CTNF 18/502,137 CTNF 94178 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 12-151 AIA 26-51 12-51 Status of Claims This office action is in response to applicant's Amendment/Request for Reconsideration filed on 17 February 2026. Claims 1 – 13 and 21 – 31 are pending. Claims 14 – 20 are cancelled by applicant. Claim 30 is withdrawn due to a restriction requirement. Since claims 21 – 29 and 31 will be newly examined in this Office action, this Office action is non-final. Information Disclosure Statement The information disclosure statement (IDS) submitted on 21 November 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Election/Restrictions Applicant’s arguments, filed 17 February 2026, with respect to claims 21 – 29 and 31 as being improperly withdrawn due to the restriction/election of species requirement filed 14 July 2025 have been fully considered and are persuasive. Claims 21 – 29 and 31 are rejoined and will be examined. However, claim 30 is drawn to the nonelected species wherein the cam track is defined by the driver and thus is withdrawn from further consideration pursuant to 37 CFR 1.142(b). 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. Claims 21 – 29 and 31 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Regarding claim 21, the limitation, “a follower engaging the cam track to reciprocate the driven member in response to rotation between the driver”, is indefinite because the phrase, “in response to rotation between the driver”, is either missing text that indicates another element from which the rotation is between, or the phrase is meant to read, “in response to rotation of the driver”. For the purpose of compact prosecution, the examiner interprets the limitation to mean “a follower engaging the cam track to reciprocate the driven member in response to rotation of the driver”. Please note, since claims 22 – 29 and 31 depend upon claim 21, claims 22 – 29 and 31 are likewise rejected under 35 USC §112(b) for indefiniteness. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 07-20-aia AIA 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. PNG media_image1.png 628 432 media_image1.png Greyscale [AltContent: rect][AltContent: rect][AltContent: textbox (B)][AltContent: textbox (A)][AltContent: connector][AltContent: connector][AltContent: textbox (C, D)][AltContent: arrow][AltContent: arrow][AltContent: textbox (E)][AltContent: textbox (F)][AltContent: textbox (Allen (US 3 616 241) Annotated fig. 1)] Claims 1 – 3, 6 – 9, 11 – 13, and 21 – 29 are rejected under 35 U.S.C. 103 as being unpatentable over Allen (US 3 161 241) in view of Meixner (US 2010/0294525 A1). Regarding claim 1, Allen discloses a rotary hammer adapted to impart axial impacts to a tool bit, the rotary hammer comprising: a motor (Col. 1, ll. 46 – 54 describes a rotary hammer containing a conventional rotary motor) ; a spindle (10, 11, fig. 1) coupled to the motor for receiving torque from the motor (via ring gear 22/planet gears 20 engaging a rotor pinion 7 of the motor) ; a piston (portion A of compressor piston 32, annotated fig. 1) at least partially received within the spindle for reciprocation therein (Col. 2, ll. 28 – 32 describes a cup-shaped fluid compressor piston 32 reciprocably mounted within an outer carrier 10) ; a striker (41, fig. 1) received within the spindle for reciprocation in response to reciprocation of the piston (Col. 2, ll. 41 – 44 describes a slave piston 41 slidably mounted in a nose 11 so that it is moved back and forth by a pulsating air column created by the reciprocating compressor piston 32) ; and a reciprocation mechanism (portion B of compressor piston 32 having an serpentine-shaped groove 35, annotated fig. 1, and 18, 35, 35, fig. 1) operatively coupled to the motor and configured to reciprocate the piston along a reciprocation axis (axis C, annotated fig. 1) (Col. 3, ll. 3 – 12 describes when an inner carrier 18 is rotationally driven, the relative rotation between the compressor piston 32 and the inner carrier 18 interacts with the serpentine-shaped groove 35/engaging ball 36 to reciprocate the compressor piston 32 wherein figure 1 shows the compressor piston 32 would reciprocate along an axis C) , the reciprocation mechanism including a camshaft (portion B of compressor piston 32 having the serpentine-shaped groove 35, fig. 1) fixedly coupled to the piston (portion B of compressor piston 32 are integrally formed to portion A of compressor piston 32. Please note, paragraph [0031] of the applicant’s specification describes the camshaft 114 fixedly coupled via threaded engagement to the piston 50 or the camshaft 114 fixedly coupled via being integrally formed with the piston 50 wherein the examiner interprets the term, “fixedly coupled”, in light of the specification to mean two elements fixedly attached or the two elements integrally formed) , a cam groove (35, fig. 1) in camshaft, a