DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 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 feed element configured and arranged to displace a selected one of the plurality of insert tools from a park position in a corresponding one of the plurality of insert tool chambers, out of the corresponding one of the plurality of insert tool chambers, and into a working position in the tool holder” in claim 1;
“an actuating element configured and arranged to actuate the feed element” in claim 1;
“at least one adjusting element which is designed to adjust the support element during a movement from the working position” in claim 5.
“the actuating element” in claim 6;
“the feed element” in claim 6;
“at least one alignment element which is designed to align the feed element relative to the housing from the park position to the working position” in claim 10;
“the feed element” in claim 10;
“a feed element configured and arranged to displace a selected one of the plurality of insert tools from a park position in a corresponding one of the plurality of insert tool chambers, out of the corresponding one of the plurality of insert tool chambers, and into a working position in the tool holder” in claim 12;
“an actuating element configured and arranged to actuate the feed element” in claim 12;
“at least one adjusting element which is designed to adjust the support element during a movement from the working position” in claim 15; and
“the actuating element” in claim 16.
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 Objections
Claim 1 is objected to because of the following informalities: On lines 2-3 of the claim, “a plurality of insert tool chambers defining a hollow cylinder” should be changed to “a plurality of insert tool chambers, each of the plurality of tool insert chambers defining a respective hollow cylinder”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On lines 5-9 of the claim, “to rotatably drive at least one of the plurality of insert tools, wherein the tool holder is arranged rotatably in a tool holder opening of the housing with a feed element configured and arranged to displace a selected one of the plurality of insert tools” should be changed to “to rotatably drive a selected one of the plurality of insert tools, wherein the tool holder is arranged rotatably in a tool holder opening of the housing with a feed element configured and arranged to displace [[a]] the selected one of the plurality of insert tools”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On lines 16-18 of the claim, “each of the plurality of insert tool chambers includes an axial groove, intersecting the hollow cylinder, through which the feed element is configured to be guided as the feed element displaces…” should be changed to “each of the plurality of insert tool chambers includes [[an]] a respective axial groovethat intersects the hollow cylinder thereof, being configured to be guided through the axial groove of the corresponding one of the plurality of insert tool chambers as the feed element displaces….” Appropriate correction is required.
Claim 12 is objected to because of the following informalities: On lines 2-3 of the claim, “a plurality of insert tool chambers defining a hollow cylinder” should be changed to “a plurality of insert tool chambers, each of the plurality of tool insert chambers defining a respective hollow cylinder”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: On lines 5-7 of the claim, “to rotatably drive at least one of the plurality of insert tools, wherein the tool holder is arranged rotatably in a tool holder opening of the housing with a feed element configured and arranged to displace a selected one of the plurality of insert tools” should be changed to “to rotatably drive a selected one of the plurality of insert tools, wherein the tool holder is arranged rotatably in a tool holder opening of the housing with a feed element configured and arranged to displace [[a]] the selected one of the plurality of insert tools”. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: On line 2 of the claim, “at least one axial groove” should be changed to “at least one respective axial groove”. Appropriate correction is required.
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 4 and 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.
Claim 4 recites the limitation "the at least one axial groove of each of the plurality of insert tool chambers" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. Please note that in claim 1, on which claim 4 directly depends, Applicant set forth, “each of the plurality of insert tool chambers includes an axial groove” not “includes at least one axial groove,” for example.
Claim 8 recites the limitation "the at least one groove of each of the plurality of insert tool chambers" in line 3. There is insufficient antecedent basis for this limitation in the claim. Please note that in claim 1, on which claim 8 depends via intervening claim 7, Applicant set forth, “each of the plurality of insert tool chambers includes an axial groove” not “includes at least one groove,” for example.
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.
Claims 1, 2, 6, 7, 9-14, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rivera-Bottzeck (U.S. Patent No. 5,346,453 A).
Be advised that Rivera-Bottzeck was previously cited by Examiner on the PTO-892 that mailed on 2/12/2026.
Claim 1: Figures 1 and 3 of Rivera-Bottzeck show a hand-held power tool (11) as comprising a housing (13), a tool holder (15), and an insert tool magazine (19) [column 3, lines 26-31]. As can be seen in Figure 1, the housing has the insert tool magazine (19). Next, as can best be seen in Figure 3, the insert tool magazine (19) has a plurality of insert tool chambers (67), each of which defining a respective hollow cylinder that is configured to hold a respective one of a plurality of insert tools. Please be advised that the insert tool magazine (19) is rotatably mounted within a shaped cavity in the housing (13) [column 4, lines 29-31].
