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
In response to the amendment filed on 06/04/2026, no claim has been amended. Claims 4, 5, 9, and 10 were previously cancelled. Claims 1-3, 6-8, and 11-29 are pending and under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/16/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
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 12, 13, 20, 23, 27, and 28 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.
The phrases “a gear ratio of about 3.6:1” in claims 12, 20, and 27 and “a gear ratio of about 2.2:1” in claims 13, 23, and 28 render claims vague and indefinite because specification does not provide necessary explanation regarding the recited gear ratios, and the term “about” makes it difficult to fathom acceptable gear ratios for the given gear assembly stage and position. However, the gear ratios recited in claims 14, 15, 24, and 29 do not necessarily render claims vague and indefinite because specification provides ranges to be considered. For example, the gear ratios about 4.25:1 in claim 14 and about 1.6:1 in claims 15, 24, and 29 are explained in specification as about 4.1 (preferably 4.25:1) and about 1.5:1 (preferably 1.6:1) respectively (¶ 0029), thus it provides a possible range of gear ratios. But no explanation is provided for the gear ratios about 3.6:1 in claims 12, 20, and 27 and about 2.2:1 in claims 13, 23, and 28. Thus, any close gear ratio would satisfy the recited claim limitations.
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.
Claims 1, 2, 16, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Merget et al. (US 2019/0134801, hereinafter Merget).
Regarding claim 1, Merget discloses a multi-speed gearbox for a power tool having a motor (figs. 1-2 and ¶ 0002, 0028, 0030, a rotary power tool 10, which can adjust a rotational speed, comprises a gear case 332 [corresponds to the recited gear box]. The gear case includes a motor 214), the gearbox comprising:
an input gear adapted to be driven by the motor (fig. 6 and ¶ 0031, a first planetary stage 320 includes first stage planet gears 352 [correspond to the recited input gear] are coupled to an output of the motor 214);
a first stage gear assembly including first gears operatively coupled to the input gear, a first carrier, and a ring gear (fig. 6 and ¶ 0031-33, a second planetary stage 324 [corresponds to the recited first stage gear assembly] includes a plurality of second stage planet gears 372 [correspond to the recited first gears] which are operatively coupled to the first stage planet gears 352 [correspond to the recited input gear], a first stage carrier 348 [corresponds to the recited first carrier], and a second stage ring gear 376);
a second stage gear assembly including second gears operatively coupled to a pinion (¶ 0031, 0034, a third planetary stage 328 [corresponds to the recited second stage gear assembly] includes a plurality of third stage planet gears 388 [correspond to the recited second gears]. The first stage planet gears are engaged to a pinion 364. Because the third planetary stage 328 is coupled to the first planetary stage 320 having the first stage planet gears, the third planetary stage 328 is operatively coupled to the pinion 364); and
a switch coupled to the ring gear and configured to selectively move the ring gear between first and second positions, the first position including the ring gear operatively coupled to the first gears and the second position including the ring gear operatively coupled to the first carrier and the first gears (fig. 6 and ¶ 0037-42, the rotary power tool comprises an actuator 270 [corresponds to the recited switch], coupled to a the ring gear 376, to move the ring gear to a first position (i.e., to the left) and a second position (i.e., to the right) to switch between a low-speed, high torque mode and a high-speed, low torque mode. The first position makes teeth of the ring gear 376 to engage second stage planetary gears 372 [correspond to the first gears] separate from the first stage carrier 348 [corresponds to the recited first carrier], and the second position makes the teeth of the ring gear 376 to engage the first stage carrier 348 and the second stage planetary gears 372 [correspond to the recited first gears]).
