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 .
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 1-6, 8-14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Roehm et al. (US 7,546,785) in view of Gebhard (CN 1314802 A).
As to claims 1-6, 8-14, and 16-20, except for an amendment resolving grammatical issues in claims 1, 10, and 16, the claims remain unamended and the text of the rejection remains unchanged. For the full text of the rejection, see the Office Action mailed 12 January 2026.
Claims 7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Roehm in view of Gebhard as applied to claims 1 and 10, respectively above, and further in view of Lutz et al. (US 2008/0074865).
As to claims 7 and 15, the claims remain unamended and the text of the rejection remains unchanged. For the full text of the rejection, see the Office Action mailed 12 January 2026.
Response to Arguments
Applicant's arguments filed 12 May 2026 have been fully considered but they are not persuasive.
Regarding claim 1, at Page 5, Applicant argues “Even if Roehm would be modified in view of Gebhard, the modification would not teach or suggest a power tool system including a chuck that is configured to stop when the power tool is aligned with the base of the power tool system.”
Examiner disagrees. As noted in the rejection, Gebhard is relied upon to teach that when the tool is placed on the charger, the reed switch stops the tool from heating. An artisan would reasonably generalize that when a tool is placed on a cradle (i.e. no longer held by a user), the tool should be powered off to increase the safety of the tool.
Further, an artisan would have immediately recognized that the terms “powered off” and “turned off” necessarily result in the claimed “stop rotation of the chuck” as the chuck is rotated only when powered on.
At page 6 Applicant argues that the rejection is based on Examiner’s “specula[tion]” that “it may be reasonable to conclude that in the field of consumer-grade tools, a rechargeable tool is well known to automatically stop operating when the tool is plugged in to charge.” Contrary to Applicant’s assertion, this statement is not relied upon to reject any claim limitation. Rather, the statement serves as a segue introducing Gebhard which does, in fact, suggest the limitations acknowledged missing from Roehm.
Applicant erroneously argues that “Examiner has not cited any evidence – in Roehm or elsewhere – to support the proposition that rechargeable power tools were known to automatically stop operating when placed on a charger” as applicant admits in the very next paragraph: “Gebhard discloses a facial iron 200 having on-board batteries 805 intended to be placed onto a charger 410. Gebhard’s reed switch 920 and magnet 840 are used to stop the heating element from heating when the facial iron is placed on the charger.”
Thus Applicant’s best argument is not that Gebhard doesn’t teach that battery powered tools were known to automatically stop operating when placed on a charger, but rather that Gebhard’s heater is not analogous to Applicant’s inventive power tool with rotating chuck.
Applicant argues that Gebhard’s shutoff functionality relates to a heater – a stationary heating element – and not a moving part like a chuck. Applicant also argues Gebhard’s facial iron “addresses an entirely different technical issue” and “involves a fundamentally different issue” than mechanical motion.
Examiner asserts Gebhard is analogous art and is available for combination with Roehm. See MPEP § 2141.01(a) III. And IV regarding Analogous Art in the mechanical and electrical arts. Examiner asserts that Gebhard has strong similarities in structure and function to the inventive power tool. That is, both tools are intended to be held in one hand. Both tools interface with a cradle. Both tools rely on battery power to produce their desired outcome. The fact that one tool uses battery power to produce rotational motion via a motor and the other tool uses battery power to produce heat via a resistive heater is not a difference in structure or function that is large enough to bring Gebhard outside of the realm of Analogous Art.
As tools, both Gebhard’s iron and the inventive power tool convert battery energy into useful outputs (heat, rotation). Both outputs may be useful, and conversely understood to be potentially dangerous.
An artisan wishing to cut power from a battery would not necessarily have confined his search to only devices where the output from a battery exactly matches his own function. Examiner’s reliance on Gebhard is directed to the electronic circuitry within Gebhard before the specific functional output of the device. That is, Gebhard’s reed switch is between the battery and resistive heater, such that an artisan familiar with electrical diagrams would have understood that any source of resistance (a motor, a resistive heater, a resistor) would be “turned off” by Gebhard’s reed switch, as from the viewpoint of an electrical diagram, all sources of resistance are functional equal.
In response to applicant's argument at page 6 that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
All of the teachings within Boehm and Gebhard are prior art. The concept of turning a tool off while it sits in a cradle “for safety” is not present in Applicant’s disclosure and is therefore not hindsight. See MPEP § 2143.01: A “motivation to combine may be found explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.”
At page 7, Applicant argues the rejection of claim 10 is improper because Gebhard does not teach or suggest a power tool that is manipulatable between an on mode and a standby mode in which rotation is stopped without actuation of the actuator that is “itself actuatable wot switch the power tool between the on mode in which the motor is configured to rotate the output shaft, and an off mode.”
Applicant argues, “the Examiner files to consider that in Gebhard, the relay 915, magnetic reed switch 920, and magnet 840 are the actuator for the facial iron 200. These components act as the mechanism to turn the iron’s heater off and on. That is, there is nothing else in Gebhard that can be manipulated between an on mode and a standby mode without actuation of these components...Gebhard’s reed switch and magnet combination is the only control mechanism for the heating element.”
Examiner disagrees. First, Examiner points to the rejection of claim 10 which indicates that an “on” and “off” modes are present in Roehm, and that Gebhard is relied upon for the claimed “standby” mode in which the power is cut from the battery by a reed switch even if the tool is otherwise in an “on” mode. Second, Applicant’s statements about Gebhard’s teachings are factually incorrect as Gebhard teaches a “three position switch” including position 1, which is a conditional-on setting which can be turned off by the reed switch, position 2 which is always on (bypassing the reed switch), and position 3 which is always off.
At page 8, Applicant argues that Lutz does not cure the deficiencies of Roehm and Gebhard. Lutz is not relied upon the to teach the supposed deficiencies which Applicant has pointed out with regards to the combination of Roehm and Gebhard.
Applicant’s arguments against the rejection of claim 16 are similar to those made against the rejection of claims 1 and 10.
At page 9 Applicant notes that Gebhard is directed to a heater, not a rotating chuck, and is therefore not available for combination, or is at least non-obviously combined, with Roehm. Examiner disagrees for the reasons given above with respect to the same arguments in view of claim 1.
At page 9 Applicant argues Examiner’s combination is the result of hindsight. Examiner disagrees for the reasons given above with respect to the same arguments in view of claim 1.
Conclusion
THIS ACTION IS MADE FINAL. 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 JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 21 May 2026
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