With respect to the tool holder (15), it is configured to rotatably drive at least one of the plurality of insert tools. Also, the tool holder (15) is arranged rotatably [column 3, lines 65-67] in a tool holder opening of the housing (13). The tool holder opening can be seen in Figure 1 of Rivera-Bottzeck.
Next, be advised that lines 7-11 of claim 1 set forth therein, “a feed element configured and arranged to displace a selected one of the plurality of insert tools from a park position in a corresponding one of the plurality of insert tool chambers, out of the corresponding one of the plurality of insert tool chambers, and into a working position in the tool holder.” Noting this, “a feed element” is being interpreted by Examiner 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. Please be advised that “a feed element” is interpreted as comprising the structure disclosed in paragraph [0012] of Applicant's specification filed on 12/18/2023, as well as equivalents thereto.
Regarding the prior art and Rivera-Bottzeck, Figures 1 and 4 thereof show a stranded steel cable (89), wherein a stop (95), a cage-engaging element (101), and an end cap (99) are provided on the stranded steel cable (89). Please be advised that a magnet (97) is secured in the end cap (99) [column 4, lines 66-67]. Please also be advised that the stranded steel cable (89) and its associated appurtenances (95, 99, 101) correspond in structure to the disclosed “feed element (500)” of Applicant. This is because this combination of elements is designed in the form of a slide and has at least one connecting element (the end cap (99)) that is provided with the magnet (97). (In paragraph [0012] of Applicant’s specification, Applicant disclosed that: “For example, the feed element can be designed in the form of a slide. The feed element can have at least one connecting element for at least one of the insert tools. The connecting element can, for example, be designed as a magnet that can be connected to at least one of the insert set tools”). As such, the combination of the stranded steel cable (89), the stop (95), the cage-engaging element (101), and the end cap (99) of Rivera-Bottzeck will hereinafter be referred to by Examiner as, “the feed element (89+95+99+101).”
Please be advised that the feed element (89+95+99+101) of Rivera-Bottzeck is configured and arranged to displace a selected one of the plurality of insert tools from a park position in a corresponding one of the plurality of insert tool chambers (67), out of the corresponding one of the plurality of insert tool chambers (67), and into a working position in the tool holder (15) [column 4, line 53 – column 5, line 12; and column 5, lines 53-67].
Next, be advised that lines 11-12 of claim 1 set forth therein, “an actuating element configured and arranged to actuate the feed element.” Noting this, “an actuating element” is being interpreted by Examiner 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. Please be advised that “an actuating element” is interpreted as comprising the structure disclosed in paragraph [0013] of Applicant's specification filed on 12/18/2023, as well as equivalents thereto.
With respect to the prior art and Rivera-Bottzeck, Figures 1 and 4 thereof show a push knob (91) and web (93). Be advised that the push knob (91) and web (93) of Rivera-Bottzeck correspond in structure to the disclosed “actuating element” of Applicant. This is because the push knob (91) and web (93) form an actuating slide, noting that said push knob (91) and said web (93) are installed so as to slide along a slot (86) that opens to the outside of the housing [column 4, lines 60-65; column 5, lines 57-59]. (In paragraph [0013] of Applicant’s specification, Applicant disclosed that: “The actuating element can be designed as an actuating slide, for example”). Therefore, the push knob (91) and web (93) of Rivera-Bottzeck will hereinafter be referred to as, “the actuating element (91+93).” Please note that the actuating element (91+93) of Rivera-Bottzeck is designed to actuate the feed element (89+95+99+101) [column 5, lines 57-59].
The hand-held power tool (11) of Rivera-Bottzeck further comprises a support element, which is configured to support the feed element (89+95+99+101) at least in the working position in the tool holder (15). Please be advised that the support element is formed as a tubular element comprising a guide channel (85) in which at least a portion of the feed element (89+95+99+101) is supported when said feed element (89+95+99+101) has been slid into the working position. For Applicant’s reference, the support element has been pointed to below in annotated Figure 1. Please be advised that the actuating element (91+93) can only slide to the distal end of the aforesaid slot (86). As such, at least a portion of the stranded steel cable (89) of the feed element (89+95+99+101) will always be disposed within and supported by the support element whilst the feed element (89+95+99+101) is in the working position in the tool holder (15).
As can also be seen below in annotated Figure 1, at least when the actuating element (91+93) has slid to the distal end of the aforesaid slot (86) (which distal end has been denoted with a box in the below figure), the support element is arranged at least partially between the insert tool magazine (19) and the actuating element (91+93). Please note that Examiner has utilized a dashed line within annotated Figure 1. With respect to this dashed line, for example, the support element is arranged at least partially between the insert tool magazine (19) and the actuating element (91+93).
