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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on March 18, 2026 is acknowledged. Claims 1-9 remain pending in the application and have been fully examined.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on October 20, 2023 and April 23, 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are: “a throttle portion being configured to change an opening area of the supply port by being displaced...” in claim 1. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the throttle portion” as being, “a cylindrical portion and a plate-like flange portion” (see paragraph 104). Thus, in view of the specification, the limitation, “a throttle portion”, is being interpreted as a cylindrical portion and a plate-like flange portion and/or equivalents thereof.
Such claim limitation(s) is/are: “a drive force transmission portion configured to support the motor shaft...” in claim 9. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the drive force transmission portion” as being, “a carrier” (see paragraph 97). Thus, in view of the specification, the limitation, “a drive force transmission portion”, is being interpreted as a carrier and/or equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 5-8 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. Any remaining claims are rejected based on their dependency to a rejected base claim.
Claim 5 recites the limitation "the flow rate switching portion" in Line 4. There is insufficient antecedent basis for this limitation in the claim. It appears that claim 5 should actually depend from claim 3 (not claim 4) because claim 3 is the first claim to disclose “a flow rate switching portion”. In order to expedite prosecution, the examiner has interpreted claim 5 as actually depending from claim 3. However, further clarification is respectfully requested.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
OR
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, 2 and 4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Ishizawa et al. (JP 2016043445, translation included herewith) or, in the alternative, under 35 U.S.C. 103 as obvious over Isizawa (JP 2016043445, translation included herewith) in view of Izumisawa (EP 1129827, translation included herewith).
In reference to claim 1, Ishizawa et al. disclose a screw driving machine (1) comprising:
a driving piston (at 23 or at 23, 24 and 25, Figures 1 and 9) to which a driver bit (11) is attachable (Figure 1);
a driving cylinder (formed from 30 and 20) partitioned into a first chamber (i.e. see downward airflow arrows within a first chamber that is located below 23 [see Figure 9] or as the chamber located below 25, see upward airflow arrows therein [see Figure 11]) and a second chamber (i.e. chamber located above 23 in Figure 9) by the driving piston, the driving cylinder being configured to cause the driver bit to move in an axial direction when compressed air is supplied to the second chamber (see Figures 5 and 9);
an air motor (21) configured to cause the driver bit to rotate about an axis (i.e. vertical axis of housing 10, Figure 1) through the driving piston when the compressed air is supplied;
an air flow path (i.e. at 10b, Figures 8 and 9) communicating the second chamber and the air motor with each other (Figure 9);
a main chamber (52) configured to store the compressed air, the main chamber communicating with the air flow path (Figure 7); and
a main valve (40) configured to open and close communication between the air flow path and the main chamber (Figures 9 and 11),
wherein the driving cylinder has a supply port (20b) communicating the air flow path and the second chamber with each other (Figure 9), and
wherein the screw driving machine further comprises a throttle portion (formed as the upper portion of 40 [see figure below], which is equivalent to the “throttle portion”, as previously interpreted under 35 U.S.C. 112(f), see section 6a above because it also changes an opening area of the supply port [i.e. port 20b]) that is disposed so as to be displaceable (i.e. vertically, see Figures 5 and 6) on an outer periphery of the driving cylinder (Note, throttle portion/upper portion of 40, is vertically displaceable on an outer periphery of at least portion 20 of the driving cylinder, see Figures 5 and 6), the throttle portion being configured to change an opening area (Note, the amount that a user squeezes or pulls trigger 14 changes the amount that the throttle portion moves thereby also changing the amount of air flowing through opening area of port 20b) of the supply port by being displaced.
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[AltContent: textbox (Throttle that has been moved from squeezing trigger 14 thereby changing opening area of port 20b)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Throttle)]
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In the alternative and assuming arguendo, that Ishizawa et al. lack explicitly disclosing that,
depending on the amount that a user squeezes a trigger, compressed air can be adjusted thereby changing an opening area of a supply port, than Izumisawa is hereby used for such a teaching and is discussed in greater detail below.
However, Izumisawa teaches that it is old and well known in the art at the time the invention was made to provide a pneumatic tool (Figure 1) comprising a trigger (87) and an air motor (7), wherein depending on the amount that a user squeezes the trigger an airflow rate can be adjusted from low to high (see Abstract).
Thus, when combined with Ishizawa et al., as a user squeezes the trigger to provide the low airflow rate, the throttle portion, of Ishizawa et al., would be displaced by small amount, and when the user squeezes the trigger further to provide the high airflow rate, the throttle portion, of Ishizawa et al., would be displaced by a larger amount, thereby changing an opening area of the supply port.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the device, of Ishizawa et al., with the known technique of providing variable airflow rate from the amount that a user squeezes a trigger, as taught by Izumisawa, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively allows a user to readily attain and maintain a particular low-speed setting or a high speed setting, as needed for the job at hand (see portion of translation disclosing, “whereby the user may readily attain and maintain a particular low-speed setting or a high speed setting, as needed for the job at hand”).
