DETAILED ACTION
Response to Arguments
Applicant’s arguments, see Remarks, filed 28 July 2026, with respect to the claim rejections under 35 USC 112 have been fully considered and are persuasive. The claim rejections under 35 USC 112 have been withdrawn.
Applicant’s arguments, see Remarks, filed 28 July 2026, with respect to the claim rejections under 35 USC 103 have been fully considered and are not persuasive.
Applicant argues, with respect to claim 110, that the examiner fails to sufficiently explain why a person of ordinary skills in the art would have been motivated to use the press-fit connection between the spindle and bearings of Huber on the fan of Martin instead of the nut. The examiner respectfully points out that the motivation to modify Martin, and similarly Chen, in view of Huber has been clearly stated in the claim rejections since Huber teaches a known and suitable connection method between co-rotating components. A person of ordinary skills in the art could use Huber’s teaching to modify any combination of co-rotating components to connect them via a press-fit connection since said press-fit connection is known and suitable based on Huber’s disclosure. Any other potential connection between hypothetical components, e.g., nut, is of no importance since the claims do not recite said nut element connection with respect to another co-rotating component. Therefore, the arguments are not persuasive.
Applicant further argues, with respect to claim 117, that claim 117 is allowable over the cited prior art because the present application permits the compactness of the sander to be increased which results in better operation in tighter spaces. The examiner respectfully points out that applicant is relying on a disclosure paragraph [128] that does not appear to be related to the claim recitation in question. The claim recitation of the 0.6 relative dimensions is disclosed by applicant in paragraph [122] and no disclosure of compactness is discussed in said paragraph [122]. Compactness, as pointed by applicant, is disclosed in paragraph [128], however, said compactness concept is not related to the claim 117 limitation being argued. Therefore, the arguments are not persuasive.
Applicant further argues, with respect to claim 121, that claim 121 is allowable over the cited prior art because the present application permits the compactness of the sander to be increased. The examiner respectfully points out that applicant is relying on a disclosure paragraph [128] that does not appear to be related to the claim recitation in question. The claim recitation of the battery pack is disclosed by applicant in multiple paragraphs; however, no disclosure of compactness is discussed in said multiple paragraphs. Compactness, as pointed by applicant, is disclosed in paragraph [128], however, said compactness concept is not related to the claim 121 limitation being argued. Therefore, the arguments are not persuasive.
For the reasons above, the arguments with respect to the claim rejections under 35 USC 103 are persuasive, and the rejections are maintained.
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.
Claim(s) 110-111 and 114-120 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin (US 6,132,300 A) in view of Huber (US 6,979,254 B1).
Regarding claim 110, Martin teaches a random orbit sander (Fig.1/3) comprising:
a housing (6);
a motor (2) enclosed within the housing, the motor including a motor shaft (7) rotatable about a first axis (Annotated Fig.1);
an eccentric carrier coupled to the motor shaft (Annotated Fig.1), the eccentric carrier including a circular internal bore (Fig.1, where radial bearing 15 is received) defining a second axis (Annotated Fig.1) that is offset from the motor shaft (Annotated Fig.1);
a radial bearing (15) received within the circular internal bore of the eccentric carrier (Annotated Fig.1);
a dust extraction fan (8) rotationally unitized with the eccentric carrier for corotation therewith (Annotated Fig.1);
an eccentric shaft (14) having a longitudinal axis (Annotated Fig.1); and
a sanding pad (21/24) supported by the eccentric shaft and rotatable about the first axis in an eccentrically orbiting manner (column 2 line 33-35 and 50-64).
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Martin does not explicitly teach the eccentric carrier, the radial bearing, the dust extraction fan, and the eccentric shaft are coupled to each other by press-fit connections.