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Lastly, as can be seen in Figure 3 of Rivera-Bottzeck, each of the plurality of insert tool chambers (67) includes a respective axial groove (105) that intersects the corresponding hollow chamber. Noting this, the feed element (89+95+99+101) is configured to be guided through the axial groove (105) of the corresponding one of the plurality of insert tool chambers (67) as the feed element (89+95+99+101) displaces the selected one of the plurality of insert tools from the park position into the working position. Please be advised that it is a side block (103) of the feed element (89+95+99+101) that is guided through the axial groove (105) [column 5, lines 9-12].
Claim 2: As can be seen below in version 2 of annotated Figure 1 of Rivera-Bottzeck, at least a part of the insert tool magazine (19) is arranged radially between a gear unit (21 or 51) and the support unit. Note that the dashed line utilized in version 2 of annotated Figure 1 extends radially with respect to a longitudinal axis of a handle (47) of the hand-held power (11), for example.
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Claim 6: Due to the web (93) of the actuating element (91+93) being a thin pin-shaped element, the actuating element (91+93) can be partially flexed/bent at the web (93) thereof with respect to the feed element (89+95+99+101). As such, at least in this way, the actuating element (91+93) is coupled to the feed element (89+95+99+101) such that said actuating element (91+93) is at least partially movable relative to said the feed element (89+95+99+101).
Claim 7: The stranded steel cable (89) of the feed element (89+95+99+101) is a contact web, because it (89) is network of wire strands that are twisted and bundled together such that the exterior of the stranded steel cable (89) contacts an inner periphery of each of the stop (95), the cage-engaging element (101), and the end cap (99) of the feed element (89+95+99+101). Noting this, as was stated above in the rejection of claim 1, at least a portion of the stranded steel cable/ contact web (89) of the feed element (89+95+99+101) will always be disposed within and supported by the support element whilst the feed element (89+95+99+101) is in the working position in the tool holder (15). As such, when the feed element (89+95+99+101) is in the working position in the tool holder (15), the support element (which again is the tubular element comprising the guide channel (85)) will block the at least a portion of the stranded steel cable/ contact web (89) from exiting the guide channel (85) such that the feed element (89+95+99+101) is maintained supported by said support element. Thus, the feed element (89+95+99+101) has the contact web (89) which is designed such that the support element blocks the contact web (89) in the working position.
Claim 9: The contact web (89), via at least the corresponding cage-engaging element (101) contacting an interior wall of the support element (see Figure 1), acts on the support element during a movement from the park position into the working position.
Claim 10: Please be advised that lines 1-3 of claim 10 set forth therein, “at least one alignment element which is designed to align the feed element relative to the housing from the park position to the working position.” Noting this, “at least one alignment element” is being interpreted by Examiner 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. Be advised that “at least one alignment element” is interpreted as comprising the structure disclosed in paragraph [0026] of Applicant's specification filed on 12/18/2023, as well as equivalents thereto.
With respect to the prior art and Rivera-Bottzeck, Figures 1 and 4 thereof show the feed element (89+95+99+101) as comprising the cage-engaging element (101) from which emanates a side block (103). This side block (103) corresponds in structure to the disclosed “at least one alignment element” of Applicant. This is because the side block (103) is shown in Figure 4 as being embodied as a plate. (In paragraph [0026] of Applicant’s specification, Applicant disclosed that: “The alignment element can be designed as a plate or a disk, for example”). Thus, the side block (103) of Rivera-Bottzeck will hereinafter be referred to by Examiner as, “the at least one alignment element (103).”
Noting the above, the at least one alignment element (103) of Rivera-Bottzeck is designed to align the feed element (89+95+99+101) relative to (at least) the housing (13) from the park position to the working position. When the at least one alignment element (103) is guided through the axial groove (105) in moving the feed element (89+95+99+101) from the park position to the working position, the feed element (89+95+99+101) is kept in appropriate alignment [column 5, lines 10-11] relative to components of the hand-held power tool (11) including at least the housing (13) thereof. Also, when the at least one alignment element (103) engages with a locking cage (23) when the working position is reached, an axial alignment of the feed element (89+95+99+101) with respect to the components of the hand-held power tool (11) including at least the housing (13) thereof is also provided for. Thus, in at least this way, the at least one alignment element (103) is designed to align the feed element (89+95+99+101) relative to the housing (13) from the park position to the working position.
Claim 11: Please be advised that because the insert tool magazine (19) and tool holder (15) are capable of receiving a screw driver bit, said hand-held power tool (11) is able to be used as a screwdriver. Thus, in at least this way, the hand-held power tool (11) “is a screw driver.”
