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 05/11/2026.
Claims 1-16 pending and examined below.
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 1-6 and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over reference Kato (2021/0094163) in view of reference Roehm et al. (2021/0370483).
Regarding claim 1, Kato discloses a method of operating a hand-held rotary impact wrench (1), wherein the impact wrench (1) comprises a tool holder (6) configured to receive a tool, wherein the tool is configured to rotatably drive a fastener via a corresponding drive of a fastener, and wherein the method comprises the steps of:
releasing the fastener from a bolted state by rotating the tool holder (6) in a first direction of rotation.
(Figure 2 and Page 3 paragraph 50, 52, Page 7 paragraph 140)
However, Kato does not disclose the step of rotating the tool holder in a second direction and renewing rotation of the tool holder in the first direction.
Roehm et al. disclose a method of operating a power tool (101), the method comprising the steps of:
rotating a tool holder (103) in a first direction of rotation;
rotating the tool holder (103) in second direction of rotation when a first torque threshold is met; and
renewing rotation of the tool holder (103) in the first direction of rotation when a second torque threshold is met,
wherein the first torque threshold and second torque threshold values are received from an external device (119).
(Page 5 paragraph 56, 59, 60, 62, 74)
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 Kato by incorporating the second direction of rotation and renewing the first direction for rotation as taught by Roehm et al., since page 1 paragraph 7 of Roehm et al. states such a modification would prevent jamming of the fastener.
Regarding claim 2, Kato modified by Roehm et al. disclose the partial releasing is accomplished at least partially by performing a rotary impact operation. (Kato – Page 7 paragraph 140)
Regarding claim 3, on page 1 paragraph 10 of Kato, the wrench generates an impact when the resistance experienced by the tool bit is equal or higher than a predefined resistance. On page 7 paragraph 142 of Kato, the wrench is disclosed to reduce speed of the motor when the impact is no longer detected. This implies that the wrench is operated without impact when the resistance experienced by the tool bit is lower than the predefined resistance. Therefore, Kato modified by Roehm et al. disclose the rotary impaction operation in the partial release is replaced by screwing operation without impact when the fastener falls below a predefined resistance.
Regarding claim 4, Kato modified by Roehm et al. disclose, while rotating the tool holder (Kato – 6) in the second direction, a rotary impact operation is performed in response to exceeding a certain torque is exceeded, and the renewed rotating of the tool holder (Kato – 6) in the first direction is performed once the rotary impaction operation is detected. (Kato – Page 1 paragraph 10) (Roehm et al. – Page 5 paragraph 63)
Regarding claim 5, Kato modified by Roehm et al. disclose a rotary impact operation is performed in rotation the tool holder (Kato – 6) in the second direction in response to exceeding a certain torque, wherein the renewed rotating of the tool holder (Kato – 6) in the first direction is performed after a predefined tome period after an automatic detection of the rotary impact operation. (Kato – Page 1 paragraph 10) (Roehm et al. – Page 5 paragraph 63, 70)
Regarding claim 6, Kato modified by Roehm et al. disclose the renewed rotating of the tool holder (Kato – 6) in the first direction is ended when a user releases an actuating switch (Kato – 7) of the rotary impact drive (Kato – 1). (Kato – Page 3 paragraph 55) (Roehm et al. – Page 5 paragraph 64)
Regarding claim 8, Kato modified by Roehm et al. disclose an actuating switch (Kato – 7) of the impact wrench (Kato – 1) is actuated by a user, wherein a controller (Kato – 56) of the impact wrench (Kato – 1) detects a fastener is being release in released in response to the actuating and perform the partially releasing of the fastener, the rotating of the toolholder in the second direction, and the renewed rotating of the tool holder (Kato – 6) in the first direction. (Kato – Page 3 paragraph 55, Page 5 paragraph 95) (Roehm et al. – Page 5 paragraph 56, 59, 60, 62)
Regarding claim 9, Kato modified by Roehm et al. disclose the controller detects the partially releasing of the fastener at least partially based on an immediate onset of a rotary impact operation after actuation of the actuating switch (Kato – 7). (Kato – Page 7 paragraph 140, Page 8 paragraph 143)
Regarding claim 10, Kato modified by Roehm et al. disclose the detecting of the rotary impact operation and/or screwing operation without impact is performed at least partially on the basis of a signal waveform of an operating variable of an electric motor (Kato – 21) of the impact wrench. (Kato – Page 1 paragraph 11, Page 4 paragraph 80, 85)
Regarding claim 11, Kato modified by Roehm et al. disclose the method is initiated by a user of the impact wrench (Kato – 1) actuating a control button (Kato – 10) separate from an actuating switch (Kato – 7) of the impact wrench (Kato – 1), wherein the release of the actuating switch (Kato – 7) cancels and/or ends the method. (Kato – Page 3 paragraph 55, 58, Page 7 paragraph 140)
Regarding claim 12, Kato modified by Roehm et al. disclose the method is started or initialized via a software application, wherein the software application is executed on a device (Roehm et al. – 119) spearete from the impact wrench. (Kato – 1). (Roehm et al. – Page 5 paragraph 69, 74, Page 6 paragraph 75)
