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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on December 18, 2023 and May 26, 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are: “a gear unit operably connected to the dive motor and configured to drive a tool holder” in claim 1. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the gear unit” as including a planetary gear (see paragraph 11). Thus, in view of the specification, the limitation, “a gear unit”, is being interpreted as planetary gears and/or equivalents thereof.
Such claim limitation(s) is/are: “a tool holder which is configured to hold an insertion tool” in claim 1. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the tool holder” as including a chuck (see paragraph 12). Thus, in view of the specification, the limitation, “a tool holder”, is being interpreted as a chuck and/or equivalents thereof.
Such claim limitation(s) is/are: “an insertion tool magazine configured to store a plurality of selectable insertion tools,” in claim 1. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the insertion tool magazine” as including a drum magazine (see paragraph 22). Thus, in view of the specification, the limitation, “an insertion tool magazine”, is being interpreted as a drum magazine and/or equivalents thereof.
Such claim limitation(s) is/are: “at least one locking element” in claim 4. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the locking element” as including; “a bar, a protrusion, a hook or an edge circumferentially around the gear end plate… the locking element can form a screw, a latch, a snap or a bayonet connection with the gear housing holder, for example.” (see paragraph 18). Thus, in view of the specification, the limitation, “at least one locking element”, is being interpreted as a bar, a protrusion, a hook or an edge circumferentially around the gear end plate, a screw, a latch, a snap or a bayonet connection and/or equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6 and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Any remaining claims are rejected based on their dependency to a rejected base claim.
Claim 6 recites the limitation, "the gear end plate" in Line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 discloses that, “the securing holder is designed such that the securing holder accommodates the securing element and secures the gear unit against rotation of the gear unit.” However, it is unclear how the holder secures the gear unit against rotation of the gear unit. In other words, how is the gear unit secured against rotation of the same gear unit?
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, 10, 11 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zheng (CN 111906730, translation included).
In reference to claim 1, Zheng discloses a hand-held power tool (Figure 1) comprising:
a housing (112);
a drive motor (120) within the housing (Figure 3);
a gear unit (i.e. “planetary reduction gear train” 140, which meets the limitation of the gear unit, as previously interpreted under 35 U.S.C. 112(f), see section 5a above) operably connected to the dive motor and configured to drive a tool holder (i.e. holder “130”, which meets the limitation of the tool holder, as previously interpreted under 35 U.S.C. 112(f), see section 5b above) which is configured to hold an insertion tool (200); and
an insertion tool magazine (i.e. drum magazine “150”, which meets the limitation of the insertion tool magazine, as previously interpreted under 35 U.S.C. 112(f), see section 5c above) configured to store a plurality of selectable insertion tools (various tools 200, Figure 2); wherein
the gear unit is arranged at least in sections (i.e. sections 141, 143 and 142) within the insertion tool magazine (Figure 1).
In reference to claim 2, Zheng discloses that the gear unit comprises an outer holder (143) for the insertion tool magazine; and the outer holder is designed such that the insertion tool magazine is rotatably arranged on the gear unit (see following portion of translation, “reduction box 140 is at least partially contained in the inner cavity 153.” and Figure 3).
In reference to claim 10, Zheng discloses that the drive motor is arranged at least in sections (i.e. the drive shaft 122) within the insertion tool magazine (Figure 3).
In reference to claim 11, Zheng discloses that the gear unit comprises an inner holder (i.e. surface of 143) that at least partially accommodates the drive motor (Figure 3).
In reference to claim 16, Zheng discloses that the hand-held power tool is a screwdriver (Figure 1).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 3, 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng (CN 111906730, translation included) in view of Takahagi (2022/0118589).
In reference to claim 3, Zheng discloses the claimed invention as previously discussed above, but lacks,
the gear unit comprises at least one air inlet opening formed on an end facing away from the drive motor and designed to direct air towards the drive motor.
However, Takahagi teaches that it is old and well known in the art at the time the invention was made to provide a power tool (1, Figure 1) having a gear unit (formed from 70 and 7, Figure 4) that comprises at least one air inlet opening (18) formed on an end facing away (i.e. a right end as similarly shown by applicant, see Figure 4b) from a drive motor (40) and designed to direct air towards the drive motor (see paragraph 91 and the dotted arrows that represent airflow in Figure 9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the gear unit, of Zheng, with the known technique of providing a gear unit including the at least one air inlet opening that directs air towards the drive motor, as taught by Takahagi, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively cools various components of the tool (paragraph 92) thus extending the useful life of the device.