Claim 12: Figures 1 and 3 of Rivera-Bottzeck show a hand-held power tool (11) as comprising a housing (13), a tool holder (15), and an insert tool magazine (19) [column 3, lines 26-31]. As can be seen within Figure 1, the housing has the insert tool magazine (19). Next, as can best be seen within Figure 3, the insert tool magazine (19) has a plurality of insert tool chambers (67), each of which defining a respective hollow cylinder that is configured to hold a respective one of a plurality of insert tools. Be advised that the insert tool magazine (19) is rotatably arranged within a shaped cavity in the housing (13) [column 4, lines 29-31] “along”/next to/beside an axis, e.g. “along”/next to/beside a longitudinal axis of a handle (47) of the hand-held power (11). (It is noted that claim 12 as presently set forth doesn’t require the claimed insert tool magazine to be arranged in the claimed housed for rotation “about” the claimed axis, for example. Rather than setting forth, for example, “about”, Applicant set forth the broader “along”).
With respect to the tool holder (15), it is configured to rotatably drive at least one of the plurality of insert tools. Also, the tool holder (15) is arranged rotatably [column 3, lines 65-67] in a tool holder opening of the housing (13). The tool holder opening can be seen in Figure 1 of Rivera-Bottzeck.
Next, be advised that lines 7-10 of claim 12 set forth therein, “a feed element configured and arranged to displace a selected one of the plurality of insert tools from a park position in a corresponding one of the plurality of insert tool chambers, out of the corresponding one of the plurality of insert tool chambers, and into a working position in the tool holder.” Noting this, “a feed element” is being interpreted by Examiner 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. Please be advised that “a feed element” is interpreted as comprising the structure disclosed in paragraph [0012] of Applicant's specification filed on 12/18/2023, as well as equivalents thereto.
Regarding the prior art and Rivera-Bottzeck, Figures 1 and 4 thereof show a stranded steel cable (89), wherein a stop (95), a cage-engaging element (101), and an end cap (99) are provided on the stranded steel cable (89). Please be advised that a magnet (97) is secured in the end cap (99) [column 4, lines 66-67]. Please also be advised that the stranded steel cable (89) and its associated appurtenances (95, 99, 101) correspond in structure to the disclosed “feed element (500)” of Applicant. This is because this combination of elements is designed in the form of a slide and has at least one connecting element (the end cap (99)) that is provided with the magnet (97). (In paragraph [0012] of Applicant’s specification, Applicant disclosed that: “For example, the feed element can be designed in the form of a slide. The feed element can have at least one connecting element for at least one of the insert tools. The connecting element can, for example, be designed as a magnet that can be connected to at least one of the insert set tools”). As such, the combination of the stranded steel cable (89), the stop (95), the cage-engaging element (101), and the end cap (99) of Rivera-Bottzeck will hereinafter be referred to by Examiner as, “the feed element (89+95+99+101).”
Please be advised that the feed element (89+95+99+101) of Rivera-Bottzeck is configured and arranged to displace a selected one of the plurality of insert tools from a park position in a corresponding one of the plurality of insert tool chambers (67), out of the corresponding one of the plurality of insert tool chambers (67), and into a working position in the tool holder (15) [column 4, line 53 – column 5, line 12; and column 5, lines 53-67].
Next, be advised that line 11 of claim 12 sets forth therein, “an actuating element configured and arranged to actuate the feed element.” Noting this, “an actuating element” is being interpreted by Examiner 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. Please be advised that “an actuating element” is interpreted as comprising the structure disclosed in paragraph [0013] of Applicant's specification filed on 12/18/2023, as well as equivalents thereto.
With respect to the prior art and Rivera-Bottzeck, Figures 1 and 4 thereof show a push knob (91) and web (93). Be advised that the push knob (91) and web (93) of Rivera-Bottzeck correspond in structure to the disclosed “actuating element” of Applicant. This is because the push knob (91) and web (93) form an actuating slide, noting that said push knob (91) and said web (93) are installed so as to slide along a slot (86) that opens to the outside of the housing [column 4, lines 60-65; column 5, lines 57-59]. (In paragraph [0013] of Applicant’s specification, Applicant disclosed that: “The actuating element can be designed as an actuating slide, for example”). Therefore, the push knob (91) and web (93) of Rivera-Bottzeck will hereinafter be referred to as, “the actuating element (91+93).” Please note that the actuating element (91+93) of Rivera-Bottzeck is designed to actuate the feed element (89+95+99+101) [column 5, lines 57-59].
