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 Request for Continued Examination filed on 20 January 2026.
Claims 13, 16, 18, 20 – 23, and 25 – 26 are pending. Claims 1 – 12, 14 – 15, 17, 19, 24, and 27 are cancelled by the applicant.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 January 2026 has been entered.
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 13, 16, 18, and 21 – 22 are rejected under 35 U.S.C. 103 as being unpatentable over Manschitz (EP 3 181 302 A1).
Regarding claim 13, Manschitz discloses a hand-held power tool, comprising:
a tool (4, fig. 2);
a tool fitting (2, fig. 2), wherein the tool is holdable in the tool fitting (As shown in figure 2);
an impact mechanism (5, fig. 2); and
a rotary drive (7, fig. 2);
wherein the hand-held power tool (22, fig. 2) is configured to rotate the tool held in the tool fitting with a rotational speed about a longitudinal axis (3, fig. 2) of the tool (Figure 2 shows a drill, chisel, or other percussive tool 4 held in a tool holder 2. [0007], l. 69 describes a rotary drive 7 rotating a tool holder 2 around a working axis 3 wherein rotation implies a rotational speed) and to drive the tool with an impact movement along the longitudinal axis at an impact frequency ([0007], Il. 67 – 68 describes a pneumatic impact mechanism 5 periodically applying blows in an impact direction 6 wherein periodically applying blows in the impact direction 6 implies an impact frequency) and wherein the impact mechanism is one of a direct electromechanical impact mechanism, an electropneumatic impact mechanism ([0007], Il. 70 – 71 describes a pneumatic impact mechanism 5 driven by an electric motor 8 wherein the examiner deems this arrangement of the pneumatic impact mechanism5 driven by the electric motor 8 as the claimed, “electropneumatic impact mechanism”) or an electromagnetic impact mechanism;
wherein at a working point of the hand-held power tool in a hammer drill mode of the hand-held power tool, wherein the working point corresponds to a full load operation of the hand-held power tool in the hammer drill mode, the rotational speed is limited to at most (0.2*(f/Hz- 22)^2+80) rpm for all impact frequencies in a range from 20 to 60 Hz ([0012], l. 128 describes impact frequencies in a range of 25 Hz – 100 Hz, wherein a portion of this range, 25 Hz – 60 Hz, is within the claimed range of 20 Hz – 60 Hz. According to the claimed formula, for all impact frequencies in the range of 25 Hz – 60 Hz, the rotational speed should be limited to at most from 81 rpm – 1297 rpm. [0015], ll. 155 – 156 describes a rotational speed of a spindle 13, wherein [0014], l. 147 – 148 describes the tool holder 2 connected to the spindle 13, of less than 20 rpm. Thus, for all impact frequencies in a range of 25 Hz – 60 Hz, the rotational speed is limited to at most (0.2*(f/Hz- 22)^2+80) rpm) such that the rotational speed is slow in relation to the impact frequency at the working point (The examiner interprets the claimed formula, (0.2*(f/Hz- 22)^2+80) rpm, as a standard to determine a degree of slowness of the rotational speed in relation to the impact frequency. That is, given the impact frequency in the range of 20 Hz – 60 Hz, if the rotational speed at the working point is at most (0.2*(f/Hz- 22)^2+80) rpm then the rotational speed is slow in relation to the impact frequency. In the instant case, [0015], ll. 155 – 156 and [0012], l. 128 describes the rotational speed as less than 20 rpm which is less than the resulting rotational speed from the claimed formula given impact frequencies of 25 Hz – 100 Hz at the working point) such that the rotational speed at the working point sufficiently offsets the tool rotationally between two successive impacts of the tool ([0015], ll. 154 – 160 describes an embodiment where a spindle 13, which is connected to the tool holder 2 and tool 4, rotates continuously while the impact mechanism 5 strikes the tool periodically. Thus, the rotational speed of the spindle 13 rotates or offsets the tool 4 rotationally between two successive, periodic impacts of the tool 4 in a manner sufficient to provide an operational hand-held power tool as described by Manschitz).
Manschitz does not explicitly disclose friction losses of the tool when crushing a rock due to the rotational speed of the tool are reduced.
However, Manschitz discloses a hand-held tool structurally the same as the claimed apparatus (see above) and further discloses the same operational criteria for the rotational speed for all impact frequencies in a range of 25 Hz – 60 Hz as the claimed apparatus wherein the rotational speed is slow in relation to the impact frequency at the working point (see above).
