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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Species I, claims 1-9 in the reply filed on 20 January 2026 is acknowledged. The traversal is on the ground(s) that the species are related and would not pose an undue burden on the Examiner. This is not found persuasive because the unexamined species would at least require additional text searching beyond that required by the elected species. Examination burden comes from developing and analyzing synonyms for each different species. Examination burden would also increase exponentially in subsequent actions as the subject matter further diverges due to increasing specificity of the separately claimed elements.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 20 January 2026.
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 clamp assembly comprises portions disposed … rearward of the output shaft” of claim 2 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.
Claim 2 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. Claim 2 recites “wherein the clamp assembly comprises portions disposed forward of the output shaft and rearward of the output shaft”. However, the specification does not disclose any portion of the clamp assembly that is rearward of the output shaft, and the figures only show portions that are forward of the output shaft.
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 for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Share (WO 2014/159025 A1).
Regarding claim 1, Share discloses an oscillating tool 10 (embodiment of figure 5), comprising: a housing 20 (not labeled in figures 1-4); a motor (not shown but disclosed, see paragraph [0016]) housed in the housing; an output shaft (oscillating drive member, not shown, see paragraph [0026]) driven by the motor; a clamp assembly 36/110 operatively driven by the motor through the output shaft in an oscillating motion, the clamp assembly comprising a first clamp 110 and a second clamp 36; a user operated actuator 120 configured to move the clamp assembly from a closed condition to an open condition (see paragraphs [0035] to [0036]); a connector 102 connecting the user operated actuator to the clamp assembly; wherein the connector is connected to the clamp assembly at a position forward of the output shaft (connected to the clamp device 110 forward of the output shaft).
Regarding claim 2, Share discloses wherein the clamp assembly 36/110 comprises portions disposed forward of the output shaft (110 and portions of 36) and rearward of the output shaft (the portions of 36 coupled to the output shaft, not shown).
Regarding claim 3, Share discloses wherein the clamp assembly 36/110 further comprises a clamp lever 114.
Regarding claim 4, Share discloses wherein the connector 102 is connected to the clamp lever 114.
Regarding claim 5, Share discloses wherein the clamp lever 114 is pivotable about a pivot point (as the clamp lever 114 is attached to the end of the resilient cable, it may be pivoted when in the released position by a user about the point where the cable exits the clamp device 110, see figure 3 for reference).
Regarding claim 6, Share discloses wherein at least one of the first clamp 110 and the second clamp 36 is movable (the first clamp is movable by the cable).
Regarding claim 7, Share discloses wherein at least one of the first clamp 110 and the second clamp 36 is translatable (the first clamp is translatable by the cable).
Regarding claim 8, Share discloses wherein one of the first clamp 110 and the second clamp 36 is movable (the first clamp is movable); and wherein the other of the first clamp and the second clamp is fixed (the second clamp is fixed).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 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 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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Share.
Regarding claim 9, Share discloses the invention substantially as claimed, except Share does not disclose wherein the connector is a connecting strip. However, it would have been an obvious matter of design choice to make the connector of whatever form or shape was desired or expedient, such as a strip shape, for the purpose of providing a desired strength and flexibility to the connector. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)
Double Patenting
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11,511,356 in view of Share (WO 2014/159025 A1).
Regarding Application claims 1-2 and 6-8, Patent claim 1 discloses an oscillating tool, comprising: a housing; a motor housed in the housing; an output shaft driven by the motor; a clamp assembly operatively driven by the motor through the output shaft in an oscillating motion, the clamp assembly comprising a first clamp and a second clamp; an actuating lever configured to move the clamp assembly from a closed condition to an open condition; a connector connecting the actuating lever to the clamp assembly.
Patent claim 1 does not disclose that the actuating lever is a user operated actuator or wherein the connector is connected to the clamp assembly at a position forward of the output shaft, or wherein the clamp assembly comprises portions disposed forward of the output shaft and rearward of the output shaft, or wherein one of the first clamp and the second clamp is movable or translatable and wherein the other of the first clamp and the second clamp is fixed.
Share discloses an oscillating tool 10 (embodiment of figure 5), comprising: a housing 20 (not labeled in figures 1-4); a motor (not shown but disclosed, see paragraph [0016]) housed in the housing; an output shaft (oscillating drive member, not shown, see paragraph [0026]) driven by the motor; a clamp assembly 36/110 operatively driven by the motor through the output shaft in an oscillating motion, the clamp assembly comprising a first clamp 110 and a second clamp 36; a user operated actuator 120 configured to move the clamp assembly from a closed condition to an open condition (see paragraphs [0035] to [0036]); a connector 102 connecting the user operated actuator to the clamp assembly; wherein the connector is connected to the clamp assembly at a position forward of the output shaft (connected to the clamp device 110 forward of the output shaft) for the purpose of being able to move the clamp assembly between closed and open positions, wherein the clamp assembly 36/110 comprises portions disposed forward of the output shaft (110 and portions of 36) and rearward of the output shaft (the portions of 36 coupled to the output shaft, not shown), and wherein one of the first clamp 110 and the second clamp 36 is movable (the first clamp is movable or translatable); and wherein the other of the first clamp and the second clamp is fixed (the second clamp is fixed). Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the application to have combined the teachings of Patent claim 1 with the user operated actuator and connector that is connected to the clamp assembly at a position forward of the output shaft in order to be able to effectively move the movable portion of the clamp assembly between open and closed positions.
Additionally, patent claim 1 anticipates application claims 3-5, and patent claim 2 anticipates application claim 9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC A. GATES/Primary Examiner, Art Unit 3722 12 March 2026