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 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 1-5 ae 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 1 recites the limitation "at least one of the axes" in the last line. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 6 is finally rejected under 35 U.S.C. 103 as being unpatentable over Wise (8,272,813) in view of Dils (6,979,155).
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Wise meets all of the limitations of claim 6, i.e., a rotary tool assembly comprising:
a body 10 including a dock portion 20
a motor 14 disposed in the body;
a power source battery coupled to the body, the power source being configured to provide electrical power to the motor Fig. 1;
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a rotary tool chuck 20 operatively coupled to the body, the rotary tool configured to be actuated by the motor 14, the rotary tool being further configured to support and rotate a bit 03:22;
a flexible structure 18 extending between the rotary tool chuck 20 and the body 10/20, the flexible structure 18 operatively coupling the motor to the rotary tool providing power,
wherein the dock portion 20/62 is configured to receive the rotary tool in a docked position Fig. 1 where the rotary tool is coupled to the body, and the rotary tool is removable from the dock portion 20/62 such that the rotary tool is operable while not received by the dock portion Fig. 3
except for a bit storage area disposed within the cavity on the body, the bit storage area being configured to receive the bit upon removal of the bit from the rotary tool, wherein the bit storage area includes at least one of a drawer 30 and a tray.
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Dills teaches a power tool comprising a bit storage area 30 disposed within a cavity 44, Fig. 2 on the body, the bit storage area being configured to receive the bit upon removal of the bit from the rotary tool, wherein the bit storage area includes at least one of a drawer 30 and a tray. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of Wise, with the tray as taught by Dils to provide a tray attached to the tool for carrying small objects.
Claim 6-10 are finally rejected under 35 U.S.C. 103 as being unpatentable over Dils (7,217,069 “Dils`069”) in view of Talesky (6,821,048) and Mascari (9,121,438).
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Dils`069 meets all of the limitations of claim 6, i.e., a rotary tool assembly comprising:
a body 12 including
a motor 14 disposed in the body;
a power source 26 coupled to the body, the power source being configured to provide electrical power to the motor Fig. 1;
a rotary tool 21 operatively coupled to the body, the rotary tool configured to be actuated by the motor , the rotary tool being further configured to support and rotate a bit;
a bit storage area 30 disposed within the cavity Fig. 2 on the body, the bit storage area being configured to receive the bit upon removal of the bit from the rotary tool, wherein the bit storage area includes at least one of a drawer 30 and a tray,
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except for the body to include a dock portion a flexible structure extending between the rotary tool and the body, the flexible structure operatively coupling the motor to the rotary tool, wherein the dock portion is configured to receive the rotary tool in a docked position where the rotary tool is coupled to the body, and the rotary tool is removable from the dock portion such that the rotary tool is operable while not received by the dock portion.
Talesky teaches a coupling apparatus for a rotary hand tool to adapt the tool for receiving a flexible drive 84. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of Dills with flexible transmission shaft as taught by Talesky to provide the user with enhanced maneuverability.
Mascari teaches a power tool with a bracket/hanger 903c, Fig. 10 partially shown here, for receiving and supporting a flexible structure. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of Dils`069 and Talesky with bracket as taught by Mascari to support the flexible structure on the housing when not in use.
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Regarding claim 7, PA (prior art, Dils`069 modified by Talesky and Mascari) meets the limitations, i.e., the rotary tool assembly of claim 6, wherein the bit storage area 30 is slidable relative to the body through a first side portion thereof RT, Fig. 1 Wise, and the dock portion 20/62 is positioned adjacent a second side portion rear of the body opposite the first side portion.
Regarding claim 8, PA meets the limitations, i.e., the rotary tool assembly of claim 7, wherein the flexible structure 18 extends between a front portion of the body and the rotary tool, the front portion extending between the first side portion and the second side portion Fig. 2 Dils modified for dock portion by Mascari.
Regarding claims 9 and 10, PA seems to meet the limitations, i.e., the rotary tool assembly of claim 8, wherein the power source is coupled to a rear portion of the body opposite the front portion, however rearranging the parts, e.g., by forming the battery at a rear of the body with the dock portion on the side, for optimal access and workability would have been obvious to one of ordinary skill in the art, requiring routine experimentations with predictable results and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikes, 86 USPQ 70;
the rotary tool assembly of claim 8, wherein when received in the docked position flexible drive on the hanger 903c, the rotary tool extends between a front portion of the body which extends between the first side portion and the second side
Claims 11-13 and 17 are finally rejected under 35 U.S.C. 103 as being unpatentable over Baber et al. (7,547,167 “Baber”) in view of Dils`069 and Talesky (6,821,048).
