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 .
Status of Claims
This office action is in response to Applicant’s Election of Species filed on 3 February 2026.
Claims 1 – 20 are pending. Claims 4 – 10, and 14 – 20 are withdrawn due to a restriction requirement.
Election/Restrictions
Applicant's election of claims 1 – 3, 5, 11 – 13, and 15 in the reply filed on 3 February 2026 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 4, 6 – 10, 14, and 16 – 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method, there being no allowable generic or linking claim.
Regarding claims 5 and 15, due to the limitation, “the coupler is biased into the first position”, these claims are not part of the elected species. That is, paragraph [0084], which is directed towards the elected species of the embodiment shown in figures 18 – 20, describes a coupler biased in a second position such that the coupler at least partially uncovers ports of a spindle. Paragraph [0084] does not state that the coupler is biased in the first position such that the coupler blocks the ports. However, paragraph [0086], which is directed towards the nonelected species of the embodiment of figure 22, describes the coupler biased in a first position such that the coupler blocks the port. Thus, claims 5 and 15 are directed toward the nonelected species of the embodiment of figures 1 and 22 and not the elected species of the embodiment of figures 1 and 18 – 20. Therefore, claims 5 and 15 are also withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 20 March 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1 and 11 are objected to because of the following informalities:
Regarding claims 1 and 11, line 5, the limitation, “motor, causing”, should read, “motor causing”.
Regarding claims 1 and 11, line 12 and line 16, respectively, the limitation, “a port in one of the spindle or the piston”, should read, “a port in the spindle”, since the applicant has elected species I, the embodiment of figures 1 and 18-20, drawn to a spindle 22 having a plurality of longitudinal recesses 258 with each recess 258 including a plurality of ports 262.
Appropriate correction is required.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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) 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) 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 bit retention assembly” – claims 1 and 11
“a closure member” – claims 1 and 11
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they 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 these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kurz (US 11,279,016 B2).
Regarding claim 1, Kurz discloses a rotary hammer adapted to impart axial impacts to a tool bit, the rotary hammer comprising:
a housing (16, fig. 1);
a motor (26, fig. 1) supported by the housing;
a spindle (40, fig. 1) coupled to the motor for receiving torque from the motor, causing the spindle to rotate (Col. 10, ll. 65 – 67);
a reciprocation mechanism (52, fig. 1) including a piston (52, fig. 1) disposed within the spindle and operable to create a variable pressure air spring within the spindle;
an anvil (44, fig. 1) received within the spindle for reciprocation in response to the pressure of the air spring, the anvil imparting axial impacts to the tool bit;
a bit retention assembly (12, fig. 1) for securing the tool bit to the spindle; and
a port (106, fig. 3a) in one of the spindle or the piston (Figure 3a shows control openings 106 in a guide tube 40); and
a closure member (108, fig. 3a) that is movable relative to the port between a first position, in which the closure member seals the port and an interior volume of the spindle between the piston the anvil is sealed to develop the variable pressure air spring (As shown in the top half of figure 3a), and a second position, in which the closure member is spaced apart from the port and the interior volume of the spindle between the piston and the anvil is unsealed and unable to develop the variable pressure air spring (As shown in the bottom half of figure 3a).
Regarding claim 11, Kurz discloses a rotary hammer adapted to impart axial impacts to a tool bit, the rotary hammer comprising:
a housing (16, fig. 1);
a motor (26, fig. 1) supported by the housing;
a spindle (40, fig. 1) coupled to the motor for receiving torque from the motor, causing the spindle to rotate (Col. 10, ll. 65 – 67);
a reciprocation mechanism (52, fig. 1) operable to create a variable pressure air spring within the spindle, the reciprocation mechanism including
a piston (52, fig. 1) disposed within the spindle,
a crank gear (46, fig. 1) receiving torque from the motor, and
a crank shaft (50, fig. 1) configured to reciprocate the piston within the spindle to create the variable pressure air spring in response to receiving torque from the crank gear;
an anvil (44, fig. 1) received within the spindle for reciprocation in response to the pressure of the air spring, the anvil imparting axial impacts to the tool bit;
a bit retention assembly (12, fig. 1) for securing the tool bit to the spindle;
a port (106, fig. 3a) in one of the spindle or the piston (Figure 3a shows control openings 106 in a guide tube 40); and
a closure member (108, fig. 3a) that is movable relative to the port between a first position, in which the closure member seals the port and an interior volume of the spindle between the piston the anvil is sealed to develop the variable pressure air spring (As shown in the top half of figure 3a), and a second position, in which the closure member is spaced apart from the port and the interior volume of the spindle between the piston and the anvil is unsealed and unable to develop the variable pressure air spring (As shown in the bottom half of figure 3a).
Allowable Subject Matter
Claims 2 – 3 and 12 – 13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding dependent claims 2 and 12: the subject matter of the rotary hammer is allowable over the prior art because of the arrangement of the combination of structural limitations set forth in the claim and their functional relationship to one another. Dependent claims 3 and 13 are also allowable over the prior art as they depend from allowable claim 2 and 12, respectively.
Claims 2 and 12 include the following limitation which, in combination with the other limitations of claim 1 and 11, respectively, are what make the subject matter allowable over the prior art, as the subject matter of claims 2 and 12 are neither taught or suggested by the prior art:
“closure member is a coupler…having a leg that selectively covers the ports when the coupler is in the first position”
The closest art is Kurz (US 11,279,016 B2) and Frenzel (US 5,975,217 A). Kurz discloses the invention as recited in claims 1 and 11 and Frenzel teaches the port includes a plurality of ports arranged in a row along a length of the spindle recited in claims 2 and 12. However, in both Kurz and Frenzel the closure member is a cylinder and does not comprise the structure of a leg that selectively covers the ports when the coupler is in the first position as required by claims 2 and 12. The prior art of record does not anticipate or make obvious this limitation. Thus, it is examiner' s opinion that it would not have been obvious to one having ordinary skill in the art at the time of the invention to combine or modify the prior art in order to arrive at applicant's invention as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID G SHUTTY whose telephone number is 571-272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SHELLEY SELF can be reached on 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID G SHUTTY/Examiner, Art Unit 3731
18 February 2026