Therefore, one having ordinary skill in the art would recognize before the effective filing date of the claimed invention and find obvious that while Manschitz does not explicitly disclose that the friction losses of the tool when crushing a rock due to the rotational speed of the tool are reduced, Manschitz would inherently possesses the functionally defined limitations of the claimed apparatus such as the friction losses of the tool when crushing a rock due to the rotational speed of the tool are reduced because Manschitz is structurally the same as the claimed apparatus and operates within the claimed operational criteria.
Regarding claim 16, Manschitz discloses the invention as recited in claim 13.
Manschitz discloses at most one drive unit (8, fig. 2) for driving the impact mechanism (5, fig. 2) and the rotary drive (7, fig. 2) ([0007], ll. 70 – 71).
Regarding claim 18, Manschitz discloses the invention as recited in claim 13.
Manschitz discloses the hand-held power tool (22, fig. 2) is configured such that a type of the tool is settable by a user of the hand-held power tool ([0007], ll. 65 – 66 describes different types of tools such as a drill, a chisel, or other percussive tool 4 can be inserted into the tool holder 2 by a user and locked coaxially to a working axis 3).
Regarding claim 21, Manschitz discloses the invention as recited in claim 13.
Manschitz discloses the hand-held power tool (22, fig. 2) is a portable device ([0007], l. 64 describes the hammer drill as a percussive hand-held machine tool wherein the examiner deems a hand-held tool as portable or easily carried or moved).
Regarding claim 22, Manschitz discloses the invention as recited in claim 13.
Manschitz discloses the hand-held power tool (22, fig. 2) is operatable cordlessly ([0007], ll. 70 – 71 describes the hammer drill driven by an electric motor 8 which is supplied with electrical power from a battery 9).
Claims 20 and 25 – 26 are rejected under 35 U.S.C. 103 as being unpatentable over Manschitz (EP 3 181 302 A1), in view of Bohn (EP 3 311 951 A1).
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Regarding claim 20, Manschitz discloses the invention as recited in claim 13.
Manschitz does not explicitly disclose a pneumatic cuttings conveying device or an electropneumatic cuttings conveying device.
However, Bohn, in the same field of endeavor, teaches (2, fig. 3).
Bohn is evidence that having the electropneumatic cuttings conveying device was within the skill of one having ordinary skill in the art before the effective filing date of the claimed in invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success before the effective filing date of the claimed invention modifying the hand-held power tool of Manschitz with the electropneumatic cuttings conveying device, taught by Bohn. Additionally, the one having ordinary skill in the art would have been motivated to modify the hand-held power tool of Manschitz with the electropneumatic cuttings conveying device and a suction drill, taught by Bohn, in order to remove drilling dust that is generated when the hand tool is switched on.
Regarding claim 25, Manschitz discloses the invention as recited in claim 13.
Manschitz further discloses a tool (4, fig. 2), wherein the tool comprises:
a tool tip (A, annotated fig. 2);
a tool shaft (B, annotated fig. 2); and
a shank (C, annotated fig. 2), wherein the tool is holdable in the tool fitting (2, fig. 2) by the shank.
Manschitz does not explicitly disclose a material transport channel is formed at least along the tool shaft and wherein the material transport channel has a minimum cross-sectional area of 19 mm2 or at least 6% of a cross-sectional area of a borehole that is producible by the tool.
However, Bohn, in the same field of endeavor, teaches a tool (35, fig. 3) comprising a tool tip (A, annotated fig. 3); a tool shaft (B, annotated fig. 3); a shank (C, annotated fig. 3), wherein the tool is holdable in the tool fitting (3, fig. 3) of the hand held power tool (1, fig. 3) by the shank; and a material transport channel (one of the “suction channels” described in [0035]) is formed at least along the tool shaft.
Bohn is evidence that having the tool comprising the tool tip; the tool shaft; a shank, wherein the tool is holdable in the tool fitting of the hand-held power tool by the shank; and a material transport channel is formed at least along the tool shaft was within the skill of one having ordinary skill in the art before the effective filing date of the claimed in invention. Therefore, the one having ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success modifying the hand-held power tool of Manschitz with the tool, taught by Bohn. Additionally, the one having ordinary skill in the art would have been motivated to modify the hand-held power tool of Manschitz with the tool and an electropneumatic cuttings conveying device, taught by Bohn, in order to remove drilling dust that is generated when the hand tool is switched on.
The modified Manschitz does not explicitly disclose the material transport channel has a minimum cross-sectional area of 19 mm2 or at least 6% of a cross-sectional area of a borehole that is producible by the tool.