Huber teaches a random orbit sander (Fig.1A) comprising: a housing (15); an eccentric carrier (57), the eccentric carrier including a circular internal bore (where radial ball bearings 55 are received); two ball bearings (55) received within the circular internal bore of the eccentric carrier (Fig.1A); an eccentric shaft (53); a sanding pad (14/70) supported by the eccentric shaft. Huber further teaches the eccentric shaft is press-fitted into the radial ball bearings (column 5 line 65), therefore, disclosing a known and suitable connection method between co-rotating components.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the random orbit sander of Martin by having the eccentric carrier, the radial bearing, the dust extraction fan, and the eccentric shaft are coupled to each other by press-fit connections based on the teachings of Huber because this type of press-fit connections are known and suitable connections method between co-rotating components.
Regarding claim 111, Martin and Huber further teach a plane is defined perpendicular to the longitudinal axis of the eccentric shaft such that the plane passes through the eccentric carrier, the dust extraction fan, the radial bearing, and the eccentric shaft (Martin Annotated Fig.1).
Regarding claim 114, Martin and Huber teach all the limitations of claim 110, see above, however, do not explicitly teach the eccentric carrier is integrally formed as a single piece with the motor shaft.
However, courts have affirmed “that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to further modify the random orbit sander of Martin and Huber by having the eccentric carrier being integrally formed as a single piece with the motor shaft as a matter of obvious engineering choice.
Regarding claim 115, Martin and Huber teach all the limitations of claim 110, see above, however, do not explicitly teach a diameter of the sanding pad is less than four inches.
However, it is noted that applicant has not disclosed that having a diameter of the sanding pad is less than four inches results in an unpredicted result not seen in the prior art and it appears that the invention of Martin and Huber would perform equally well with a diameter of the sanding pad is less than four inches. Accordingly, it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04(IV)(A)).
Regarding claim 116, Martin and Huber teach all the limitations of claim 110, see above, however, do not explicitly teach the diameter of the sanding pad is three inches.
However, it is noted that applicant has not disclosed that having a diameter of the sanding pad is three inches results in an unpredicted result not seen in the prior art and it appears that the invention of Martin and Huber would perform equally well with a diameter of the sanding pad is three inches. Accordingly, it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04(IV)(A)).
Regarding claim 117, Martin and Huber teach all the limitations of claim 110, see above, however, do not explicitly teach a motor housing portion height of the random orbit sander is less than 0.6 times an overall length of the random orbit sander.
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert, denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In the current instance the only difference between claim 117 and the disclosed random orbit sander assembly of Martin and Huber is the relative dimensions of the motor housing portion height of the random orbit sander being less than 0.6 times an overall length of the random orbit sander. Since Martin and Huber have disclosed a random orbit sander assembly with the claimed components and, if having said claimed relative dimensions between the motor housing portion height of the random orbit sander being less than 0.6 times an overall length of the random orbit sander would not perform differently than the prior art device, the claims are not patentably distinct and said relative dimensions modification would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art.
Regarding claim 118, Martin and Huber further teach the eccentric carrier, the dust extraction fan, the radial bearing, and the eccentric shaft are positioned within a lower cavity of a motor housing portion of the random orbit sander (Martin Fig.1).
Regarding claim 119, Martin and Huber further teach the radial bearing and the eccentric shaft are provided within the eccentric carrier, and wherein the dust extraction fan is provided outside the eccentric carrier (Martin Fig.1 and Annotated Fig.1).
Regarding claim 120, Martin and Huber further teach the radial bearing includes two rows of ball bearings positioned between the eccentric shaft and the eccentric carrier (Huber Fig.1A, note bearings 55 between eccentric shaft 53 and eccentric carrier 57).
Claim(s) 121 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin and Huber as applied to claim 110 above, and further in view of Chen (US 20220072676 A1).