cam ball (36, fig. 1) received by the cam groove, and a rotatable hub (18, fig. 1) on which the cam ball is carried, the rotatable hub configured to receive torque from the motor (Via the planet gears 20 engaging the rotor pinion 7 of the motor) and reciprocate the camshaft in response to relative rotation between the cam ball and the camshaft (Col. 3, ll. 3 – 12 describes when an inner carrier 18 is rotationally driven, the relative rotation between the compressor piston 32 and the inner carrier 18 interacts with the serpentine-shaped groove 35/engaging ball 36 to reciprocate the compressor piston 32) . Allen does not disclose an anvil received within the spindle and positioned between the striker and the tool bit, the anvil imparting axial impacts to the tool bit in response to reciprocation of the striker. However, Meixner, in the same field of endeavor, teaches an anvil (16b, fig. 4a) received within the spindle (30b, fig. 4a) and positioned between the striker (14b, fig. 4a) and the tool bit (64b, fig. 4a) , the anvil imparting axial impacts to the tool bit in response to reciprocation of the striker ([0023]) . Meixner is evidence that having the anvil received within the spindle and positioned between the striker and the tool bit wherein the anvil imparts axial impacts to the tool bit in response to reciprocation of the striker was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the rotary hammer of Aleen with the anvil and damping device of Meixner. Additionally, the one having ordinary skill in the art would have been motivated to modify the rotary hammer of Aleen with the anvil and damping device of Meixner in order to damp B-impacts (i.e., impact oriented in the opposite direction from the impact that the striker and anvil imparts to the tool bit) which may cause the tool bit to move from its intended impact location on a workpiece. Regarding claim 2, Allen, as modified by Meixner, discloses the invention as recited in claim 1. Allen discloses the cam groove (35, fig. 1) is a continuous groove about a circumference of the camshaft (Col. 2, ll. 32 – 33 and annotated figure 1 describes and shows the serpentine-shaped groove 35 encircling the portion B of the compressor piston 32) . Regarding claim 3, Allen, as modified by Meixner, discloses the invention as recited in claim 1. Allen discloses the cam groove (35, fig. 1) is a generally sinusoidal groove extending about the circumference of the camshaft (Col. 2, ll. 32 – 33 and annotated figure 1 describes and shows the serpentine-shaped groove 35 having a generally sinusoidal shape with alternating peaks and valleys encircling the portion B of the compressor piston 32) . Regarding claim 6, Allen, as modified by Meixner, discloses the invention as recited in claim 1. Allen discloses the rotatable hub (18, fig. 1) includes a driven gear (20, fig. 1) , wherein the rotary hammer further comprises a transmission (5, 7, 20, 21, 22, fig. 1 – Col. 1, ll. 53 – 54 and col. 2, ll. 2 – 7 describes a rotor 5 of the motor, shown as a shaft in figure 1, carrying a pinion 7 projecting forward of the rotor 7 and further describes an epicyclic gear train having planet gears 20 on stub shafts 21 and a ring gear 22 wherein the examiner deems this rotor 5 with pinion 7 and the epicyclic gear train as the claimed, “a transmission”) configured to transfer torque from the motor to the spindle, and wherein the transmission includes a shaft (5, fig. 1) having a drive gear (7, fig. 1) that is configured to engage the driven gear to rotate the rotatable hub. Regarding claim 7, Allen, as modified by Meixner, discloses the invention as recited in claim 6. Allen discloses the shaft (5, fig. 1) defines a shaft axis (axis D, annotated fig. 1) that is oriented parallel to the reciprocation axis (axis C, annotated fig. 1) (Annotated fig. 1 shows a shaft axis D collinear to a reciprocation axis C and, because they are the same axis/line, the two axes are parallel since an axis/line is considered parallel to itself) . Regarding claim 8, Allen discloses a rotary hammer adapted to impart axial impacts to a tool bit, the rotary hammer comprising: a housing (1, fig. 1) ; a motor positioned within the housing (Col. 1, ll. 46 – 54 describes a rotary hammer containing a conventional rotary motor) ; a spindle (10, 11, fig. 1) positioned within the housing and coupled to the motor for receiving torque from the motor (via ring gear 22/planet gears 20 engaging a rotor pinion 7 of the motor) ; a piston (portion A of compressor piston 32, annotated fig. 1) at least partially received within the spindle for reciprocation therein (Col. 2, ll. 28 – 32 describes a cup-shaped fluid compressor piston 32 reciprocably mounted within an outer carrier 10) ; a striker (41, fig. 1) received within the spindle for reciprocation in response to reciprocation of the piston (Col. 2, ll. 41 – 44 describes a slave piston 41 