Regarding claim 16, Merget discloses a multi-speed power tool (figs. 1-2 and ¶ 0002, a rotary power tool 10 which can adjust a rotational speed) comprising:
a housing (fig. 1, motor housing portion 26);
a driver portion coupled to the housing and adapted to drive a work piece (fig. 5 and ¶ 0029, a tool chuck 312 [corresponds to the recited driver portion] at a working end of the housing portion used for retaining a bit);
a motor disposed within the housing (fig. 5, a motor 214 is disposed within the housing portion); and
a gearbox disposed in the housing and operatively coupled to the motor and the driver portion (fig. 6 and ¶ 0030, a gear case 332 [corresponds to the recited gearbox] is disposed in the housing portion and operatively coupled to the motor 214 and the tool chuck 312), the gearbox including:
an input gear operatively coupled to the motor (fig. 6 and ¶ 0031, a first planetary stage 320 includes first stage planet gears 352 [correspond to the recited input gear] are coupled to an output of the motor 214);
a first stage gear assembly including first gears operatively coupled to the input gear, a first carrier, and a ring gear (fig. 6 and ¶ 0031-32, a second planetary stage 324 [corresponds to the recited first stage gear assembly] includes a plurality of second stage planet gears 372 [correspond to the recited first gears] which are operatively coupled to the first stage planet gears 352 [correspond to the recited input gear], a first stage carrier 348 [corresponds to the recited first carrier], and a second stage ring gear 376);
a second stage gear assembly including second gears operatively coupled to a pinion (¶ 0031, 0034, a third planetary stage 328 [corresponds to the recited second stage gear assembly] includes a plurality of third stage planet gears 388 [correspond to the recited second gears]. The first stage planet gears are engaged to a pinion 364. Because the third planetary stage 328 is coupled to the first planetary stage 320 having the first stage planet gears, the third planetary stage 328 is operatively coupled to the pinion 364); and
a switch coupled to the ring gear, the switch configured to selectively move the ring gear between first and second positions, the first position including the ring gear operatively coupled to the first gears and the second position including the ring gear operatively coupled to the first carrier and the first gears (fig. 6 and ¶ 0037-42, the rotary power tool comprises an actuator 270 [corresponds to the recited switch], coupled to a the ring gear 376, to move the ring gear to a first position (i.e., to the left) and a second position (i.e., to the right) to switch between a low-speed, high torque mode and a high-speed, low torque mode. The first position makes teeth of the ring gear 376 to engage second stage planetary gears 372 [correspond to the first gears] separate from the first stage carrier 348 [corresponds to the recited first carrier], and the second position makes the teeth of the ring gear 376 to engage the first stage carrier 348 and the second stage planetary gears 372 [correspond to the recited first gears]).
Regarding claims 2 and 17, Merget discloses the gearbox as in the rejection of claim 1 (as to claim 2) and the power tool as in the rejection of claim 16 (as to claim 17), wherein the first gears include planetary gears (¶ 0041-42, the second stage planetary gears 372 are the recited first gears).
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 3 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Merget, as applied to claims 1 and 16 above respectively, in view of Gehret et al. (US 2021/0170564, cited on 07/24/2024 IDS, hereinafter Gehret).
Regarding claims 3 and 18, Merget discloses the gearbox as in the rejection of claim 1 (as to claim 3) and the power tool as in the rejection of claim 16 (as to claim 18), but does not disclose the second gears include compound gears.
Gehret teaches, in an analogous power tool field of endeavor, the second gears include compound gears (Merget teaches the third stage planet gears 388 are the recited second gears (¶ 0031, 0034); Gehret ¶ 0080 Gehret teaches planet gear assemblies 240, 250, 260 are compound gears. Therefore, by combining with Merget, the planet gears 388 of Merget can be the compound gears).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the second gears of Merget to provide the compound gears as taught by Gehret. The compound gears allow them to operate at substantially constant speed so that the associated gears to operate at substantially the same rate (Gehret ¶ 0080).
Claims 6-8, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Merget, as applied to claims 1 and 16 above respectively, in view of Yoon (US 2008/0196555).
Regarding claims 6 and 21, Merget discloses the gearbox as in the rejection of claim 1 (as to claim 6) and the power tool as in the rejection of claim 16 (as to claim 21), but does not disclose an output gear operatively coupled to the second gears.