Regarding claim 121, Martin and Huber teach all the limitations of claim 110, see above, and further teach the housing includes a motor housing portion (Martin Fig.1, portion of 6 where 2 is enclosed) defining a motor housing axis (Martin Annotated Fig.1, similar to First Axis) and a handle portion defining a handle axis transverse to the motor housing axis (Martin Annotated Fig.1), the motor is enclosed within the motor housing portion and oriented vertically within the motor housing portion (Martin Annotated Fig.1), however, do not explicitly teach a battery pack is removably connectable to a rear end of the handle portion.
Chen teaches a sander (Fig.4) comprising: a housing (where 11 points to); an eccentric carrier (117), the eccentric carrier including a circular internal bore (where radial ball bearings 136 are received); ball bearings (136) received within the circular internal bore of the eccentric carrier (Fig.4); an eccentric shaft (defined by 152); a sanding pad (15/151) supported by the eccentric shaft; a handle portion (11). Chen further teaches the sander including a battery pack (16) is removably connectable to a rear end of the handle portion (Fig.3, note battery mount 121).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to further modify the random orbit sander of Martin and Huber by having a battery pack removably connectable to a rear end of the handle portion based on the teachings of Chen because this would require a simple substitution of one known element (electrical cord plug of Martin) for another (battery connection of Chen) to obtain predictable results (providing a suitable power source to run the sander).
Claim(s) 122 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin and Huber as applied to claim 110 above, and further in view of Zhang et al – hereafter Zhang 1 – (US 20230271296 A1).
Regarding claim 122, Martin and Huber teach all the limitations of claim 110, see above, however, do not explicitly teach a user control panel positioned at a top of a motor housing portion of the housing, wherein the first axis passes through the user control panel.
Zhang 1 teaches a sander (Fig.1-3) comprising: a housing (10); a handle portion (110); a motor housing portion of the housing (above 120); a first axis (101). Zhang 1 further teaches the sander including a user control panel (111) positioned at a top of a motor housing portion of the housing (Fig.1). The user control panel allows controlling on/off operation of the sander.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to further modify the sander of Martin and Huber by having a user control panel positioned at a top of a motor housing portion of the housing based on the teachings of Zhang 1 because this would allow controlling on/off operation of the sander.
Furthermore, it has been held that if shifting the position of a component in a device would not have modified the operation of said device, said position shift of said component is unpatentable, additionally, a particular placement of a component in a device has been held to be an obvious matter of design choice. In the current instance, there is no evidence that having the first axis passing through the user control panel, would change the operation of the sander assembly, therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to further modify the sander assembly of Martin, Huber and Zhang 1 by shifting the position/placement of the first axis passing through the user control panel as an obvious matter of design choice (MPEP 2144.04 VI C).
Claim(s) 123 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin and Huber as applied to claim 110 above, and further in view of Zhang et al – hereafter Zhang 2 – (US 20240198483 A1).
Regarding claim 123, Martin and Huber teach all the limitations of claim 110, see above, and further teach the housing includes a motor housing portion (Martin Fig.1, portion of 6 where 2 is enclosed) having a neck portion and a pommel portion (Martin Annotated Fig.1), however, do not explicitly teach a front work light is positioned on a front surface of the neck portion and is positioned below the pommel portion.
Zhang 2 teaches a sander (Fig.1/32) comprising: a housing (20); a handle portion (21); a motor housing portion of the housing (above 23) having a neck portion (where 22/204 points to) and a pommel portion (where 21/30/202 point to). Zhang 2 further teaches a front work light (271) is positioned on a front surface of the neck portion and is positioned below the pommel portion (Fig.32). A work region is within the illumination range of the work light, which is convenient for an operator to observe, thereby improving the user experience (¶100).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to further modify the sander of Martin and Huber by having a front work light is positioned on a front surface of the neck portion and is positioned below the pommel portion based on the teachings of Zhang 2 because this would allow a work region being within the illumination range of the work light, which is convenient for an operator to observe, thereby improving the user experience.
Claim(s) 165-167 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin and Huber as applied to claim 110 above, and further in view of Wuensch (US 20050247463 A1; also US 7,475,739 B2).