slidably mounted in a nose 11 so that it is moved back and forth by a pulsating air column created by the reciprocating compressor piston 32) ; and a reciprocation mechanism (portion B of compressor piston 32 having an serpentine-shaped groove 35, annotated fig. 1, and 18, 35, 35, fig. 1) operatively coupled to the motor and configured to reciprocate the piston along a reciprocation axis (axis C, annotated fig. 1) coaxial with the spindle (Col. 3, ll. 3 – 12 describes when an inner carrier 18 is rotationally driven, the relative rotation between the compressor piston 32 and the inner carrier 18 interacts with the serpentine-shaped groove 35/engaging ball 36 to reciprocate the compressor piston 32 wherein figure 1 shows the compressor piston 32 would reciprocate along an axis C) , the reciprocation mechanism including a bearing (12, fig. 1) fixed relative to the housing; a camshaft (portion B of compressor piston 32 having the serpentine-shaped groove 35, fig. 1) rotatably fixed and reciprocable relative to the bearing along the reciprocation axis (Col. 2, ll. 28 – 32 describes a cup-shaped fluid compressor piston 32 reciprocably mounted within an outer carrier 10 and prevented from rotating in the carrier 10. Annotated fig. 1 shows the compressor piston 32 would reciprocate along an axis C) , the camshaft fixedly coupled to the piston (portion B of compressor piston 32 are integrally formed to portion A of compressor piston 32. Please note, paragraph [0031] of the applicant’s specification states “the camshaft 114 may be coupled via threaded engagement to the piston 50 or the camshaft 114 may be integrally formed with the piston 50” wherein the examiner interprets the term, “fixedly coupled”, in light of the specification to mean two elements fixedly attached or the two elements integrally formed) and including a sinusoidal cam groove (35, fig. 1) that extends continuously about a circumference thereof, the sinusoidal cam groove including alternating peaks and valleys relative to the reciprocation axis (Col. 2, ll. 32 – 33 and annotated figure 1 describes and shows the serpentine-shaped groove 35 having a generally sinusoidal shape with alternating peaks and valleys encircling the portion B of the compressor piston 32) , a cam ball (36, fig. 1) received by the sinusoidal cam groove, and a driver (18, fig. 1) rotatable via the motor (Via the planet gears 20 engaging the rotor pinion 7 of the motor) and drivably engaged with the cam ball to reciprocate the camshaft (Col. 3, ll. 3 – 12 describes when an inner carrier 18 is rotationally driven, the relative rotation between the compressor piston 32 and the inner carrier 18 interacts with the serpentine-shaped groove 35/engaging ball 36 to reciprocate the compressor piston 32) , wherein in response to rotation of the driver, the cam ball moves along the sinusoidal groove and rotates about the reciprocation axis, the sinusoidal cam groove converting rotational motion of the cam ball to reciprocating movement of the piston along the reciprocation axis (Col. 3, ll. 3 – 12) . Allen does not disclose an anvil received within the spindle and positioned between the striker and the tool bit, the anvil imparting axial impacts to the tool bit in response to reciprocation of the striker. However, Meixner, in the same field of endeavor, teaches an anvil (16b, fig. 4a) received within the spindle (30b, fig. 4a) and positioned between the striker (14b, fig. 4a) and the tool bit (64b, fig. 4a) , the anvil imparting axial impacts to the tool bit in response to reciprocation of the striker ([0023]) . Meixner is evidence that having the anvil received within the spindle and positioned between the striker and the tool bit wherein the anvil imparts axial impacts to the tool bit in response to reciprocation of the striker was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the rotary hammer of Aleen with the anvil and damping device of Meixner. Additionally, the one having ordinary skill in the art would have been motivated to modify the rotary hammer of Allen with the anvil and damping device of Meixner in order to damp B-impacts (i.e., impact oriented in the opposite direction from the impact that the striker and anvil imparts to the tool bit) which may cause the tool bit to move from its intended impact location on a workpiece. Regarding claim 9, Allen, as modified by Meixner, discloses the invention as recited in claim 8. Allen discloses the sinusoidal cam groove (35, fig. 1) includes two peaks and two valleys such that two strokes are applied to the piston per revolution of the driver (Figure 1 shows the serpentine-shaped groove 35 having two peaks and two valleys wherein one having ordinary skill in the art would recognize that two strokes are applied to the piston per revolution of the inner carrier 18) . Regarding claim 11, Allen, as modified by Meixner, discloses the invention as