Regarding claim 13, Kato modified by Roehm et al. disclose the parameters of the screwing operation are adjustable via the software application, wherein the parameters comprise a predefined duration and/or number of impacts of a rotary impact operation in the partially releasing of the fastener, the rotating of the tool holder (Kato – 6) in a second direction, or the renewed rotating of the tool holder (Kato – 6) in the first direction. (Roehm et al. – Page 4 paragraph 36, Page 5 paragraph 70)
Regarding claim 14, Kato modified by Roehm et al. disclose the method provides jamming releasing, wherein the rotation of the tool holder (Kato – 6) in the second direction of rotation opposite the first direction rotation is performed such that jamming of the tool is released, but without fastener being tightened such that a renewed loosening of the fastener in the renewed rotating of the tool holder (Kato – 6) in the first direction would result in renewed jamming. (Roehm et al. – Page 1 paragraph 7, 9)
Regarding claim 15, Kato modified by Roehm et al. disclose a computer program for performing the method according to claim 1 when the computer program is executed by a computer (Kato – 56) of the impact wrench. (Kato – Page 5 paragraph 95) (Roehm et al. – Page 4 paragraph 52)
Regarding claim 16, Kato modified by Roehm et al. disclose a hand-held rotary impact wrench comprising:
an electric motor (Kato – 21);
a rotary-driven tool holder (Kato – 6) configured to receive a tool; and
a controller (Kato – 56) configured to control the electric motor (Kato -21),
wherein the controller (Kato- 56) is configured to perform the method according to claim 1.
(Kato – Page 3 paragraph 52, 60, Page 5 paragraph 95)
(Roehm et al. – Page 4 paragraph 52)
Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over reference Kato (2021/0094163) in view of reference Roehm et al. (2021/0370483) as applied to claim 1 above, and further in view of reference Lewis et al. (10,523,087).
Regarding claim 7, Kato modified by Roehm et al. disclose the claimed invention as stated above but do not disclose a run-up ramp.
Lewis et al. disclose a power tool (10) comprising: a motor (28); and a controller (11), wherein the controller (11) is configured to increase the speed of the motor from zero to the target speed at a ramp-up rate. (Column 2 lines 11-20, Column 3 lines 60-63, Column 4 lines 8-14)
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 Kato by incorporating the ramp-up of the motor as taught by Lewis et al., since column 14 lines 23-24 of Lewis et al. states such a modification would help prevent heavy increases in current draw from the battery pack.
Response to Arguments
The Amendments filed on 05/21/2026 have been entered. Claims 1-16 pending in the application.
In response to the arguments of the objections towards the claims, in view of the amendments to the claims, Examiner withdraws the claim objections.
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 Kato (2021/0094163) modified by reference Roehm et al. (2021/0370483), Examiner finds the arguments not persuasive.
Applicant state:
In particular, Roehm, does not teach renewed rotating of the tool holder, and thus the fastener, in the first direction of rotation which partially releases the fastener following the rotating tool holder in the second direction opposite the direction for partially releasing the fastener.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In this case, Roehm et al. is not relied upon for the teaching of releasing the fastener. Roehm et al. is relied upon for the teaching of rotating the tool holder in a first direction of rotation, then rotating the tool holder in a second direction of rotation, and then renewing rotation of the tool holder in the first direction. Kato is relied upon for the teaching of a rotary impact wrench configured to release a fastener from a bolted stated by rotating the tool holder in a first direction of rotation. When modifying Kato in view of Roehm et al., the rotary impact wrench is interpreted to partially release a fastener from a bolted stated by rotating the tool holder in a first direction of rotation, then rotate the tool holder in a second direction of rotation, and then renew the rotation of the tool holder in the first direction which partially releases the fastener.
Applicant state:
In particular, the Examiner has failed to explain why one of skill in the art would release a fastener using the sequence of Roehm taught for engaging a fastener.
In response to applicant's argument that Roehm et al. is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both Kato end Roehm et al. reasonably pertain to the particular problem of using a power tool to rotate a fastener in a controlled manner, wherein the power tool experiences changes in torque and/or resistance when rotating the fastener. Roehm et al. do not disclose that the teaching of changing the rotation direction while rotating the fasten can only be used when tightening the faster. Therefore, the person of ordinary skill in the art would not be deterred or taught away from looking into reference Roehm et al. for improvements to control rotation of the fastener.
Applicant state:
Kato at paragraph 142 teaches that “when the impact is no longer detected for a specified time period after detection of the impact, the motor 21 is stopped or the motor speed is reduced”. There is no discussion of a resistance threshold in any of the identified paragraphs.
On page 1 paragraph 10 of Kato, the wrench generates an impact when the resistance experienced by the tool bit is equal or higher than a predefined resistance. On page 7 paragraph 142 of Kato, the wrench is disclosed to reduce speed of the motor when the impact is no longer detected. This implies that the wrench is operated without impact when the resistance experienced by the tool bit is lower than the predefined resistance. Therefore, Kato modified by Roehm et al. do disclose the rotary impaction operation in the partial release is replaced by screwing operation without impact when the fastener falls below a predefined resistance.
