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 .
This Office Action is in response to the applicant’s amendment filing on 05/07/2026.
Applicant’s cancelation of claims 8-9 is acknowledged and require no further examining. Claims 1-7 and 10-17 are pending and examined below.
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 1-7 and 11-17 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 pre-AIA the applicant regards as the invention.
Regarding claim 1 line 14, the phrase “transmitting the remaining number” renders claim 1 vague and indefinite because it is unclear where the information is being transmitted to. Prior to the quoted phrase, claim 1 does not disclose communicating or transmitting with another device. It is unclear where the information is being transmitted to. For examining purposes, the phrase is interpreted as “transmitting to a device to indicate the remaining number”.
Regarding claim 7 line 4, the phrase “screw connection is or is not satisfactory” renders claim 7 vague and indefinite because it is unclear what is considered satisfactory. The term “satisfactory” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Prior art that discloses determining the screwing operation meeting the desired condition is considered to be satisfactory.
Claims 2-6 and 11-17 are dependent of claim 1 and include all the same limitations.
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 1-7 and 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over reference Mergener et al. (10,131,043) in view of references Harada et al. (2013/0264087) and Erickson et al. (10,036,782).
Regarding claim 1, Mergener et al. disclose a method for controlling a hand-held power tool (200), wherein the hand-held power tool (200) includes: a driving motor (214); and a control unit (226), and wherein the method comprising the steps of:
setting an operating stage for controlling the drive motor (214) by way of the control unit (226),
wherein the operating stage includes a direction of rotation of the drive motor (214), a rotational speed of the drive motor (214), and a cut-off criterion;
operating the drive motor (214) depending on the set operating stage;
braking the drive motor (214) when the cut-off criterion is met;
determining a battery voltage of a hand-held power tool rechargeable battery pack (400) of the hand-held power tool (200) by way of the control unit (226); and
transmitting to a device (220) to indicate the status of the power tool (200).
(Figure 2, 3, 5, 7, 30, 31 and Column 3 lines 40-56, Column 7 lines 56-65, Column 12 lines 13-17, 22-28, Column 31 lines 35-40, Column 32 lines 15-29, Column 33 lines 8-23, Column 40 lines 2-7)
However, Mergener et al. do not disclose setting a rotational speed constancy, and do not disclose determining a remaining number of screw connections.
Harada et al. disclose a method for controlling a hand-held power tool (1), wherein the hand-held power tool (1) includes: a driving motor (30); and a control unit (15), and wherein the method comprising the steps of:
setting a rotational speed constancy of the rotational speed of the drive motor (30);
operating the drive motor (30) depending on the set rotational speed constancy; and
braking the drive motor (3) when a cut-off criterion is met.
(Figure 1, 5 and Page 2 paragraph 51, Page 3 paragraph 53, Page 4 paragraph 67, 68)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Mergener et al. by incorporating the setting and use of a rotational speed constancy as taught by Harada et al., since page 1 paragraph 10 states such a modification would allow the power tool to operate in a quiet mode.
Erickson et al. disclose control unit (30) configured to:
determine a battery voltage of a battery pack (40);
comparing the battery voltage to a battery voltage limit value (64A-64N); and
in response to the battery voltage falling below the battery voltage limit value (64A-64N), determining a remaining number of operations.
(Column 3 lines 51-54, Column 7 lines 61-65, Column 10 lines 36-39, Column 11 lines 11-16, Column 12 lines 66-67 through Column 13 lines 1-9)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Mergener et al. by incorporating the determining the remaining number of operations as taught by Erickson et al., since column 13 lines 4-15 of Erickson et al. states such a modification would allow the user to know how may operation are remaining at the current battery voltage level.
Regarding claim 2, Mergener et al. modified by Harada et al. and Erickson et al. disclose the rotational speed is essentially constant rotational speed when the rotational speed constancy is activated. (Harada et al. – Page 4 paragraph 67)
Regarding claim 3, Mergener et al. modified by Harada et al. and Erickson et al. disclose the rotational speed is maximum rotational speed when the rotational speed constancy is deactivated. (Mergener et al. – Column 34 lines 50-54)
Regarding claim 4, Mergener et al. modified by Harada et al. and Erickson et al. disclose detecting a current rotational speed of the drive motor (Mergener et al. – 214) by way of the control unit (Mergener et al. – 226) and comparing the current rotational speed with the set rotational speed. (Mergener et al. – Column 7 lines 50-55)
Regarding claim 5, Mergener et al. modified by Harada et al. and Erickson et al. disclose detecting a current rotational speed is controlled by way of the control unit (Mergener et al. – 226) if the comparison results in a deviation by the current rotational speed form the set rotational speed. (Mergener et al. – Column 7 lines 50-55)
Regarding claim 6, Mergener et al. modified by Harada et al. and Erickson et al. disclose receiving an operating stage from an external communication device (800) by way of the control unit (Mergener et al. – 226). (Mergener et al. – Column 4 lines 7-9)
Regarding claim 7, Mergener et al. modified by Harada et al. and Erickson et al. disclose transmitting to the device to indicate a screwing operation is complete when the cut-off criterion is reached, wherein screwing operation has met the desired condition and is therefore considered satisfactory. (Mergener et al. – Column 7 lines 56-65, Column 36 lines 17-23)