Regarding claim 165, Martin and Huber teach all the limitations of claim 110, see above, and further teach the housing includes a motor housing portion (Martin Fig.1, portion of 6 where 2 is enclosed) defining a motor housing axis (Martin Annotated Fig.1, similar to First Axis) and a handle portion defining a handle axis transverse to the motor housing axis (Martin Annotated Fig.1), the motor is enclosed within the motor housing portion and oriented vertically within the motor housing portion (Martin Annotated Fig.1), however, do not explicitly teach a motor-activation trigger is positioned beneath the handle portion and adjacent the motor housing portion and configured to activate the motor when pressed, the motor-activation trigger being accessible when the handle portion is held in a pistol-grip configuration.
Wuensch teaches a sander (Fig.1) comprising: a housing (12); a handle portion (14); a motor housing portion of the housing (enclosing 20). Wuensch further teaches a motor-activation trigger (16) positioned beneath the handle portion and adjacent the motor housing portion and configured to activate the motor when pressed (¶18), the motor-activation trigger being accessible when the handle portion is held in a pistol-grip configuration (Fig.1). Said motor-activation trigger allows to manually operate the starting and stopping of the motor (¶18).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to further modify the sander of Martin and Huber by having a motor-activation trigger is positioned beneath the handle portion and adjacent the motor housing portion and configured to activate the motor when pressed, the motor-activation trigger being accessible when the handle portion is held in a pistol-grip configuration based on the teachings of Wuensch because this would allow to manually operate the starting and stopping of the motor.
Regarding claim 166, Martin, Huber and Wuensch further teach a dust extraction tube (Martin 11; Wuensch 40) extending from a bottom end of the motor housing portion, the dust extraction tube defining a tube axis extending approximately parallel to the handle axis (Martin Fig.1; Wuensch Fig.1, handle axis not labeled).
Regarding claim 167, Martin, Huber and Wuensch further teach a brace extending between a rear end of the dust extraction tube and a rear end of the handle portion (Wuensch Fig.1, brace not labeled).
Claim(s) 168-170 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin, Huber and Wuensch as applied to claim 167 above, and further in view of Chen.
Regarding claim 168, Martin, Huber and Wuensch teach all the limitations of claim 167, see above, however, do not explicitly teach a battery pack is removably connectable to a rear end of the handle portion.
Chen teaches a sander (Fig.4) comprising: a housing (where 11 points to); an eccentric carrier (117), the eccentric carrier including a circular internal bore (where radial ball bearings 136 are received); ball bearings (136) received within the circular internal bore of the eccentric carrier (Fig.4); an eccentric shaft (defined by 152); a sanding pad (15/151) supported by the eccentric shaft; a handle portion (11). Chen further teaches the sander including a battery pack (16) is removably connectable to a rear end of the handle portion (Fig.3, note battery mount 121).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to further modify the random orbit sander of Martin, Huber and Wuensch by having a battery pack removably connectable to a rear end of the handle portion based on the teachings of Chen because this would require a simple substitution of one known element (electrical cord plug of Martin) for another (battery connection of Chen) to obtain predictable results (providing a suitable power source to run the sander).
Regarding claim 169, Martin, Huber, Wuensch and Chen teach all the limitations of claim 168, see above, however, do not explicitly teach a motor housing portion height of the random orbit sander being less than 0.6 times an overall length of the random orbit sander.
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert, denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In the current instance the only difference between claim 169 and the disclosed random orbit sander assembly of Martin, Huber, Wuensch and Chen is the relative dimensions of the motor housing portion height of the random orbit sander being less than 0.6 times an overall length of the random orbit sander. Since Martin, Huber, Wuensch and Chen have disclosed a random orbit sander assembly with the claimed components and, if having said claimed relative dimensions between the motor housing portion height of the random orbit sander being less than 0.6 times an overall length of the random orbit sander would not perform differently than the prior art device, the claims are not patentably distinct and said relative dimensions modification would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art.