Applicant state:
With respect to claim 4 the Examiner asserts that paragraph 78 of Kato and paragraph 62 of Roehm teach renewed rotating of the tool holder in the first direction once the rotary impact operation in the second direction is detected. (Office Action at page 8). Neither of the identified passages discuss reversal of direction.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
On page 4 paragraph 78 of Kato, the hammer is disclosed to impact the anvil when the anvil receives a first torque. On page 3 paragraph 63 of Roehm et al., the rotation in the second direction is conduct for a predetermined number of torque impulses. Therefore, when modifying Kato in view of Roehm et al, the renewed rotating of the tool holder in the first direction is interpreted to be performed once the rotary impact operation is detected a certain number of times.
Applicant state:
With respect to claim 5, the Examiner asserts that paragraphs 78 and 140 of Kato and paragraph 70 of Roehm teach renewed rotating of the tool holder in the first direction once the rotary impact operation the second direction is detected. (Office Action at page 8). None of the identified passages discuss reversal of direction.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
On page 4 paragraph 78 of Kato, the hammer is disclosed to impact the anvil when the anvil receives a first torque. On page 5 paragraph 63 of Roehm et al., the rotation in the second direction is conduct for a predetermined number of torque impulses. On page 5 paragraph 70 of Roehm et al, the rotation in the second direction is conducted for a predetermined amount of time. Therefore, when modifying Kato in view of Roehm et al, the renewed rotating of the tool holder in the first direction is interpreted to be performed once: the rotary impact operation is detected a certain number of times; or a predetermined amount of time has passed.
Applicant state:
With respect to claim 8, none of the paragraphs identified by the Examiner at pages 8-9 of the Office Action discuss a controller of the hand-held power tool automatically detecting that a fastener is being released.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
On page 7 paragraph 140 of Kato, the rotary impact wrench is disclosed operate in a particular mode to reversely rotate to loosen the fastener. On page 5 paragraph 95 of Kato, the rotary impact wrench is disclosed to have a controller to control the rotary impact wrench and operate at different modes. On page 5 paragraphs 56, 59, 60, and 62 of Roehm et al, the power tool is disclosed to rotate the tool holder in the first direction, then rotate in the second direction, and then renew rotation int eh first direction. Therefore, when modifying Kato in view of Roehm et al, the controller is interpreted to determine the release mode of operation, and perform the rotate the tool holder in the first direction, then rotate in the second direction, and then renew rotation int eh first direction.
Applicant state:
With respect to claim 9, the paragraph identified by the Examiner at page 9 of the Office Action does not discuss detecting release of a fastener.
On page 7 paragraph 140 of Kato, the rotary impact wrench is disclosed operate in a particular mode to reversely rotate to loosen the fastener. On pages 7-8 paragraphs 142-143 of Kato, the rotary impact wrench is disclosed to prevent rotating more than necessary in order to prevent the fastener falling off the tool holder. Therefore, Kato does disclose detecting the partial release of the fastener at least partially based on an immediate onset of a rotary impact operation.
Applicant state:
With respect to claim 10, none of the paragraphs identified by the Examiner at page 9 of the Office Action discuss detecting the rotary impact operation and/or screwing operation without impact on the basis of a signal waveform.
On page 1 paragraph 11 of Kato, the rotary impact wrench is disclosed to comprise an impact detector configured to detect impacting on the anvil. On page 4 paragraph 85, the rotary impact wrench is disclosed to comprise a current detection circuit. Kato is interpreted to detect impact on the anvil based on the signal waveform form the current detection circuit.
Applicant state:
With respect to claim 11, the paragraphs cited by the Examiner at page 9 of the Office Action do not disclose a second switch.
On page 3 paragraph 55 of Kato, the rotary impact wrench is disclosed to comprise an actuating switch configured to start and stop the motor of the rotary impact wrench. On page 3 paragraph 58, the rotary impact wrench is disclosed to comprise a control button that is separate from the actuating switch. Therefore, Kato does disclose a control button separate from an actuating switch of the hand-held rotary impact wrench, wherein releasing of the actuating switch cancels and/or ends the operation.
Applicant state:
With respect to claim 14, the paragraphs cited by the Examiner at page 10 of the Office Action do not disclose a preventing jamming in the second direction.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., prevent jamming in the second direction) are not recited in the rejected claim(s). 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).
In the amended claim 14, the rotation in the second direction “is performed such that jamming of the tool in the tool holder and/or in the drive of the fastener with the tool is released”. Claim 14 does not disclose preventing jamming in the second direction.
On page 1 paragraph 9 of Roehm et al., the power tool is disclosed to be rotated in a second direction in order to release a jamming. Therefore, when modifying Kato in view of Roehm et al., the rotary impact wrench is interpreted to disclose rotation of the tool holder in the second direction of rotation opposite the first direction of rotation is performed such that jamming of the tool in the tool holder and/or the drive of the fastener with the tool is released.
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 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 August 11, 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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