The hand-held power tool (11) of Rivera-Bottzeck further comprises a support element, which is configured to support the feed element (89+95+99+101) at least in the working position in the tool holder (15). Please be advised that the support element is formed as a tubular element comprising a guide channel (85) in which at least a portion of the feed element (89+95+99+101) is supported when said feed element (89+95+99+101) has been slid into the working position. For Applicant’s reference, the support element has been pointed to below in annotated Figure 1. Please be advised that the actuating element (91+93) can only slide to the distal end of the aforesaid slot (86). As such, at least a portion of the stranded steel cable (89) of the feed element (89+95+99+101) will always be disposed within and supported by the support element whilst the feed element (89+95+99+101) is in the working position in the tool holder (15).
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As can be seen above in annotated Figure 1, at least when the actuating element (91+93) has slid to the distal end of the aforesaid slot (86) (which distal end has been denoted with a box in the above figure), the support element is arranged radially, relative to said axis, between the insert tool magazine (19) and the actuating element (91+93). Examiner reiterates that said axis corresponds to the longitudinal axis of a handle (47) of the hand-held power (11). Due to the breadth of Applicant having set forth, “the insert tool magazine arranged in the housing for rotation along an axis” (emphasis added), Examiner was not precluded from this interpretation. It is reiterated that as it pertains to the “axis” that’s set forth in each of lines 4 and 14 of claim 12, claim 12 as presently constructed doesn’t require the claimed insert tool magazine to be arranged in the claimed housing for rotation about said claimed axis, for example. Having said that, please note that Examiner has utilized a dashed line in annotated Figure 1. This dashed lined extends radially with respect to the longitudinal axis of the handle (47) of the hand-held power tool (11), for example. It is relative to this dashed line, for example, that the support element is arranged radially between the insert tool magazine (19) and the actuating element (91+93).
Claim 13: As can be seen below in version 2 of annotated Figure 1 of Rivera-Bottzeck, at least a part of the insert tool magazine (19) is arranged radially between a gear unit (21 or 51) and the support unit. Note that the dashed line utilized in version 2 of annotated Figure 1 extends radially with respect to the longitudinal axis of a handle (47) of the hand-held power (11), for example.
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Claim 14: As can be seen in Figure 3 of Rivera-Bottzeck, each of the plurality of insert tool chambers (67) includes a respective axial groove (105). Noting this, the feed element (89+95+99+101) is configured to be guided through the axial groove (105) of the corresponding one of the plurality of insert tool chambers (67) as the feed element (89+95+99+101) displaces the selected one of the plurality of insert tools from the park position into the working position. Please be advised that it is a side block (103) of the feed element (89+95+99+101) that is guided through the axial groove (105) [column 5, lines 9-12].
Claim 16: Due to the web (93) of the actuating element (91+93) being a thin pin-shaped element, the actuating element (91+93) can be partially flexed/bent at the web (93) thereof with respect to the feed element (89+95+99+101). As such, at least in this way, the actuating element (91+93) is coupled to the feed element (89+95+99+101) such that said actuating element (91+93) is at least partially movable relative to said the feed element (89+95+99+101).
Claim 17: The stranded steel cable (89) of the feed element (89+95+99+101) is a contact web, because it (89) is network of wire strands that are twisted and bundled together such that the exterior of the stranded steel cable (89) contacts an inner periphery of each of the stop (95), the cage-engaging element (101), and the end cap (99) of the feed element (89+95+99+101). Noting this, as was stated above in the rejection of claim 1, at least a portion of the stranded steel cable/ contact web (89) of the feed element (89+95+99+101) will always be disposed within and supported by the support element whilst the feed element (89+95+99+101) is in the working position in the tool holder (15). As such, when the feed element (89+95+99+101) is in the working position in the tool holder (15), the support element (which again is the tubular element comprising the guide channel (85)) will block the at least a portion of the stranded steel cable/ contact web (89) from exiting the guide channel (85) such that the feed element (89+95+99+101) is maintained supported by said support element. Thus, the feed element (89+95+99+101) has the contact web (89) which is designed such that the support element blocks the contact web (89) in the working position.
Claim 18: The contact web (89), via at least the corresponding cage-engaging element (101) contacting an interior wall of the support element (see Figure 1), acts on the support element during a movement from the park position into the working position.
Claims 12, 13, 15, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wiker (Germany Publication No. DE 10045617 A1).
Please be advised that Wiker was previously cited by Examiner on the PTO-892 that mailed on 2/12/2026.
Please further be advised that an EPO Machine Translation of Wiker is relied upon below. This EPO Machine Translation has been provided with this office action.
Claim 12: Please note that Examiner will present two different interpretations of Wiker. Please be advised that such are not the only interpretations of the reference that are applicable to various ones of the present claims, but are merely two examples of applicable interpretations.
