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
This action is in response to applicant amendment received on 04/16/2026:
Amendments of Claims 10 and 23 to 25 are acknowledged.
Cancelation of Claims 11 to 17, 19, 21, 22 and 26 is acknowledged.
New Claims 27 to 31 are acknowledged.
Claim Objections
Claims 10 and 29 to 31 are objected to because of the following informalities:
Regarding Claim 10:
The Status identifier of the claim reads “previously presented” and should read “currently amended”
Regarding Claims 29, 30 and 31:
The Claims mention a “torque spread closet” that the Examiners considers are typos and should actually read --torque spread closest--.
Appropriate correction is required.
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.
Claims 28 to 31 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.
Regarding Claim 28:
The Claim reads “the motor operates on a rotational speed/torque curve n(M), the rotational speed/torque curve n(M) having a first straight line above the predefined torque level and a second straight line below the predefined torque level, the first straight line having a shallower slope than the second straight line”. In the opinion of the Examiner the Applicant is trying to claim the subject matter of Paragraph 0028 and Figure 2, but the figure has very little information and the paragraph, between other things, mentions that “the n(M) curve can be changed by applying field weakening”, but does not explain how or why.
Regarding Claims 29 to 31:
The Claims read: “a maximum efficiency of the motor lying in an upper half of the torque spread closest to the maximum torque”, that the Examiner considers is trying to claim the subject matter of Figure 3, Paragraph 0029. The Figure tries to present an efficiency curve with a widely spaced dashed line that seems to correspond to a typical efficiency curve for a brushless electric motor, but note that it lacks an axis for the efficiency. On a narrowly spaced dashed line presents a “shifted” efficiency curve that is significantly different to the typical one, but the specification does not provide how that “shifting” was obtained beyond:
“the efficiency can be shifted or expanded from a range with high rotational speeds and low torques to a range of low rotational speed and high torque by a defined motor design” (Paragraph 0019).
“the advantages of the invention being made possible in particular by the chosen motor design” (Paragraph 0020).
But the Examiner has been unable to find in the Specification any details regarding such motor design that allows for the shifting or any other component responsible for the claimed result or if the two curves correspond to the same motor and something in the design of the tool causes the “shifting”.
The Examiner wonders if the “shifting” is similar to the disclosure of Dietl (US 2012/0223663), Paragraph 0113, Figure 11 that reads:
[0113] FIG. 11 shows a "boost function", in which the electric motor 10 is briefly operated with an increased torque in order, for example, to overcome an obstruction which is detected by a sensor 19 (FIG. 1). If, for example, the sensor 19 detects a brief rise in the torque which exceeds a specific threshold value, then the torque is briefly increased from the normal characteristic 42 up to the parallel-shifted characteristic 44 with an increased line voltage, as is indicated by the characteristic 46. In order to avoid thermal overloading, the torque is automatically reduced to the normal characteristic 42 again once a predetermined time interval has elapsed (for example 5 seconds).
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The “shifted curve 44 would result in the peak efficiency of the motor being shifted also since the motor would be working on a higher power.
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 10, 18, 20, 23 to 25 and 27 to 31 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.
Regarding Claims 10, 27 and 31:
The claims include limitations a or the “motor is overdimensioned”. In the previous action the Examiner had considered it just as a matter of the power required for the motor being less than the actual motor, by reason of a safety or design factor; but now the limitation recite:
a motor overdimensioned for the group of tools.
the motor overdimensioned to allow operation of a 12mm diameter tool in a circumferential speed range of 2 to 6 m/s and also allow operation of a 450mm diameter tool in the circumferential speed range of 2 to 6 m/s.
So, the Examiner is unclear what the “over dimensioning” entices, the specification does not really provide much guidance and wonders if what the Applicant means is just that the motor is just configured to allow operation of a 12mm diameter tool in a circumferential speed range of 2 to 6 m/s and also allow operation of a 450mm diameter tool in the circumferential speed range of 2 to 6 m/s and as such will read the claims.