Yoon teaches, in an analogous power tool field of endeavor, an output gear operatively coupled to the second gears (fig. 8 and ¶ 0049-50, a power tool comprises an output gear 23 engaged with planetary gears 22 [equivalent to the recited second gears]. Merget teaches the third stage planet gears 388 [correspond to the recited second gears] are coupled with a disk 380 wherein the disk 380 may be coupled to an output shaft 218 in any number of a different ways such as a spline-fit (fig. 6 and ¶ 0034). Merget does not disclose the output gear explicitly, but by combining with Yoon, the disk 380 of Yoon can be modified to be the output gear).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the gearbox of Merget to provide the output gear as taught by Yoon so that rotational force is fully transmitted to an output of the power tool.
Regarding claims 7 and 22, Merget as modified by Yoon teaches the gearbox as in the rejection of claim 6 (as to claim 7) and the power tool as in the rejection of claim 21 (as to claim 22), wherein the output gear is operatively coupled to a driver portion (Merget fig. 5 and ¶ 0029, a motor 214 defines a longitudinal axis 290 wherein the output shaft 218 and a tool chuck 312 [corresponds to the recited driver portion] are coupled coaxially. As discussed above, the output shaft 218 of Merget would be coupled to the output gear by combining with Yoon, therefore, Merget as modified by Yoon teaches the output gear is operably coupled to the driver potion).
Regarding claim 8, Merget as modified by Yoon teaches the gearbox as in the rejection of claim 7, wherein the output gear is operatively coupled to a crankshaft of the driver portion (annotated Merget fig. 5 below, the output shaft, which would be coupled with the output gear by combining with Yoon, is operatively coupled to the tool chuck 312 [corresponds to the recited driver portion] via a shaft).
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Annotated Merget Fig. 5
Claims 11-15, 19, 20, 23, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Merget, as applied to claims 1 and 16 above respectively.
Regarding claims 11-15, 19, 20, 23, and 24, Merget discloses the gearbox as in the rejection of claim 1 (as to claims 11-15), and the power tool as in the rejection of claim 16 (as to claims 19, 20, 23, and 24), but does not disclose the first stage gear assembly has a gear ratio of 1:1 when the ring gear is in the second position (as to claims 11 and 19), the first stage gear assembly has a gear ratio of about 3.6:1 when the ring gear is in the first position (as to claims 12 and 20), the second stage gear assembly has a gear ratio of about 2.2:1 (as to claims 13 and 23), the first stage gear assembly has a gear ratio of about 4.25:1 when the ring gear is in the first position (as to claim 14), and the second stage gear assembly has a gear ratio of about 1.6:1 (as to claims 15 and 24).
However, Merget teaches the multi-stage planetary transmission 304 including multiple planetary stages wherein each planetary gear comprises a plurality of gears (¶ 0030-34). The multi-stage planetary transmission 304 is configured in a low-speed, high torque mode and the high-speed, low torque mode (¶ 0041-42) by moving the ring gear 376. Thus, the motion of the ring gear produces a high or low speed reduction ratio.
On the other hand, it appears specification of the instant application does not present criticality of the recited gear ratios. Each of the recited gear ratios is just one of exemplary gear ratios for various speed settings (¶ 0025-30). For example, claims 12, 14, and 20 recite different gear ratios of the same first stage gear assembly when the ring gear is in the first position. Claims 13, 15, 23, and 24 recite different gear ratios of the same second stage gear assembly. The 2.2:1 ratio of claims 13 and 23 is not disclosed in specification. Specification also states “It will be appreciated that any different gear ratios may be used without departing from the scope and spirit of the present invention” (¶ 0027). Thus, specification of the instant application does not require the gearbox to have specific gear ratios.
Although Merget does not disclose a numerical gear ratio, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the gear ratio of Merget to provide the recited gear ratios in order to obtain appropriate speed reduction for the output of the tool. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05(III).
Claims 25-29 are rejected under 35 U.S.C. 103 as being unpatentable over Merget et al. (US 2019/0134801, hereinafter Merget), in view of Gehret et al. (US 2021/0170564, cited on 07/24/2024 IDS, hereinafter Gehret).