First Interpretation
Figures 1 and 2 of Wiker show a hand-held power tool as comprising a housing (10), a tool holder (14), and an insert tool magazine (12). As can be seen within Figures 1 and 2 of Wiker, the housing (12) has the insert tool magazine (12). Next as can be seen within Figure 3, the insert tool magazine (12) has a plurality of insert tool chambers (22), each of which defining a respective hollow cylinder configured to hold one of a plurality of insert tools (16), the insert tool magazine (12) arranged in the housing (10) for rotation along an axis (32).
With respect to the tool holder (14), it is configured to rotatably drive at least one of the plurality of insert tools (16). Also, the tool holder (14) is arranged rotatably [EPO Machine Translation, paragraph 0021] in a tool holder opening of the housing (10). Please be advised that the tool holder opening can be seen in at least Figure 1 of Wiker.
Next, be advised that lines 7-11 of claim 12 set forth therein, “a feed element configured and arranged to displace a selected one of the plurality of insert tools from a park position in a corresponding one of the plurality of insert tool chambers, out of the corresponding one of the plurality of insert tool chambers, and into a working position in the tool holder.” Noting this, “a feed element” is being interpreted by Examiner 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. Please be advised that “a feed element” is interpreted as comprising the structure disclosed in paragraph [0012] of Applicant's specification filed on 12/18/2023, as well as equivalents thereto.
Regarding the prior art and Wiker, Figures 1 and 4 thereof show a flexible rod (20) and a magnet (30) [EPO Machine Translation, paragraph 0022]. Please be advised that the flexible rod (20) and the magnet (30) correspond in structure to the disclosed “feed element (500)” of Applicant. This is because this combination of elements is designed in the form of a slide and has at least one connecting element (the magnet (30)). (In paragraph [0012] of Applicant’s specification, Applicant disclosed that: “For example, the feed element can be designed in the form of a slide. The feed element can have at least one connecting element for at least one of the insert tools. The connecting element can, for example, be designed as a magnet that can be connected to at least one of the insert set tools”). Thus, the combination of the flexible rod (20) and the magnet (30) of Wiker will hereinafter be referred to by Examiner as, “the feed element (20+30).”
Please be advised that the feed element (20+30) of Wiker is configured and arranged to displace a selected one of the plurality of insert tools (16) from a park position in a corresponding one of the plurality of insert tool chambers (22), out of the corresponding one of the plurality of insert tool chambers (22), and into a working position in the tool holder (14) [EPO Machine Translation, paragraph 0024].
Next, be advised that line 11 of claim 12 sets forth therein, “an actuating element configured and arranged to actuate the feed element.” Noting this, “an actuating element” is being interpreted by Examiner 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. Please be advised that “an actuating element” is interpreted as comprising the structure disclosed in paragraph [0013] of Applicant's specification filed on 12/18/2023, as well as equivalents thereto.
With respect to the prior art and Wiker, Figures 1 and 4 thereof show an actuating element (26) that is arranged on a cover side (28) of the housing (10) [EPO Machine Translation, paragraph 0023]. Be advised that the actuating element (26) of Wiker corresponds in structure to the disclosed “actuating element” of Applicant. This is because the actuating element (26) is an actuating slide that slides along the cover side (28) [EPO Machine Translation, paragraph 0027]. (In paragraph [0013] of Applicant’s specification, Applicant disclosed that: “The actuating element can be designed as an actuating slide, for example”). Please be advised that the actuating element (26) of Wiker is designed to actuate the feed element (20+30) [EPO Machine Translation, paragraphs 0024-0027].
The hand-held power tool (11) of Wiker further comprises a support element (24), which is formed as a flexible tubular plastic sleeve (24) [EPO Machine Translation, paragraph 0022] in which at least a portion of the feed element (20+30) is supported when the feed element (20+30) has been slid into the working position. Be advised that at least a portion of the flexible rod (20) of the feed element (20+30) will always be disposed within and supported by the support element (24) whilst the feed element (20+30) is in the working position in the tool holder (14) (this can be seen in Figure 2).
Lastly, at least when the actuating element (26) is located at the midpoint of the slot (48) along the cover side (28) of the housing (10), at least a part of the support element (24) is arranged radially, relative to said axis (32), between the insert tool magazine (12) and the actuating element (26). Examiner has annotated Figure 1 of Wiker and provided it below. In annotating this figure, Examiner has drawn an “X” to denote the midpoint of the slot (48). Again, at least when the actuating element (26) has been displaced so as to be disposed/located at the midpoint of the slot (48), at least a part of the support element (24) is arranged radially, relative to said axis (32), between the insert tool magazine (12) and the actuating element (26). It is noted that in addition to the “X”, Examiner has utilized a dashed line in the below annotated drawing to indicate a direction extending radially to said axis (32).