In reference to claim 6, As Best Understood, Zheng discloses the claimed invention as previously discussed above, but lacks,
a gear end plate has at least one circumferentially formed air guide opening designed to direct air towards the drive motor.
However, Takahagi teaches that it is old and well known in the art at the time the invention was made to provide a power tool (1, Figure 1) having a gear unit (formed from 70 and 7, Figure 4) that comprises a gear end plate (at 7) including at least one circumferentially formed air guide opening (18) designed to direct air towards a drive motor (40, see paragraph 91 and the dotted arrows that represent airflow in Figure 9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the gear unit, of Zheng, with the known technique of providing a gear unit including the gear end plate having the at least one circumferentially formed air guide opening designed to direct air towards a drive motor, as taught by Takahagi, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively cools various components of the tool (paragraph 92) thus extending the useful life of the device.
In reference to claim 15, Zheng discloses the claimed invention as previously discussed above, but lacks,
the gear unit comprises at least one vent element arranged at least partially axial to the gear unit and/or the drive motor and designed to vent at least the gear unit.
However, Takahagi teaches that it is old and well known in the art at the time the invention was made to provide a power tool (1, Figure 1) having a gear unit (formed from 70 and 7, Figure 4) that comprises at least one vent element (18) arranged at least partially axial to the gear unit and/or a drive motor (40, Figure 9) and designed to vent at least the gear unit (see paragraph 91 and the dotted arrows that represent airflow in Figure 9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the gear unit, of Zheng, with the known technique of providing a gear unit including the at least one vent element arranged at least partially axial to the gear unit and/or the drive motor and designed to vent at least the gear unit, as taught by Takahagi, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively cools various components of the tool (paragraph 92) thus extending the useful life of the device.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng (CN 111906730, translation included) in view of Eba et al. (2023/0191580).
In reference to claim 4, Zheng discloses the claimed invention as previously discussed above, but lacks,
the gear unit comprises a gear end plate; and the gear end plate is configured to be locked by at least one locking element via a gear housing holder.
However, Eba et al. teach that it is old and well known in the art at the time the invention was made to provide a power tool (Figure 1) having a gear unit (4 and 4a, Figure 8) with a gear end plate (4c); and the gear end plate is configured to be locked by at least one locking element (i.e. screw “4e”, which meets the limitation of the locking element, as previously interpreted under 35 U.S.C. 112(f), see section 5d above) via a gear housing holder (4a).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the gear unit, of Zheng, with the known technique of providing a gear unit including the gear end plate, as taught by Eba et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that covers a rear end opening of the gear unit (see paragraph 139 of translation) thereby preventing any unwanted dirt or debris from entering the gear unit and thus extending the useful life of the device.
In reference to claim 5, Eba et al. disclose that the gear end plate is configured to be connected (i.e. from the inner central opening, Figure 9) to the drive motor (see Figure 4); the gear end plate has a motor shaft opening (Figure 9); and the motor shaft opening is designed such that a motor shaft (62) of the drive motor is passed through the motor shaft opening (Figure 4).
Claim 7, is rejected under 35 U.S.C. 103 as being unpatentable over Zheng (CN 111906730, translation included) in view of Chen et al. (CA 3215084, translation included).
In reference to claim 7, Zheng discloses the claimed invention as previously discussed above, but lacks,
the gear unit comprises at least one ring gear having at least one anti-rotation element; a gear housing comprises at least one anti-rotation holder designed on an end facing away from the drive motor; and the anti-rotation element is designed to engage in the anti-rotation holder and secure the ring gear against rotation.
However, Chen et al. teach that it is old and well known in the art at the time the invention was made to provide a power tool (Figure 1) having a gear unit (Figure 8) including at least one ring gear (411) having at least one anti-rotation element (413); a gear housing comprises at least one anti-rotation holder (120) designed on an end facing away from the drive motor; and the anti-rotation element is designed to engage (at 118) in the anti-rotation holder and secure the ring gear against rotation.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the gear unit, of Zheng, with the known technique of providing a gear unit including the at least one ring gear having the at least one anti-rotation element, as taught by Chen et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively fixes the inner ring in a desired position (see following portion of translation, “The mounting feet 413 mate with the mounting grooves 118 to fix the inner ring gear 411 in the barrel 111.”).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng (CN 111906730, translation included) in view of Lu (CN 115229738, translation included).