Regarding claim 25, Merget discloses a power tool (figs. 1-2 and ¶ 0002, a rotary power tool 10) comprising:
a housing (fig. 1, motor housing portion 26);
a head coupled to the housing and adapted to drive a work piece (fig. 5 and ¶ 0029, a tool chuck 312 [corresponds to the recited head] at a working end of the housing portion used for retaining a bit);
a motor disposed within the housing (fig. 5, a motor 214 is disposed within the housing portion); and
a gearbox disposed in the housing and operatively coupled to the motor and the head (fig. 6 and ¶ 0030, a gear case 332 [corresponds to the recited gearbox] is disposed in the housing portion and operatively coupled to the motor 214 and the tool chuck 312), the gearbox including:
an input gear operatively coupled to the motor (fig. 6 and ¶ 0031, a first planetary stage 320 includes first stage planet gears 352 [correspond to the recited input gear] are coupled to an output of the motor 214);
a first stage gear assembly including first gears operably coupled to the input gear, a first carrier, and a ring gear (fig. 6 and ¶ 0031-32, a second planetary stage 324 [corresponds to the recited first stage gear assembly] includes a plurality of second stage planet gears 372 [correspond to the recited first gears] which are operatively coupled to the first stage planet gears 352 [correspond to the recited input gear], a first stage carrier 348 [corresponds to the recited first carrier], and a second stage ring gear 376);
a second stage gear assembly including second gears operatively coupled to a pinion and the head (fig. 6 and ¶ 0031, 0034, a third planetary stage 328 [corresponds to the recited second stage gear assembly] includes a plurality of third stage planet gears 388 [correspond to the recited second gears]. The first stage planet gears are engaged to a pinion 364. Because the third planetary stage 328 is coupled to the first planetary stage 320 having the first stage planet gears, the third planetary stage 328 is operatively coupled to the pinion 364. The third planetary stage 328 is also operatively coupled to the tool chuck 312 [corresponds to the recited head] via an output shaft 218); and
a switch coupled to the ring gear, the switch configured to selectively move the ring gear between first and second positions, the first position including the ring gear operatively coupled to the first gears and the second position including the ring gear operatively coupled to the first carrier and the first gears (fig. 6 and ¶ 0037-42, the rotary power tool comprises an actuator 270 [corresponds to the recited switch], coupled to a the ring gear 376, to move the ring gear to a first position (i.e., to the left) and a second position (i.e., to the right) to switch between a low-speed, high torque mode and a high-speed, low torque mode. The first position makes teeth of the ring gear 376 to engage second stage planetary gears 372 [correspond to the first gears] separate from the first stage carrier 348 [corresponds to the recited first carrier], and the second position makes the teeth of the ring gear 376 to engage the first stage carrier 348 and the second stage planetary gears 372 [correspond to the recited first gears]), but does not disclose the power tool is a ratchet tool and the head is a ratchet head.
Gehret teaches, in an analogous power tool field of endeavor, the power tool is a ratchet tool and the head is a ratchet head (figs. 22-24 and ¶ 0115-17, a working end of a power tool 100 has ratchet 550, 590).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the power tool of Merget to provide the ratchet tool including the ratchet head as taught by Gehret so that a user can use a ratchet device as a power tool for convenience.
Regarding claims 26-29, Merget as modified by Gehret teaches the power ratchet tool as in the rejection of claim 25, but does not disclose the first stage gear assembly has a gear ratio of 1:1 when the ring gear is in the second position (as to claim 26), the first stage gear assembly has a gear ratio of about 3.6:1 when the ring gear is in the first position (as to claim 27), the second stage gear assembly has a gear ratio of about 2.2:1 (as to claim 28), and the second stage gear assembly has a gear ratio of about 1.6:1 (as to claim 29).
However, Merget teaches the multi-stage planetary transmission 304 including multiple planetary stages wherein each planetary gear comprises a plurality of gears (¶ 0030-34). The multi-stage planetary transmission 304 is configured in a low-speed, high torque mode and the high-speed, low torque mode (¶ 0041-42) by moving the ring gear 376. Thus, the motion of the ring gear produces a high or low speed reduction ratio.
