communication interface mounting portion adjacent to each other in the longitudinal direction of the controller, as taught by Braun, in order to (1) provide the main electric switch and other electronics on or near the controller so that all electronics are localized for convenient access and repair, and to (2) transmit status information, based on the status variables acquired by the electronic components of the controller, to an external device like a smartphone. This status information can include a geographical position of striking tool ([0030]) wherein a user can track the striking tool if it is lost or stolen.
Allowable Subject Matter
Claims 11 and 16 are allowed.
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if 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:
Regarding claims 4, 11, and 16, upon examination of the art of record, it has been decided that the art considered as a whole, alone or in combination, neither anticipates nor renders obvious the claimed limitation, “a functional member attached to the controller case… the functional member includes… a displacement sensor configured to detect relative movement of the second housing to the first housing in a case that a user pushes the pair of handles to start the striking operation”. The closest prior art is Widlroither (US 11,274,400 B2). While there are several references that provide a displacement sensor configured to detect relative movement of the second housing to the first housing in a case that a user pushes the pair of handles to start the striking operation (i.e., US 11,992,926; US 2024/0116160 A1; US 2021/03393972 A1; US 2017/0101747 A1, US 8,235,136 B2), none have the displacement sensor attached to a controller case as required in claim. Thus, it is examiner' s opinion that it would not have been obvious to one having ordinary skill in the art at the time of the invention to combine or modify the prior art in order to arrive at applicant's invention as claimed.
Response to Arguments
Applicant’s amendments, filed 14 January 2025, with respect to the claim objections of claims 1, 5, 11, and 16 have been fully considered and are persuasive. The claim objections of claims 1, 5, 11, and 16 have been withdrawn.
Applicant’s amendments and arguments, filed 14 January 2025, with respect to the rejections of claims 1 – 3 and 6 under 35 U.S.C. §102 and the rejections of claims 5 and 13 under 35 U.S.C. §103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of a different interpretation of Widlroither.
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 DAVID G SHUTTY whose telephone number is (571)272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SHELLEY SELF can be reached on 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID G SHUTTY/Examiner, Art Unit 3731
10 January 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731