Please note, the cross-sectional area of the material transport channel is a variable that directly affects the flow rate of a fluid through the material transport channel (
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the material transport channel to have the minimum cross-sectional area of 19 mm2, since it has been held that where the general conditions of a claim are disclosed in the prior art, determination of the optimum or workable ranges of a result-effective variable, in this case, the cross-sectional area of the material transport channel, involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 26, Manschitz, as modified by Bohn, discloses the invention as recited in claim 25.
The modified Manschitz further discloses the tool (Bohn – 35, fig. 3) is a suction drill (Bohn – [0035], l. 385).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Manschitz (EP 3 181 302 A1), in view of Ludy (US 8 636 081 B2).
Regarding claim 23, Manschitz discloses the invention as recited in claim 22.
Manschitz further discloses the hand-held power tool has a battery (9, fig. 2).
Manschitz does not explicitly disclose that the battery is a lithium-containing battery.
However, Ludy, in the same field of endeavor, teaches a hand-held power tool having a lithium-containing battery (42, fig. 1) (Col. 3, ll. 5 – 9 describes a battery may be configured having any number of different chemistries (e.g., lithium-ion, nickel-cadmium, etc.)).
Ludy is evidence that having a lithium-containing battery for a hand-held power tool was 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 before the effective filing date of the claimed invention would have had a reasonable expectation of success modifying the battery of Manschitz with a lithium-containing battery, taught by Ludy. Additionally, the one having ordinary skill in the art would have been motivated to modify the battery of Manschitz with a lithium-containing battery, taught by Ludy, in order to provide a battery with improved discharge and charge efficiency and a longer life span.
Response to Arguments
Applicant’s arguments, filed 30 January 2026, with respect to the rejection of claims 13, 16, 18, 20 – 23, and 25 – 26 under 35 USC §102(a)(1) has been fully considered but are not persuasive.
Applicant argues:
Manschitz does not, however, disclose the rotational speed (n) is limited to at most (0.2*(f/Hz-22)^2+80) rpm for all impact frequencies (f) in a range from 20 to 60 Hz. While the Office Action argues that this is disclosed by the 20 rpm rotational speed and the 25-100 Hz impact frequency range, this is not the case.
As an initial distinction, the 20 rpm rotational speed of the spindle 13 (and by extension the tool 4) is not a limit for the rotational speed. It is rather expressly described as an "example" and describes only that the rotational speed "may" be rotated at a speed of less than 20 rpms. Id. [0015]. This in no way describes 20 rpms as an upper boundary or limit that cannot be exceed. It at best describes the spindle 13 as capable of rotating at less than 20 rpms-not that it necessarily has to stay under 20 rpms. To be clear, the claim element is not that the rotational speed is less than, but that it is limited to at most, the rotational speed set forth by the claimed relationship for the claimed operational range of impact frequencies. And Manschitz does not disclose the spindle rotation as limited to at most 20 rpms-only that it is capable of rotating at less than 20 rpms.
In response to applicant’s argument that due to the term, “for example” in Manschitz, Manschitz does not disclose that the spindle rotation as limited to at most 20 rpms, the applicant speculates that where Manschitz recites that “the spindle 13 can be rotated continuously via the reduction gear 20 at a speed of less than 20 revolutions per minute (rpm)”, the rpms do not necessarily have to stay under 20 rpms. Manschitz recites, “[f]or example, the spindle 13 can be rotated continuously via the reduction gear 20 at a speed of less than 20 revolutions per minute (rpm)” ([0015], ll. 155 – 156), wherein the phrase, “rotated continuously…at a speed of less than 20 revolution per minute,” explicitly indicates that in this example the rate of rotation (frequency) is maintained within a specific range of less than 20 revolution per minute defining an upper limit/boundary of ~20 rpm and a lower limit/boundary of 0 rpm. Applicant seems to argues that the term, “for example”, speculatively implies other non-recited examples in Manschitz where the spindle 13 can be rotated continuously at a speed greater than 20 revolutions per minute (rpm); however, the examiner is not relying on those other non-recited examples – or, in other words, those other non-recited embodiments – for the current rejection. The current rejection relies on the recited example or embodiment where “the spindle 13 can be rotated continuously via the reduction gear 20 at a speed of less than 20 revolutions per minute (rpm)” as explicitly stated in Manschitz. Given that the current rejection is based on this recited example, the applicant’s argument that the spindle 13 may rotate greater than 20 rpms is without evidence and nonsensical. That is, it does not make sense that in the example where “the spindle 13 can be rotated continuously via the reduction gear 20 at a speed of less than 20 revolutions per minute (rpm)” that the spindle 13 in this example would then rotate at 20 rpms or higher violating its own explicitly stated conditional statement of rotating at a speed of less than 20 rpm. Thus, applicant’s argument that Manschitz does not disclose that the spindle rotation as limited to at most 20 rpms is unpersuasive.