In reference to claim 8, Zheng discloses the claimed invention as previously discussed above, but lacks,
the gear unit comprises a locking ring and a gear output shaft holder; and the locking ring is designed to rotatably hold the gear output shaft holder.
However, Lu teaches that it is old and well known in the art at the time the invention was made to provide a power tool (Figure 1) having a gear unit (Figure 7) including a locking ring (220) and a gear output shaft holder (210); and the locking ring is designed to rotatably hold the gear output shaft holder (Figure 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the gear unit, of Zheng, with the known technique of providing a gear unit including the locking ring and the gear output shaft holder, as taught by Lu, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively locks and fixedly sets the lock ring in the gear housing thereby preventing relative rotation (see following portion of translation, “the transmission part is an outer hexagonal corner. shaft lock ring 220 is fixedly set in the shell 110, the shaft lock ring 220 relative to the shell 110 cannot rotate.”).
In reference to claim 9, Lu discloses that the locking ring comprises at least a locking bar (220) on its outer circumference; a gear housing (110) comprises at least one locking holder (notch receiving 220 therein); and the locking bar is designed to engage in the locking holder (Figures 3b-3c).
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng (CN 111906730, translation included) in view of Moser et al. (2010/0279839).
In reference to claim 12, Zheng discloses the claimed invention as previously discussed above, but lacks,
the gear unit having a gear neck comprises at least one securing element; the housing comprises at least one securing holder; and the securing holder is designed such that the securing holder accommodates the securing element and secures the gear unit against rotation of the gear unit.
However, Moser et al. teach that it is old and well known in the art at the time the invention was made to provide a power tool (Figure 1) having a gear unit (5) and a gear neck (24) that comprises at least one securing element (i.e. portion 22 in Figure 3); a housing (5) comprises at least one securing holder (formed as the space that receives element 22 therein, Figure 3); and the securing holder is designed such that the securing holder accommodates the securing element and secures the gear unit against rotation of the gear unit.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the gear unit, of Zheng, with the known technique of providing a gear unit including the gear neck having the at least one securing element and the securing holder, as taught by Moser et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively supports the tool changing magazine on the neck (see paragraph 28).
In reference to claim 13, Zheng discloses the claimed invention as previously discussed above, but lacks,
the gear unit comprises at least one contact element; the housing comprises at least one contact holder; and the contact element is designed to abut the contact holder and to introduce at least radial forces that occur into the housing.
However, Moser et al. teach that it is old and well known in the art at the time the invention was made to provide a power tool (Figure 1) having a gear unit (5) that comprises at least one contact element (24); the housing comprises at least one contact holder (formed as the space that receives element 22 therein, Figure 3); and the contact element is designed to abut the contact holder and since all the structural limitations have been met the functional recitation of to “introduce at least radial forces that occur into the housing” will also be met during normal operation.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the gear unit, of Zheng, with the known technique of providing a gear unit including the contact element and the contact holder, as taught by Moser et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively supports the tool changing magazine on the neck (see paragraph 28).
In reference to claim 14, Zheng discloses the claimed invention as previously discussed above, but lacks,
the gear unit comprises at least one fixing element; the housing comprises at least one fixing holder; and the fixing holder accommodates the fixing element to axially secure the gear unit.
However, Moser et al. teach that it is old and well known in the art at the time the invention was made to provide a power tool (Figure 1) having a gear unit (5) that comprises at least one fixing element (24); the housing comprises at least one fixing holder (formed as the space that receives element 22 therein, Figure 3); and the fixing holder accommodates the fixing element to axially secure the gear unit (Figure 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the gear unit, of Zheng, with the known technique of providing a gear unit including the fixing element and the at least one fixing holder, as taught by Moser et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively supports the tool changing magazine on the neck (see paragraph 28).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wang et al. (2022/0080573) teaches of proving locking mechanisms for spindles used in power tools (Figures 1-11).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723