Regarding Claim 23:
The Claim reads “the motor employs field weakening to increase the rotational speed of the motor at all times when the motor operates below a predefined torque level”. The limitation is unclear since it does not seem to have support in the Specification; the Specification supports employs field weakening to increase the rotational speed of the motor, and the common practice is to use it at conditions of low torque, but the Specification does not disclose a “predetermined torque” or employing field weakening to increase the rotational speed of the motor at all times when the motor operates below such predefined torque level. For prosecution the Limitation will be read as “the motor is configured to employ field weakening to increase the rotational speed of the motor when the motor operates at a low torque level”.
Regarding Claim 28:
The Claim reads “wherein the motor operates on a rotational speed/torque curve n(M), the rotational speed/torque curve n(M) having a first straight line above the predefined torque level and a second straight line below the predefined torque level, the first straight line having a shallower slope than the second straight line”. The Claim is unclear since the Examiner considers it could be describing the subject matter of Figure 2, Paragraph 0028, but both the paragraph and the figure lack information.
Regarding Claims 29 to 31:
The Claim includes the limitation “a maximum efficiency of the motor lying in an upper half of the torque spread closet to the maximum torque”. The limitation is unclear, the Examiner assumes that the limitation is making reference to some Torque, Speed vs Efficiency chart but not enough information is provided. Also, if the Applicant is trying to claim the subject matter of Figure 3 it is unclear how the “shifted efficiency curve” is obtained.
An Observation regarding the claims:
Claim 10 reads “a group of tools for the power tool being drill bits in a diameter range between of 12 to 450 mm”. The Specification actually mentions that the disclosed power tools are “core drilling devices. With which cylindrical cores can be drilled out of a substrate, such as concrete”. The claimed tools even though are also called “drill bits” they don’t operate in the same way as a “regular” drill bit, even though the limitations regarding adequate circumferential speeds are similar. For prosecution, regular bits and core bits will be considered the same since a device that handles one can most likely handle the other.
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.
Claims 10, 18, 20, 23 to 25 and 27 to 31 are rejected under 35 U.S.C. 103 as being unpatentable over Gass (US 2003/0196824) in view of Drilling Speeds and Feeds ( Drilling Speeds and Feeds, EML2322L – MAE Design and Manufacturing Laboratory, 23/10/2018), Jurshak (US 2003/0007835), Mazaki (US 6394717) and Dietl (US 2012/0223663).
Regarding Claims 10, 18, 20, 23 to 25, 27, 29, 30 and 31:
Gass discloses a method for operating a power tool and a power toll, the power tool having a tool and a motor, the motor being a brushless electric motor (Figures 1 and 4, paragraph 0042, Tool 10 would be the power tool with a keyless chuck 28 carrying a drill bit 92 considered the tool, Paragraph 0064 motor 20 is a brushless motor), the method comprising: implementing in the power tool a rotational speed graduation of the motor in an electronic form (Figure 12, paragraph 0107, max Speed is set at screen on Figure 12 via setting 272 for a corresponding value 276 by scrolling through a menu of available speeds with push buttons 224-228 or by inputting a selected value digit by digit); note that Gass discloses that the motor is directly connected to the keyless chuck, it does not have a mechanical transmission (Paragraph 0086, In the embodiment illustrated in FIG. 9, the armature surrounds the chuck, and they are joined to rotate as a unit), so the speed of the motor is the same speed of the chuck.
Gass discloses that instead of the relatively high speed shown in FIG. 12, it should be understood that a relatively low maximum speed may be entered as well, and it is well known that brushless motors the rotation speed can be set at ranges of 0 to 100% of the rated rotation speed of the motor (Figure 13 shows ramps 284, 285 and 286 from a minimum of 0 to maximum speed); but Gass does not specifically mention setting a “maximum rotational speed” and a “minimum rotational speed” of the motor, having a rotational spread of 2, the rotational speed spread being defined as the quotient of the “maximum rotational speed” and the “minimum rotational speed of the motor”.
Drilling Speeds and Feeds teaches that the peripheral or circumferential speed (velocity) and the rotational speed (velocity) of the drill tool are related as shown in the equation:
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Also teaches the use of recommended peripheral velocities according to the material being drilled:
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So, according to the equation 1 above, to keep the same peripheral or circumferential speed using a different diameter bit.
