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 .
This action is in response to the amendments and remarks received on February 17, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant's arguments filed February 17, 2026 have been fully considered but they are not persuasive.
Applicant has argued that neither the primary reference of ANDERSON nor the secondary teachings of SUZUKI et al. disclose the claims as amended. In particular, on pages 4-5 of the pending remarks, Applicant states ANDERSON fails to teach or suggest “using the rotation speed of the axial motor as the motor state to control a screw-fastening operation”. Regarding the use of the tool disclosed by Anderson to drive a fastener, a recitation of the intended use (nail vs screw) of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The tool claimed by applicant includes the structure of a bit driven by a motor that is regulated by a controller.
In this case, paragraph [0030] of ANDERSON acknowledges the desire to control the rotational speed of the drive (motor) for the purpose of controlling operation of the tool, thereby preventing damage to a work material. Operation of the tool is structurally regulated by a controller configured as claimed. Paragraph [0074-0075] and [0079-0081] of ANDERSON discloses an electronic package 236 that controls the rotational speed of the motor (RPM) as desired.
Applicant further argues that neither of the cited references disclose monitoring the axial movement speed of a bit holding portion in accordance to a predetermined threshold. However, Paragraph [0075 of ANDERSON ] discloses a controller configured to control the axial feed rate of the tool bit holding portion. With respect to the controller configured to regulate the axial feed rate as claimed, Examiner has relied upon the teachings of SUZUKI.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 0
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 and 5-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ANDERSON (US 2011/0245833) in view of SUZUKI et al. (US 8,890,449).
In reference to claim 1, ANDERSDON teaches a tool comprising: a bit 110 held in a bit holding portion 90 that is movable in an axial direction (figures 1-2) ; a motor 30 configured to move the bit holding portion 90 in the axial direction; a controller (encoder) configured to control output of the motor 30 to control a movement speed of the bit holding portion in the axial direction (paragraph [0079]); and a motor state detector (i.e. axial force and/or torque sensor) configured to detect a state (e.g. speed, velocity, acceleration or torque-paragraph [0079]) of the motor, wherein the controller is configured to control the movement (speed) of the bit holding portion along the axial direction based on the state of the motor when the bit 110 is engaged with a target (paragraphs [0075] & [0080]).
Paragraphs [0074-0075], [0099] and [0102] of ANDERSON discloses the controller configured to monitor and control movement (speed) of the bit holding portion 90 based on measured output (e.g. speed of rotation (RPM), torque, voltage) of the motor according to predetermined parameters (threshold); however, ANDERSON does not provide specific examples of controller responses as claimed. SUZUKI et al. teaches a tool (figure 1) comprising: a motor 20 configured to move a bit holding portion 8; and a controller (figure 2) configured to decrease the output of the motor 20 when a movement speed of the bit holding portion (column 7 lines 24-27) is at or lower than a predetermined speed (column 10 line 60- column 11 line 3 & 17-28; column 13 lines 4-67; S320); and, increase the movement speed of the bit holding portion, after decreasing the output of the motor, within a range less than a first movement speed of the bit holding portion before (again) decreasing the output of the motor according to column 15 lines 16-26. It would have been obvious to one having ordinary skill in the art at the time of filing the invention to have modified the controller of ANDERSON to decrease the output of the motor when the bit holding portion speed is lower than predetermined speed since column 1 lines 15-17 and column 4 lines 21-27 of SUZUKI et al. state such a modification relates to the functional drive (avoiding damage) of the motor of an electric power tool for the purpose of stopping movement of the bit holding portion based on a rotational speed of the bit holding portion as expressed by ANDERSON in paragraph [0099].
In reference to claim 5, the controller of ANDERSON as modified in view of SUZUKI et al. is configured to return to the first movement speed after decreasing the output of the motor according to column 15 lines 16-26.
Regarding claim 6, ANDERSON further discloses a first and second switch portion 32, 62 to change the fastening tool between an axially movable first mode (32) and a rotably movable second mode (62). ANDERSON does not disclose a mode switch actuating a first and second mode of the controller as claimed.
SUZUKI et al. teaches a tool (figure 1) comprising: a motor 20 configured to move a bit holding portion 8; a mode switch portion 9 configured to switch a controller (figure 2) between a first mode and a second mode (i.e. low speed, medium speed or high speed); and the controller configured to decrease (e.g. terminate) the output of the motor 20 when a movement speed of the bit holding portion (column 7 lines 24-27) is at or lower than a predetermined speed in either of the first mode and the second mode (column 10 line 60- column 11 line 3 & 17-28; column 13 lines 4-67; S320). It would have been obvious to one having ordinary skill in the art at the time of filing the invention to have modified the controller of ANDERSON to decrease the output of the motor when the bit holding portion speed is lower than predetermined speed since column 1 lines 15-17 and column 4 lines 21-27 of SUZUKI et al. state such a modification relates to the functional drive (avoiding damage) of the motor of an electric power tool for the purpose of stopping movement of the bit holding portion based on a rotational speed of the bit holding portion as expressed by ANDERSON in paragraph [0099].
With respect to claim 7, the controller of ANDERSON as modified in view of SUZUKI et al. is configured to increase the movement speed of the bit holding portion, after decreasing the output of the motor, within a range less than a first movement speed of the bit holding portion before (again) decreasing the output of the motor according to column 15 lines 16-26.
In reference to claim 8, the controller of ANDERSON as modified in view of SUZUKI et al. is configured to return to the first movement speed after decreasing the output of the motor according to column 15 lines 16-26.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to the previously attached PTO-892 for a notice of references cited and recommended for consideration based on their disclosure of limitations related to the claimed invention. In particular, consider the disclosures of DELMAN et al. (US 2020/0100799) and WEBSTER (US 2006/0243469).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GLORIA R WEEKS whose telephone number is (571)272-4473. The examiner can normally be reached M-F 8am-2pm & 5pm-7pm EST.
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/GLORIA R WEEKS/Primary Examiner, Art Unit 3731
November 10, 2025
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