recited in claim 8. Allen discloses the driver (18, fig. 1) includes a driven gear (20, fig. 1) , wherein the rotary hammer further comprises a transmission (5, 7, 20, 21, 22, fig. 1 – Col. 1, ll. 53 – 54 and col. 2, ll. 2 – 7 describes a rotor 5 of the motor, shown as a shaft in figure 1, carrying a pinion 7 projecting forward of the rotor 7 and further describes an epicyclic gear train having planet gears 20 on stub shafts 21 and a ring gear 22 wherein the examiner deems this rotor 5 with pinion 7 and the epicyclic gear train as the claimed, “a transmission”) configured to transfer torque from the motor to the spindle, and wherein the transmission includes a shaft (5, fig. 1) having a drive gear (7, fig. 1) that is configured to engage the driven gear to rotate the driver. Regarding claim 12, Allen, as modified by Meixner, discloses the invention as recited in claim 11. Allen discloses the shaft (5, fig. 1) defines a shaft axis (axis D, annotated fig. 1) that is oriented parallel to the reciprocation axis (axis C, annotated fig. 1) (Annotated fig. 1 shows a shaft axis D collinear to a reciprocation axis C and, because they are the same axis/line, the two axes are parallel since an axis/line is considered parallel to itself) . Regarding claim 13, Allen, as modified by Meixner, discloses the invention as recited in claim 8. Allen discloses the cam ball (36, fig. 1) is a first cam ball (cam ball E, annotated fig. 1) , and wherein the rotary hammer further comprises a second cam ball (cam ball F, annotated fig. 1) positioned in the sinusoidal cam groove opposite the first cam ball (As shown in annotated fig. 1) . Regarding claim 21, Allen discloses a power tool comprising: a motor (Col. 1, ll. 46 – 54 describes a rotary hammer containing a conventional rotary motor) ; a spindle (10, 11, fig. 1) coupled to the motor for receiving torque from the motor (Col. 2, ll. 41 – 44 describes a slave piston 41 slidably mounted in a nose 11 so that it is moved back and forth by a pulsating air column created by the reciprocating compressor piston 32) ; a driver (18, fig. 1) at least partially received within the spindle, the driver rotated by the motor (Via the planet gears 20 engaging the rotor pinion 7 of the motor) ; a driven member (portion B of compressor piston 32 having an serpentine-shaped groove 35, annotated fig. 1) at least partially received within the spindle and coupled to the driver (via balls 36 mounted in an inner carrier 18 and a serpentine-shaped groove 35 of the portion B of compressor piston 32) ; a cam track (35, fig. 1) defined by the driven member; a follower (36, fig. 1) engaging the cam track to reciprocate the driven member in response to rotation of the driver (Col. 2, ll. 31 – 36 describes balls 36 mounted in the periphery of an inner carrier 18 and engaging a groove 35 of the piston 32 whereby relative rotation between the piston 32 and the inner carrier 183 causes the piston 32 to reciprocate) ; a striker (41, fig. 1) received within the spindle for reciprocation in response to reciprocation of the driven member (Col. 2, ll. 41 – 44 describes a slave piston 41 slidably mounted in a nose 11 so that it is moved back and forth by a pulsating air column created by the reciprocating compressor piston 32) . Allen does not explicitly disclose an anvil received within the spindle and positioned between the striker and a tool bit, the striker impacting the anvil as the striker reciprocates. However, Meixner, in the same field of endeavor, teaches an anvil (16b, fig. 4a) received within the spindle (30b, fig. 4a) and positioned between the striker (14b, fig. 4a) and the tool bit (64b, fig. 4a) , the anvil imparting axial impacts to the tool bit in response to reciprocation of the striker ([0023]) . Meixner is evidence that having the anvil received within the spindle and positioned between the striker and the tool bit wherein the anvil imparts axial impacts to the tool bit in response to reciprocation of the striker was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the rotary hammer of Aleen with the anvil and damping device of Meixner. Additionally, the one having ordinary skill in the art would have been motivated to modify the rotary hammer of Aleen with the anvil and damping device of Meixner in order to damp B-impacts (i.e., impact oriented in the opposite direction from the impact that the striker and anvil imparts to the tool bit) which may cause the tool bit to move from its intended impact location on a workpiece. Regarding claim 22, Allen, as modified by Meixner, discloses the invention as recited in claim 21. Allen discloses the cam track (35, fig. 1) is a groove that is defined by an outer surface of the driven member (portion B of compressor piston 32 having an serpentine-shaped groove 35, annotated fig. 1) . Regarding claim 23, Allen, as modified by Meixner, discloses the invention as recited in