Regarding claim 11, Mergener et al. modified by Harada et al. and Erickson et al. disclose the operating stage comprises a high-speed rotation stage, wherein, during the high-speed rotation stage, a high-speed rotation stage number of revolutions is performed in a tightening direction of rotation at a high-speed rotation stage speed. (Mergener et al. – Column 36 lines 15-26)
Regarding claim 12, Mergener et al. modified by Harada et al. and Erickson et al. disclose the operating stage comprises a cut-off stage, wherein, during the cut-off stage, a cut-off stage rotational speed is performed in a tightening direction of rotation until a cut-off torque is met as the cut-off criterion. (Mergener et al. – Column 33 lines 14-21, Column 38 lines 19-24)
Regarding claim 13, Mergener et al. modified by Harada et al. and Erickson et al. disclose the operating stage comprises a loosening stage, wherein, during the loosening stage, a loosening stage number of revolutions is performed in a loosening direction of rotation. (Mergener et al. – Column 34 lines 4-11)
Regarding claim 14, Mergener et al. modified by Harada et al. and Erickson et al. disclose a control unit (Mergener et al. – 226) configured to perform the method according to claim 1. (Mergener et al. – Figure 3 and Column 8 lines 46-56)
Regarding claim 15, Mergener et al. modified by Harada et al. and Erickson et al. disclose a hand-held power tool (Mergener et al. – 200) comprising: a driving motor (Mergener et al. – 214); and a control unit (Mergener et al. – 226), wherein the control unit (Mergener et al. – 226) is designed to perform the method according to claim 1. (Mergener et al. – Figure 2, 3 and Column 3 lines 40-56, Column 8 lines 46-56)
Regarding claim 16, Mergener et al. modified by Harada et al. and Erickson et al. disclose the hand-held power tool is a cut-off screwdriver. (Mergener et al. – Column 3 lines 44-46, Column 33 lines 8-21)
Regarding claim 17, Mergener et al. modified by Harada et al. and Erickson et al. disclose the hand-held power tool is a cut-off screwdriver. (Mergener et al. – Column 3 lines 44-46, Column 33 lines 8-21)
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over reference Mergener et al. (10,131,043) in view of references Harada et al. (2013/0264087) and Besser et al. (2021/0062942).
Regarding claim 10, Mergener et al. disclose a method for controlling a hand-held power tool (200), wherein the hand-held power tool (200) includes: a driving motor (214); and a control unit (226), and wherein the method comprising the steps of:
setting an operating stage for controlling the drive motor (214) by way of the control unit (226),
wherein the operating stage includes a direction of rotation of the drive motor (214), a rotational speed of the drive motor (214), and a cut-off criterion;
operating the drive motor (214) depending on the set operating stage;
braking the drive motor (214) when the cut-off criterion is met;
(Figure 2, 3, 5, 7, 30, 31 and Column 3 lines 40-56, Column 31 lines 35-40, Column 32 lines 15-29, Column 33 lines 8-23, Column 40 lines 2-7)
However, Mergener et al. do not disclose setting a rotational speed constancy, and do not disclose a threading stage.
Harada et al. disclose a method for controlling a hand-held power tool (1), wherein the hand-held power tool (1) includes: a driving motor (30); and a control unit (15), and wherein the method comprising the steps of:
setting a rotational speed constancy of the rotational speed of the drive motor (30);
operating the drive motor (30) depending on the set rotational speed constancy; and
braking the drive motor (3) when a cut-off criterion is met.
(Figure 1, 5 and Page 2 paragraph 51, Page 3 paragraph 53, Page 4 paragraph 67, 68)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Mergener et al. by incorporating the setting and use of a rotational speed constancy as taught by Harada et al., since page 1 paragraph 10 states such a modification would allow the power tool to operate in a quiet mode.
Besser et al. disclose a hand-held power tool comprising: motor (106); and a control unit (126), wherein the control unit (126) is configured to operate the motor (106) at a threading stage, wherein the threading stage is configured to:
stop forward operation of the motor (106);
reverse the direction of the motor (106) for period of time;
stop reverse operation of the motor (106); and
then resume forward operation of the motor (106) until the operation is complete.
(Page 2 paragraph 22, 23, Page 5 paragraph 39)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Mergener et al. by incorporating the threading stage as taught by Besser et al., since page 5 paragraph 39 of Besser et al. states such a modification would allow the power tool to automatically respond to a detected fault condition.
Since Mergener et al. disclose a cut-off criterion as a cut-off torque, Mergener et al. in view of Besser et al. is interpreted to disclose a cut-off stage is performed after the threading stage, wherein the cut-off stage is performed in a tightening direction of rotation until a cut-off torque is met.
Response to Arguments
The Amendments filed on 05/07/2026 have been entered. Applicant’s cancelation of claims 8-9 is acknowledged and require no further examining. Claims 1-7 and 10-17 are pending in the application.
In response to the arguments of the rejections under 35 U.S.C. 112(b), in view of the amendments to the claims, Examiner withdraws the 112(b) rejections.
In response to the arguments of the rejections under 35 U.S.C. 103 with reference Mergener et al. (10,131,043) modified by reference Harada et al. (2013/0264087), in view of the amendments to the claims, Examiner withdraws the 103 rejections. However, upon further consideration, a new ground(s) of rejection is made in view of Erickson et al. (10,036,782) and Besser et al. (2021/0062942).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK B FRY whose telephone number is (571)272-0396. The examiner can normally be reached on Mon-Thur 7am-4pm.
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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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/PATRICK B FRY/Examiner, Art Unit 3731 July 21, 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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