Regarding claim 170, Martin, Huber, Wuensch and Chen teach all the limitations of claim 168, see above, however, do not explicitly teach the battery pack is located above an outlet of the dust extraction tube.
However, it has been held that if shifting the position of a component in a device would not have modified the operation of said device, said position shift of said component is unpatentable, additionally, a particular placement of a component in a device has been held to be an obvious matter of design choice. In the current instance, there is no evidence that having the battery pack is located above an outlet of the dust extraction tube, would change the operation of the sander, therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to further modify the sander of Martin, Huber, Wuensch and Chen by shifting the position/placement of the battery pack is located above an outlet of the dust extraction tube as an obvious matter of design choice (MPEP 2144.04 VI C).
Claim(s) 110-113 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 20220072676 A1) in view of Huber (US 6,979,254 B1).
Regarding claim 110, Chen teaches a random orbit sander (Fig.2-4) comprising:
a housing (where 11 points to);
a motor (115) enclosed within the housing, the motor including a motor shaft (114) rotatable about a first axis (141);
an eccentric carrier coupled to the motor shaft (117), the eccentric carrier including a circular internal bore (where radial bearings 136 are received) defining a second axis (Annotated Fig.4) that is offset from the motor shaft (Fig.4);
a radial bearing (136) received within the circular internal bore of the eccentric carrier (Fig.4);
a dust extraction fan (126) rotationally unitized with the eccentric carrier for corotation therewith (Fig.4);
an eccentric shaft (defined by 152) having a longitudinal axis (Annotated Fig.4); and
a sanding pad (15/151) supported by the eccentric shaft and rotatable about the first axis in an eccentrically orbiting manner (¶30, note “produce an eccentric rotational route”).
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Chen does not explicitly teach the eccentric carrier, the radial bearing, the dust extraction fan, and the eccentric shaft are coupled to each other by press-fit connections.
Huber teaches a random orbit sander (Fig.1A) comprising: a housing (15); an eccentric carrier (57), the eccentric carrier including a circular internal bore (where radial ball bearings 55 are received); two ball bearings (55) received within the circular internal bore of the eccentric carrier (Fig.1A); an eccentric shaft (53); a sanding pad (14/70) supported by the eccentric shaft. Huber further teaches the eccentric shaft is press-fitted into the radial ball bearings (column 5 line 65), therefore, disclosing a known and suitable connection method between co-rotating components.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the random orbit sander of Chen by having the eccentric carrier, the radial bearing, the dust extraction fan, and the eccentric shaft are coupled to each other by press-fit connections based on the teachings of Huber because this type of press-fit connections are known and suitable connections method between co-rotating components.
Regarding claim 111, Chen and Huber further teach a plane is defined perpendicular to the longitudinal axis of the eccentric shaft such that the plane passes through the eccentric carrier, the dust extraction fan, the radial bearing, and the eccentric shaft (Chen Annotated Fig.4).
Regarding claim 112, Chen and Huber further teach the plane passes through a counterweight (Chen Annotated Fig.4, 119) of the dust extraction fan and through a fan blade of the dust extraction fan (Chen Annotated Fig.4).
Regarding claim 113, Chen and Huber further teach the dust extraction fan is formed with a counterweight (Chen Annotated Fig.4, 119) to form a fan and counterweight unit, however, do not explicitly teach the dust extraction fan being integrally formed as a single piece with the counterweight.
However, courts have affirmed “that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to further modify the random orbit sander of Chen and Huber by having the dust extraction fan being integrally formed as a single piece with the counterweight as a matter of obvious engineering choice.
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 JUAN G FLORES whose telephone number is (571)272-3486. The examiner can normally be reached Monday - Friday, 8:30am - 5:30pm Pacific Time.
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, Nathan E Wiehe can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUAN G FLORES/Primary Examiner, Art Unit 3745
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