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Second Interpretation
Figures 1 and 2 of Wiker show a hand-held power tool as comprising a housing (10), a tool holder (14), and an insert tool magazine (12). As can be seen within Figures 1 and 2 of Wiker, the housing (12) has the insert tool magazine (12). Next as can be seen within Figure 3, the insert tool magazine (12) has a plurality of insert tool chambers (22), each of which defining a respective hollow cylinder configured to hold one of a plurality of insert tools (16), the insert tool magazine (12) arranged in the housing (10) for rotation along an axis (32).
With respect to the tool holder (14), it is configured to rotatably drive at least one of the plurality of insert tools (16). Also, the tool holder (14) is arranged rotatably [EPO Machine Translation, paragraph 0021] in a tool holder opening of the housing (10). Please be advised that the tool holder opening can be seen in at least Figure 1 of Wiker.
Next, be advised that lines 7-11 of claim 12 set forth therein, “a feed element configured and arranged to displace a selected one of the plurality of insert tools from a park position in a corresponding one of the plurality of insert tool chambers, out of the corresponding one of the plurality of insert tool chambers, and into a working position in the tool holder.” Noting this, “a feed element” is being interpreted by Examiner 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. Please be advised that “a feed element” is interpreted as comprising the structure disclosed in paragraph [0012] of Applicant's specification filed on 12/18/2023, as well as equivalents thereto.
Regarding the prior art and Wiker, Figures 1 and 2 thereof show a magnet (30) as interfacing with a rear face of a selected one of the plurality of insert tools (16). Figures 1 and 2 further show that when the magnet (30) incurs displacement from the position that is shown in Figure 1 to that shown in Figure 2, the magnet (30) acts on and displaces the selected one of the plurality of insert tools (16) from a park position in a corresponding one of the plurality of insert tool chambers (22), out of the corresponding one of the plurality of insert tool chambers (22), and into a working position in the tool holder (14). Thus, the magnet (30) of Wiker constitutes an equivalent of the “feed element.” This is because the magnet (30) of Wiker carries out the function that is specified in lines 7-11 of claim 12, said function being, “to displace a selected one of the plurality of insert tools from a park position in a corresponding one of the plurality of insert tool chambers, out of the corresponding one of the plurality of insert tool chambers, and into a working position in the tool holder.” Also, the magnet (30) isn’t excluded by any explicit definition provided in Applicant’s specification, and the magnet (30) produces substantially the same result as the corresponding “feed element (500)” of Applicant. Based on the foregoing, the magnet (30) of Wiker will hereinafter be referred to by Examiner as “the feed element [30].”
Next, be advised that line 11 of claim 12 sets forth therein, “an actuating element configured and arranged to actuate the feed element.” Noting this, “an actuating element” is being interpreted by Examiner 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. Please be advised that “an actuating element” is interpreted as comprising the structure disclosed in paragraph [0013] of Applicant's specification filed on 12/18/2023, as well as equivalents thereto.
With respect to the prior art and Wiker, Figures 1 and 4 thereof show an actuating element (26) that is arranged on a cover side (28) of the housing (10) [EPO Machine Translation, paragraph 0023]. Be advised that the actuating element (26) of Wiker corresponds in structure to the disclosed “actuating element” of Applicant. This is because the actuating element (26) is an actuating slide that slides along the cover side (28) [EPO Machine Translation, paragraph 0027]. (In paragraph [0013] of Applicant’s specification, Applicant disclosed that: “The actuating element can be designed as an actuating slide, for example”). Please be advised that the actuating element (26) of Wiker is designed to actuate the feed element (30) [EPO Machine Translation, paragraphs 0024-0027] by means of a support element (20) which is embodied as a flexible rod.
The hand-held power tool (11) of Wiker further comprises the support element (20), which again is embodied as the flexible rod. As can be seen within Figures 1 and 2, it is to a distal end of the support element (20) that the feed element (30) is attached and thus supported [EPO Machine Translation, paragraph 0024]. As Figure 2 shows, said support element (20) is configured to support the feed element (30) in the working position in the tool holder (14).
Lastly, at least when the actuating element (26) is located at the midpoint of the slot (48) along the cover side (28) of the housing (10), at least a part of the support element (20) is arranged radially, relative to said axis (32), between the insert tool magazine (12) and the actuating element (26). Examiner has annotated Figure 1 of Wiker and provided it below. In annotating this figure, Examiner has drawn an “X” to denote the midpoint of the slot (48). Again, at least when the actuating element (26) has been displaced so as to be disposed/located at the midpoint of the slot (48), at least a part of the support element (20) is arranged radially, relative to said axis (32), between the insert tool magazine (12) and the actuating element (26). It is noted that in addition to the “X”, Examiner has utilized a dashed line in the below annotated drawing to indicate a direction extending radially to said axis (32).