(N of the first tool) x (Diameter of the first tool)= (N of the second tool) x (Diameter of the second tool)
So, the following relationship applies:
(N of the first tool)/ (N of the second tool)= (Diameter of the second tool)/ (Diameter of the first tool)
Note that the relationship is the same as the claimed “rotational speed spread” that will be identified as RSS and to the “diameter spread” that will be identified as DS; and using the notations:
N of the first tool will be identified as NFT
N of the second tool will be identified as NST
Diameter of the second tool will be identified as DST
Diameter of the first tool will be identified as DFT
To keep the same peripheral or circumferential speed when drilling a material, the relationship can be rewritten as:
RSS= NFT/NST= DST/DFT, where also RSS= DS.
Therefore, if the rotational velocity of the second tool (NST) is smaller than the rotational velocity of the first tool (NFT) by a factor of RSS, to keep the same peripheral or circumferential speed then the Diameter of the second tool (DST) has to be larger than the Diameter of the first tool (DFT) by the same factor RSS, that correspond to DS too.
As an example, a rotational speed spread larger than 2, such as 2.1 is obtained by using a second tool of a diameter calculated by multiplying the diameter of the first tool by 2.1 while at the same time setting the rotational velocity of the second tool at a value obtained by dividing the rotational velocity of the tool by 2.1, to keep the same peripheral or circumferential speed when drilling the same material.
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Gass the teachings of Drilling Speeds and Feeds and have a rotational spread of greater than 2 as defined, by reducing the rotational speed of the bit as when replacing the drill bit for another of a larger diameter or to increase the rotational speed of the bit when replacing the drill bit for another of a reduced diameter by following the relationship
(N of the first tool)/ (N of the second tool)= (Diameter of the second tool)/ (Diameter of the first tool)
as indicated above, so the peripheral speed for the drill bit over the material being drilled stays the same; note that the rotational spread can be also obtained as the quotient of the “larger diameter drill bit” and the “smaller diameter drill bit”, corresponding to a “diameter spread” and the two drill bits can be considered a “group of tools”
Gass does not disclose a group of tools for the power tool being drill bits in a diameter range between of 12 to 450 mm.
That particular range of size for core drill bits is common in the market, in particular Jurshak teaches core bits on a similar range and also recommended speeds for them when drilling on concrete. Smaller sizes can be easily found on catalogs.
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Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Gass the teachings of Jurshak and use a tool on the claimed range if that is the size hole that is needed to be drilled.
Gass does not disclose if the motor is overdimensioned to allow operation of a 12mm diameter tool in a circumferential speed range of 2 to 6 m/s and also allow operation of a 450mm diameter tool in the circumferential speed range of 2 to 6 m/s; wherein the motor has a rotational speed range and a torque range and is operated in a lower half of the rotational speed range and an upper half of the torque range when operating with the 450mm diameter tool.
Using the equations discussed above the Examiner calculated that to allow operation of a 12mm diameter tool in a circumferential speed range of 2 to 6 m/s the motor has to operate on a range of 3183 to 9549 RPMs; while to allow operation of a 450mm diameter tool in the circumferential speed range of 2 to 6 m/s the motor has to operate on a range of 85 to 255 RPMs. So, to satisfy the Claim the motor has to be able to operate on a range of 85 to 9549 RPMs to meet both ends of the circumferential speed range of 2 to 6 m/s.
Mazaki on Figure 6 teaches a motor to operate a core drill driver without a transmission that operates in the claimed range for high-speed perforation, 85 to 255 RPMs corresponds to a lower half of the rotational speed range and an upper half of the torque range when operating with the 450mm diameter tool
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Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Gass the teachings of Mazaki and use a motor in the claimed range for high-speed perforation that allows for operation in the claimed range of speeds. Note that a cursory review of catalogs produce multitude of suppliers of motors in the range of 0 to 10000 RPMs.
Gass does not disclose the motor operating with a torque spread from zero to a maximum torque, a maximum efficiency of the motor lying in an upper half of the torque spread closest to the maximum torque.
As can be seen on the Figure 6 above, the motor operates with a torque spread from 0 to about 9.5 N-m, that will be considered maximum torque, a maximum efficiency of the motor, that can be estimated at 52% in the Figure is in an upper half of the torque spread closest to the maximum torque, so the limitation as claimed seems something common on this motors.
As discussed for Claims 10 and 18 above, the modified invention of Gass discloses the invention as claimed.