Applicant further argues:
But, even if the 20 rpm rotational speed of the spindle 13 is viewed as a limit on spindle rotation speed (it is not), the claim limitation remains untaught because of the linear relationship between Manschitz' spindle rotation speed and impact frequency-i.e., n = k * f. Supra.
When the fixed angle constant k is solved for the assumed limit of rotational speed (n) (i.e., 20 rpms) and the corresponding highest impact frequency (f) (i.e., 100 Hz), it results in k = 0.02 rpm/Hz. Solving then for the rotational speed using the claimed impact frequency of 60 Hz, results in a corresponding rotational speed limit of 12 rpms for an impact frequency of 60 Hz-which is well below the rotational speed limit of 368.8 rpms calculated for 60 Hz via the claimed relationship. Similarly solving for the rotational speed using the claimed impact frequency of 20 Hz, results in a corresponding rotational speed limit of 4 rpms-which is also well below the rotational speed limit of 80.8 rpms calculated for 20 Hz via the claimed relationship. Thus, at no point within the claimed impact frequency range does the alleged rotational speed limit of Manschitz' spindle 13 correspond the rotational speed limit delineated by the relationship set forth in claim 13. They are (even as alleged) entirely different upper boundaries that do not correspond.
This is because the fundamental principles of the claimed invention and Manschitz are different. Manschitz describes a fixed-angle-per-impact synchronization in which the spindle 13 rotates by a fixed setting angle (umsetzwinkel) within each period of the striker 15. Id. This creates the linear relationship (i.e., n = k * f) between the rotational speed (n) of the spindle 13 and the impact frequency (f). This is a fundamentally different and less sophisticated control principle than the claimed invention, which sets a quadratic relationship (i.e., n = 0.2 * (f - 22)^2 + 80) between the maximum allowable rotational speed (n) and the impact frequency (f). The claimed quadratic relationship dynamically optimizes the rotational speed as function of impact frequency. This ensures that, for frequencies within the operational range, the rotation is slow enough to reduce friction losses (especially when crushing rock with a suction drill) but fast enough to sufficiently offset the tool for effective material removal between impacts.
In response to applicant’s argument that the control principle in Manschitz differs from the control principle in applicant’s claimed invention, Manschitz still reads on the independent claim 13. Claim 13 states, “the rotational speed (n) is limited to at most (0.2*(f/Hz-22)^2+80) rpm for all impact frequencies (f) in a range from 20 to 60 Hz”. Manschitz discloses in a range of impact frequencies of 25Hz to 60Hz (see [0012] of Manschitz), the rotational speed is limited to at most less than 20 rpm (see [0015] of Manschitz) which is significantly less than at most 81.8 rpm at 25Hz and is limited to at most 368.8 rpm at 60Hz as calculated by the claimed formula. In applicant’s argument, the applicant states that the control principle in Manschitz differs from the control principle in applicant’s claimed invention and speculates a formula between the relationship of the impact frequency (Hz) and the rotational speed (rpm) in Manschitz. Please note, this speculated formula is not disclosed in Manschitz and is formed by theory/conjecture without any firm evidence. However, even given this speculated formula, in the ranges of 25HZ to 60Hz disclosed by Manschitz, the resulting rotational speeds cited by applicant in his response to arguments are still significantly less than at most 81.8 rpm at 25Hz and is limited to at most 368.8 rpm at 60Hz as calculated by the claimed formula – and thus, still reads on the claim. It seems that the features upon which applicant relies (i.e., the control principle in applicant’s claimed invention) are not recited in the rejected claim in such a way that it is distinguished from the control principle in Manschitz. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The examiner suggests amending the claim to distinguish the control principle in applicant’s claimed invention over the control principle in Manschitz. Since the features upon which applicant relies (i.e., the control principle in applicant’s claimed invention) are not recited in the rejected claim in such a way that it is distinguished from the control principle in Manschitz and since Manschitz reads on the claim, the applicant’s argument that the control principle in Manschitz differs from the control principle in applicant’s claimed invention is unpersuasive.
Conclusion
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
26 February 2026