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Claim 13: Please note that Examiner has rejected claim 13 with respect to each of the first and second interpretation of Wiker.
First Interpretation
As can be seen below in annotated Figure 2 of Wiker, at least a part of the insert tool magazine (12) is arranged radially between a gear unit (36) and the support unit (24). Please be advised that the dashed line utilized in annotated Figure 2 of Wiker extends radially with respect a longitudinal axis extending through a center point of an arcuate section of the support unit (24). Please note that the from the perspective of Figure 2, said longitudinal axis extending through the center point extends into/out of the page.
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Second Interpretation
As can be seen above in annotated Figure 2 of Wiker, at least a part of the insert tool magazine (12) is arranged radially between a gear unit (36) and the support unit (20). Please be advised that the dashed line utilized in annotated Figure 2 of Wiker extends radially with respect a longitudinal axis extending through a center point of an arcuate section of the support unit (24). Please note that the from the perspective of Figure 2, said longitudinal axis extending through the center point extends into/out of the page.
Claim 15: Please note that Examiner has rejected claim 15 only with respect to the second interpretation of Wiker.
Please be advised that lines 2-3 of claim 15 set forth therein, “at least one adjusting element which is designed to adjust the supporting element during a movement from the working position.” Noting this, “at least one adjusting element” is being interpreted by Examiner 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. Be advised that “at least one adjusting element” is interpreted as comprising the structure disclosed in paragraph [0020] of Applicant's specification filed on 12/18/2023, as well as equivalents thereto.
With respect to the prior art and Wiker, Figure 1 shows the actuating element (26) as being connected to the support element (20) by means of a bolt-shaped projection (54) [EPO Machine Translation, paragraph 0023]. Noting this, the bolt-shaped projection (54) of Wiker
corresponds in structure to the disclosed “at least one adjusting element” of Applicant, noting that the bolt-shaped projection (54) is projection-like. (In paragraph [0020] of Applicant’s specification, Applicant disclosed that: “The adjusting element can, for example, be hook-like, pin-like, projection-like, or bar-like”). Based on the foregoing, the bolt-shaped projection (54) of Wiker will hereinafter be referred to by Examiner as “the at least one adjusting element (54).” Please note that when the actuating element (26) moves backward from the working position, the at least one adjusting element (54) pulls on the support element (20) during this movement. With this backward movement, the support element (20) is adjusted in that its position, for example, is adjusted due to being pulled on by the at least one adjusting element (54). Further, during the movement from the working position, a shape of the support element (20) is adjusted by means of the at least one adjusting element (54) due to a different portion of the support element (20) incurring being flexed/curved whilst being seated within a curved section of a flexible tubular member (24). (Figures 1 and 2 show how different portions of the support element (20) are flexed/curved due to being seated within the curved section of a flexible tubular member (24), depending upon whether the support element (20) is in the park position or the working position, for example). Thus, the at least one adjustment element (54) is designed to adjust the support element (20) during a movement from the working position.
Claim 16: Please note that Examiner has rejected claim 16 with respect to each of the first and second interpretation of Wiker.
First Interpretation
Due to a projection (54) to which the actuating element (26) is connected being formed as a thin pin-shaped element, the actuating element (26) and projection (54) can be partially flexed/ bent with respect to the feed element (20+30). In at least in this way, the actuating element (26) is coupled to the feed element (20+30) such that the actuating element (26) is at least partially movable relative to said the feed element (20+30).
Second Interpretation
Due to a projection (54) to which the actuating element (26) is connected being formed as a thin pin-shaped element, the actuating element (26) and projection (54) can be partially flexed/ bent with respect to the feed element (30). In at least in this way, the actuating element (26) is coupled to the feed element (30) such that the actuating element (26) is at least partially movable relative to said the feed element (30).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 4 and 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 5 is 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wang (U.S Patent No. 9,844,861 B2) discloses a hand-held power tool comprising a housing, and an insert tool magazine (2) which has a plurality of insert tool chambers (22), each of the plurality of insert tool chambers (22) defining a respective hollow cylinder configured to hold a respective one of a plurality of insert tools (21). The hand-held power tool (see Figure 1) further has a pushrod (3) (feed unit) and a pushbutton set (4) (actuating unit) that provide for displacing a selected one of the plurality of insert tools (21) from a park position to a working position. It is noted that Figure 24 of Wang shows an elastic element being disposed between the pushrod (3) and the pushbutton set (4). As such, the pushbutton set (4) (actuating unit) is at least partially movable relative to the pushrod (3) (feed unit).
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.
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/MICHAEL VITALE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722
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