On the other hand, it appears specification of the instant application does not present criticality of the recited gear ratios. Each of the recited gear ratios is just one of exemplary gear ratios for various speed settings (¶ 0025-30). For example, claims 12, 14, 20, and 27 recite different gear ratios of the same first stage gear assembly when the ring gear is in the first position. Claims 28 and 29 recite different gear ratios of the same second stage gear assembly. The 2.2:1 ratio of claim 28 is not disclosed in specification. Specification also states “It will be appreciated that any different gear ratios may be used without departing from the scope and spirit of the present invention” (¶ 0027). Thus, specification of the instant application does not require the gearbox to have specific gear ratios.
Although Merget does not disclose a numerical gear ratio, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the gear ratio of Merget to provide the recited gear ratios in order to obtain appropriate speed reduction for the output of the tool. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05(III).
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicant argues 112(b) rejections regarding the use of term “about” is incorrect. As Applicant presents the test of indefiniteness hinges on whether one of ordinary skill in the art would understand what is claimed, in light of specification.
Examiner does not assert the term “about” is indefinite categorically. Specification of the instant application provides, in ¶ 0029, the gear ratio of about 4.25:1 may include 4:1 as an acceptable range and the gear ratio of about 1.6:1 may include 1.5:1 as an acceptable range. Therefore, one of ordinary skill in the art would understand a range of possible gear ratios.
However, there is no disclose regarding the gear ratio about 3.6:1 and 2.2:1. It results in great uncertainty in consideration of the gear ratios. Would the gear ratios 3.9: 1 and 1.9:1 be acceptable for the gear ratios about 3.6:1 and 2.2:1? Can the gear ratios between 2.95:1 and 4.25:1 satisfy the gear ratio about 3.6:1 because the gear ratio of the same first stage gear assembly when the ring gear is in the first position can be either about 3.6:1 or 4.25:1? There is a difference of 0.65 between 4.25 and 3.6 so that a lower limit may be 2.95. As Examiner presents there is a lot of ambiguity regarding the gear ratio about 3.6:1 and about 2.2:1. One of ordinary skill in the art would not be able to decide what are the acceptable gear ratio ranges. Thus, the recited gear ratios are vague and indefinite in view of specification, and the 112(b) rejection remains.
Applicant’s arguments with respect to claims 1, 16, and 25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues Gehret and Merget fail to disclose the claim limitations that a ring gear and a switch are coupled and the ring gear is configured to selectively move between first and second positions wherein the first position includes the ring gear operatively coupled to the first gears and the second position includes the ring gear operatively coupled to the first carrier and the first gears.
Previously Examiner cited Gehret for teaching a power tool comprising a first stage gear assembly and a second stage gear assembly, and cited Merget for teaching a use of a switch in selectively moving a ring gear between two positions. Applicant argues the switch mechanism of Merget cannot be combined with Gehret to replace the Gehret’s switching mechanism.
However, upon examination of the Merget reference, Merget teaches not only an actuator 270/switch but also the recited first stage gear assembly (second planetary stage 324) including the recited first gears (second stage planet gears 372), which are operatively coupled to the recited input gear (first stage planet gears 352), the recited first carrier (first stage carrier 348), and the ring gear 376. Merget also teaches the recited second stage gear assembly (third planetary stage 328) including the recited second gears (third stage planet gears 388) which are operatively coupled to the pinion 364.
Moving the ring gear to a first position and a second position renders switching between a low-speed, high torque mode and a high-speed, low torque mode. The first position makes teeth of the ring gear 376 to engage the recited first gears (second stage planetary gears 372) separate from the recited first carrier (first stage carrier 348), and the second position makes the teeth of the ring gear 376 to engage the first stage carrier 348 and the recited first gears (second stage planetary gears 372).
Applicant states in specification of the instant application that one of skill in the art will recognize the use of terms as merely descriptive examples that do not limit the placement, orientation, or disposition of the elements described using such terms (¶ 0032). The terms recited in Merget may not be the exact functional terms of the components, but the mapped components clearly provide the recited gear assemblies and the switch.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kendall et al. (US 2022/0324090) discloses a power tool comprising an output gear coupled with a pinion.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUKWOO JAMES CHANG whose telephone number is (571)272-7402. The examiner can normally be reached M-F 8:00a-5:00p.
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/SUKWOO JAMES CHANG/Examiner, Art Unit 3723