The modified invention of Gass does not disclose if the motor employs field weakening to increase the rotational speed of the motor, wherein the motor has an upper half of a speed range and a lower half of a speed range and the field weakening operates solely in the upper half of the speed range or wherein a relationship of a torque to the rotational speed of the motor in the upper half of the speed range is different than in the lower half of the speed range owing to the field weakening.
Dietl discloses to change the rotation-speed/torque characteristic of a brushless motor (Abstract, paragraph 0074, motor 10) using field weakening to provide a “boost function” for the rotation speed of the motor if required, (Paragraphs 0110, 0114, Figure 12, if a sensor detects a brief reduction in the rotation speed, which exceeds a specific threshold value per unit time, then the motor is briefly operated at an increased rotation speed); Figure 12 shows a “normal characteristic” torque vs speed curve 42, that will be considered a lower half of a speed range and a “parallel-shifted characteristic” torque vs speed curve 44, that will be considered an upper half of a speed range, when Field weakening is applied, the motor is briefly operated at an increased rotation speed, as is indicated by the characteristic 48 to curve 44 that is considered the upper half of a speed range, during the period indicated on 48, the relationship of a torque to the rotational speed of the motor is different as the relationship before the boost caused by the field weakening was applied.
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Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to the modified invention of Gass the teachings of Dietl and use field weakening to increase the rotational speed of the motor as disclosed to provide a “boost function” for the rotation speed of the motor if a brief reduction in the rotation speed, which exceeds a specific threshold value is detected, briefly operating the motor on upper half of a speed range, as the use of field weakening to increase the rotational speed of an electric motor is a common practice in the art.
Regarding Claim 28:
The Claim is too confusing to allow proper interpretation, but the “steeper gradient” seems to be caused by increasing speed on a low torque condition by the use of field weakening, something already discussed by Dietl and very common in the art.
On Figure 8 Dietl teaches a similar graphic, were 32 shows the normal operation of the motor and 34 operation with field weakening.
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Response to Arguments
Applicant's arguments filed 04/14/2026 have been fully considered but they are not persuasive.
Claim 10 was amended to include the limitation:
“the motor overdimensioned to allow operation of a 12mm diameter tool in a circumferential speed range of 2 to 6 m/s and also allow operation of a 450mm diameter tool in the circumferential speed range of 2 to 6 m/s;
wherein the motor has a rotational speed range and a torque range and is operated in a lower half of the rotational speed range and an upper half of the torque range when operating with the 450mm diameter tool”.
As shown on the Office action, the reference Jurshak (US 2003/0007835) teaches sets of core drill bits in the claimed range and using the equations discussed the Examiner calculated that to allow operation of a 12mm diameter tool in a circumferential speed range of 2 to 6 m/s the motor has to operate on a range of 3183 to 9549 RPMs; while to allow operation of a 450mm diameter tool in the circumferential speed range of 2 to 6 m/s the motor has to operate on a range of 85 to 255 RPMs. So, to satisfy the Claim the motor has to be able to operate on a range of 85 to 9549 RPMs to meet both ends of the circumferential speed range of 2 to 6 m/s.
Mazaki (US 6394717) on Figure 6 teaches a motor to operate a core drill driver without a transmission that operates in the claimed range for high-speed perforation, and a range of 85 to 255 RPMs corresponds to a lower half of the rotational speed range and an upper half of the torque range when operating with the 450mm diameter tool.
The Action includes new rejections under 112(a) and 112(b) that need to be properly addressed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In particular, a proper rejection of the independent claim can be made with Beck (US 2015/0303848), Masaki (US 6394717) or Yamamoto (US 2015/0122513); Jurshak (US 2003/0007835) can be used for teachings of circumferential speeds of bits operating on concrete; Saar (US 4307325) and Shinohara (US 4831364) teach controlling the speed of a drill motor in reference to the material being drilled and the diameter of the bit. Dietl (US 2012/0223663) teaches increasing the torque of a motor without changing the speed by increasing the line voltage.
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 EDUARDO R FERRERO whose telephone number is (571)272-9946. The examiner can normally be reached M-F 9:30-7:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SHELLEY SELF can be reached at 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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/EDUARDO R FERRERO/Examiner, Art Unit 3731
/ROBERT F LONG/Primary Examiner, Art Unit 3731
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