claim 22. Allen discloses the driven member (portion B of compressor piston 32 having an serpentine-shaped groove 35, annotated fig. 1) is received in the driver (18, fig. 1) . Regarding claim 24, Allen, as modified by Meixner, discloses the invention as recited in claim 22. Allen discloses the follower (36, fig. 1) is a cam ball (Col. 2, ll. 31 – 36; “balls 36”) . Regarding claim 25, Allen, as modified by Meixner, discloses the invention as recited in claim 24. Allen discloses the driven member (portion B of compressor piston 32 having an serpentine-shaped groove 35, annotated fig. 1) includes a piston (portion A of compressor piston 32, annotated fig. 1) . Regarding claim 26, Allen, as modified by Meixner, discloses the invention as recited in claim 21. Allen does not explicitly disclose the striker is received in the piston. However, Meixner, in the same field of endeavor, teaches the striker (14b, fig. 4a) is received in the piston (Figure 4a shows a striking element 14b within a tubular element 54b. [0014] describes this tubular element can be a pot piston wherein the striking element 14b is received in this pot piston) . Meixner is evidence that having the striker is received in the piston (i.e., a pot piston) was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the rotary hammer of Allen such the striker is received in the piston, as taught by Meixner. Additionally, the one having ordinary skill in the art would have been motivated to modify the rotary hammer of Allen such the striker is received in the piston, as taught by Meixner, in order to achieve a more flexible embodiment of the impact device ([0014]). Moreover, the hollow design removes unnecessary material from the core, making the piston lighter. This reduces inertia, enabling faster reciprocation and lower energy consumption for the rotary hammer. Regarding claim 27, Allen, as modified by Meixner, discloses the invention as recited in claim 26. Allen discloses the driven member (portion B of compressor piston 32 having an serpentine-shaped groove 35, annotated fig. 1) includes a barrel cam (35, fig. 1) that couples to the piston (portion A of compressor piston 32, annotated fig. 1) , the barrel cam defining the cam track. Regarding claim 28, Allen, as modified by Meixner, discloses the invention as recited in claim 21. The modified Allen discloses a tool holder (Meixner – 34a, fig. 2a) configured to receive a tool bit (Meixner – 64a, fig. 2a) , the anvil (Meixner – 16a, fig. 2a) impacting the tool bit in response to impacts from the striker (Meixner – 18a, fig. 2a) ([0023]) . Regarding claim 29, Allen, as modified by Meixner, discloses the invention as recited in claim 21. Allen discloses the spindle (10, 11, fig. 1) is rotatable by the motor (via ring gear 22/planet gears 20 engaging a rotor pinion 7 of the motor) . 07-21-aia AIA Claim s 31 are rejected under 35 U.S.C. 103 as being unpatentable over Allen (US 3 161 241), in view of Meixner (US 2010/0294525 A1), in further view of Greene (US 2 436 692 A) . Regarding claim 31, Allen, as modified by Meixner, discloses the invention as recited in claim 23. Allen discloses the follower (36, fig. 1) is a cam ball (Col. 2, ll. 31 – 36; “balls 36”) . The modified Allen does not explicitly disclose that the follower is a pin. However, Greene, which is reasonably pertinent to the problem faced by the inventor, teaches a follower (38, fig. 1) is a pin (Figure 1 shows a pin 38 used as a follower in a groove 32. Figure 3 shows an alternate embodiment wherein the pin 38 is substituted by a cam ball 64 to be used as the follower in a groove 32’ indicating that the pin and the cam ball are functional equivalents that can be used as the follower in the groove) . Greene is evidence that using the pin as the follower was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention and that the pin and the cam ball are functional equivalents that can be used as the follower in the groove. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success substituting the cam ball of Allen for the pin of Greene to achieve the predictable results of using the pin as the follower in the groove. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) - Simple substitution of one known element for another to obtain predictable results . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 4 – 5 and 10 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. Response to Arguments Applicant’s amendments and arguments, filed 17 February 2026, with respect to the objection to claim 1 have been fully considered and are persuasive. The objection to claim 1 has been withdrawn. Applicant’s amendments and arguments, filed 17 February 2026, with respect to the rejection of claims 6 – 7 under 35 USC §112(b) have been fully considered and are persuasive. The rejection of claims 6 – 7 under 35 USC §112(b) has been withdrawn. Applicant’s arguments, filed 17 February 2026, with respect to the rejection of claim 1 under 35 USC §103 regarding the interpretation of the piston of Allen have been fully considered but are not persuasive. Applicant argues: As an initial matter, the Office alleges that Allen teaches a piston (e.g., portion A of compressor piston 32 in the Office's annotated FIG. 1) and a reciprocation mechanism (e.g., portion B of compressor piston 32 having a serpentine-shaped groove 35 in the Office's annotated FIG. 1). Office action, p. 6 and 7. This interpretation of Allen is improper because it goes beyond what the reference reasonably and fairly teaches by arbitrarily dividing Allen's compressor piston 32 into multiple components. See Ex parte Williams, decision of the Board of Patent Appeals and Interferences, Application No. 11/275,039, Feb. 24, 2010, p. 5 ("While the Examiner correctly looks to apply a broadest reasonable interpretation of the claim terms under examination, it is also necessary to properly construe what an applied reference fairly teaches or discloses In the present case, the drawing of an imaginary line through an arbitrary location is not within the realm of what [the cited reference] reasonably and fairly teaches.") (first emphasis original, second emphasis added). Since this arbitrary division forms the basis of the rejection, in particular the combination with Frauhammer discussed below, the Office's rejection of claim 1 is improper in the first instance. In response to applicant’s argument, applicant references Ex parte Williams , decision of the Board of Patent Appeals and Interferences, that the examiner interpretation of Allen is improper because it goes beyond what the reference reasonably and fairly teaches by arbitrarily dividing Allen's compressor piston 32 into multiple components. However, Ex parte Williams is inapposite. In Ex parte Williams the Board states: While the Examiner correctly looks to apply a broadest reasonable interpretation of the claim terms under examination, it is also necessary to properly construe what an applied reference fairly teaches or discloses. See, e.g., In re Fracalossi and Wajer, 681 F.2d 792 (CCPA 1982) (reference is prior art not only for specifically disclosed embodiments, but also all that it fairly teaches). In the present case, the drawing of an imaginary line through an arbitrary location on the Taylor seat foam pad as a line of demarcation between the headrest portion and the backrest portion, which forms the basis for the Examiner's finding of anticipation, is contrary to the explicit teachings of the Taylor patent and not within the realm of what Taylor reasonably and fairly teaches. (page 5 – Decision on Appeal) Thus, the issue was not the dividing of an element into multiple components but whether such a division was contrary to the specific teachings of the prior art. In the instant case, applicant has not shown how the examiner’s interpretation the different components of Allen’s compressor piston was contrary to the explicit teachings of Allen. Therefore, the applicant’s argument is unpersuasive. Applicant’s arguments with respect to the rejection of claim 1 under 35 USC §103 regarding Frauhammer have been fully considered and is persuasive. Therefore, the rejection of claim 1 under 35 USC §103 as being unpatentable over Allen in view of Frauhammer has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Allen and Meixner. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID G SHUTTY whose telephone number is (571)272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday. 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 on 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /DAVID G SHUTTY/Examiner, Art Unit 3731 29 May 2026 Application/Control Number: 18/502,137 Page 2 Art Unit: 3731 Application/Control Number: 18/502,137 Page 3 Art Unit: 3731 Application/Control Number: 18/502,137 Page 4 Art Unit: 3731 Application/Control Number: 18/502,137 Page 5 Art Unit: 3731 Application/Control Number: 18/502,137 Page 6 Art Unit: 3731 Application/Control Number: 18/502,137 Page 7 Art Unit: 3731 Application/Control Number: 18/502,137 Page 9 Art Unit: 3731 Application/Control Number: 18/502,137 Page 10 Art Unit: 3731 Application/Control Number: 18/502,137 Page 11 Art Unit: 3731 Application/Control Number: 18/502,137 Page 12 Art Unit: 3731 Application/Control Number: 18/502,137 Page 13 Art Unit: 3731 Application/Control Number: 18/502,137 Page 14 Art Unit: 3731 Application/Control Number: 18/502,137 Page 15 Art Unit: 3731 Application/Control Number: 18/502,137 Page 16 Art Unit: 3731 Application/Control Number: 18/502,137 Page 18 Art Unit: 3731 Application/Control Number: 18/502,137 Page 19 Art Unit: 3731 Application/Control Number: 18/502,137 Page 20 Art Unit: 3731 Application/Control Number: 18/502,137 Page 21 Art Unit: 3731
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