In reference to claim 2, Ishizawa et al. disclose that the air motor is provided on a second chamber side (i.e. upper side) and coaxially with the driving cylinder (Figure 1).
In reference to claim 4, Ishizawa et al. disclose that the throttle portion is configured to move along the axial direction of the driving cylinder to switch the opening area of the supply port (see Figures 5 and 6).
Claim 9, is rejected under 35 U.S.C. 103 as being unpatentable over Isizawa (JP 2016043445, translation included herewith) optionally in view of Izumisawa (EP 1129827, translation included herewith) and further in view of Fujiyama et al. (7104433).
In reference to claim 9, Ishizawa et al. disclose the claimed invention as previously mentioned above, but lack,
wherein on the driving piston, the driver bit is connected on a first chamber side, and a motor shaft driven by the air motor is attached to a side opposite to the driver bit,
wherein the air motor has a rotor that is configured to rotate when the compressed air is supplied,
wherein the rotor has a hole portion that extends along an axial direction of the motor shaft, and into which the motor shaft is inserted so as to be movable in the axial direction, and
wherein the screw driving machine further comprises a drive force transmission portion configured to support the motor shaft to be movable in the axial direction and transmit rotation of the rotor to the motor shaft so as to rotate the motor shaft.
However, Fujiyama et al. teach that it is old and well known in the art at the time the invention was made to provide a screw driving machine (1, Figure 1) comprising;
wherein on a driving piston (14), a driver bit (15) is connected on a first chamber side (i.e. lower side of 14), and a motor shaft (16) driven by the air motor is attached to a side opposite (i.e. upper side of 14) to the driver bit,
wherein the air motor has a rotor (21) that is configured to rotate when the compressed air is supplied,
wherein the rotor has a hole portion (not labeled but seen in Figure 1 receiving motor shaft therein) that extends along an axial direction (i.e. vertical direction) of the motor shaft (Figure 1), and into which the motor shaft is inserted so as to be movable in the axial direction (Figures 3 and 4), and
wherein the screw driving machine further comprises a drive force transmission portion (formed as carrier [at 3 or at 17], both which meet the limitation of the drive force transmission portion the, as previously interpreted under 35 U.S.C. 112(f), see section 6b above) configured to support the motor shaft to be movable in the axial direction and transmit rotation of the rotor to the motor shaft so as to rotate the motor shaft (Figures 3 and 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the device, of Ishizawa et al., with the known technique of providing the motor shaft that is driven by the air motor and is attached to a side opposite to the driver bit, wherein the air motor has a rotor that is configured to rotate when the compressed air is supplied, wherein the rotor has a hole portion that extends along an axial direction of the motor shaft, and into which the motor shaft is inserted so as to be movable in the axial direction, and wherein the screw driving machine, as taught by Fujiyama et al., and the results would have been predictable. In this situation, one could provide a more advantageous, versatile and safer device that prevents an air impact driver from being started by erroneous operation (Column 1, Lines 6-9) and/or that provides an air impact driver improving the difficulty in fastening screws to a corner portion or a narrow portion (Column 2, Lines 3-5).
Allowable Subject Matter
Claims 3 and 5-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Note claim 5 has been interpreted as depending from claim 3 (see section 8c above).
Allowable Subject Matter
The following is an examiner's statement of reasons for allowance: The present invention pertains to a screw driving machine. It is the examiner's opinion that the art of record considered as a whole, alone or in combination, neither anticipates nor renders obvious of providing; a flow rate switching portion that engages with the throttle portion, the flow rate switching portion being configured to rotate about an axis of the driving cylinder that is coaxial with the axial direction of the driver bit, wherein the throttle portion is configured to switch the opening area of the supply port interlocking with rotation of the flow rate switching portion (as in claim 3), together in combination with the rest of the limitations of the independent claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kamo et al. (2005/0072585) discloses a similar pneumatically operated screw driving machine (1) comprising; a driving piston (7) to which a driver bit (11) is attachable (Figure 1); a driving cylinder (12) partitioned into a first chamber and a second chamber by the driving piston, the driving cylinder being configured to cause the driver bit to move in an axial direction when compressed air is supplied to the second chamber (see Figures 4 and 5); an air motor (2) configured to cause the driver bit to rotate about an axis (i.e. vertical axis of housing, Figure 1) through the driving piston when the compressed air is supplied; an air flow path (Figures 1, 4, and 5) communicating the second chamber and the air motor with each other; a main chamber (4) configured to store the compressed air, the main chamber communicating with the air flow path (Figure 1); and a main valve (28) configured to open and close communication between the air flow path and the main chamber (Figures 4 and 5), wherein the driving cylinder has a supply port (27) communicating the air flow path and the second chamber with each other (Figures 1-5).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723
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