Baber meets all of the limitations of claim 11, i.e., a rotary tool assembly comprising:
a body defined by a top portion annotated here Fig. 1, a bottom portion Fig. 5 opposite the top portion, a first side portion @200, a second side portion @140 opposite the first side portion, a front portion @166, a rear portion annotated here opposite the front portion, and a cavity 200 open to the first side portion Fig. 3;
a motor not visible disposed in the body 110;
a battery connection portion positioned on the rear portion Fig. 2, the battery connection portion configured to couple a battery 130 to the body and to facilitate transfer of electrical power from the battery to the motor;
a rotary tool 150, Fig. 1 coupled to and configured to be actuated by the motor, except for a tray positioned on the top portion of body, the tray defining an aperture configured to receive a first bit a flexible structure including a first end attached to the front portion and an opposite second end attached to the rotary tool. Please note that top/bottom, front/rear…depends on the orientation of the tool, lacking any limitations to define otherwise.
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Dils`069 teaches power tool with a storage tray 300, Fig. 13 partially shown here positioned on a top surface of the tool defining an aperture upright walls. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to provide the top surface of Baber with the tray and cover as taught by Dils`069 to retain objects placed within the tray.
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Talesky teaches a coupling apparatus for a rotary hand tool to adapt the tool for receiving a flexible drive 84. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of Baber and Dils`069, with flexible transmission shaft as taught by Talesky to provide the user with enhanced maneuverability.
Regarding claim 12, PA (Baber modified by Dil`069 and Talesky) meets the limitations, i.e., the rotary tool assembly of claim 11, further comprising a storage bin 202 Baber slidably couplable to the cavity through the first side portion, the storage bin configured to receive a second bit.
Regarding claim 13, PA meets the limitations, i.e., the rotary tool assembly of claim 12, wherein upon slidably coupling the storage bin to the cavity, the storage bin overlays the tray in a direction extending between the top portion and the bottom portion Fig. 3, Baber modified for a top tray.
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Regarding claim 17, PA meets the limitations, i.e., further comprising at least one of a speed switch and a power switch 140 to control operation of the motor and rearranging the parts, e.g., providing the power switch on top, for optimal access and workability would have been obvious to one of ordinary skill in the art, requiring routine experimentations with predictable results and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikes, 86 USPQ 70;
Claims 14-16 are finally rejected under 35 U.S.C. 103 as being unpatentable over PA as applied to claim 11 above, further in view of Odessey (2,904,804).
PA (prior art, Baber modified by Dil`069 and Talesky) as applied to claim 11, meets all of the limitations of claim 14, except for except for a dock portion configured to receive the rotary tool in a docked position where the rotary tool is coupled to the body.
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Odessey teaches rotary tools with dock portion 63. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of PA with the dock portion as taught by Odessey to store the flexible drive when not in use.
Regarding claim 14, PA (prior art, Baber modified by Dil`069, Talesky and Oster) meets the limitations, i.e., the rotary tool assembly of claim 18, wherein the spindle includes a lock structure 24, and wherein the spindle lock switch assembly includes: a lock member 26 selectively engageable with the lock structure Fig. 2 to limit rotation of the spindle, and a switch member 25 slidable along the rotary tool to selectively move the lock member into and out of engagement with the lock structure.
Regarding claim 15, PA (prior art, Baber modified by Dil`069, Talesky and Odessey) meets the limitations, and further positioning the dock portion on the second side portion of the body, e.g., for a clear access to the tray would have been obvious to one of ordinary skill in the art, requiring routine experimentations with predictable results and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikes, 86 USPQ 70.
Regarding claim 16, PA meets the limitations, except for a mount structure on the rear portion, the mount structure being configured to mount the rotary tool assembly to an external surface. Odessey further teaches a mounting structure 25, 26. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of PA with the mount structure as taught by Odessey to secure or hang the tool on a wall. Note that the mount is on the rear, however further positioning the dock portion on the second side portion of the body, e.g., for a clear access to the tray would have been obvious to one of ordinary skill in the art, requiring routine experimentations with predictable results and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikes, 86 USPQ 70.
Claims 18-20 are finally rejected under 35 U.S.C. 103 as being unpatentable over PA as applied to claim 11 above, further in view of Oster (2,211,216).
PA (prior art, Baber modified by Dil`069 and Talesky) as applied to claim 11, meets all of the limitations of claim 18, except for the rotary tool to include a spindle lock assembly configured to selectively prevent rotation of a spindle that is configured to selectively rotatably lock either the first bit or the second bit to the rotary tool.
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Oster teaches rotary tools with a spindle lock switch 25, Figs. 2 and 3 to lock and unlock the spindle 02:8-11, urged to a disengaged position by a spring 30. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of PA with the lock switch as taught by Oster facilitating the attachment and removal of bits.
Regarding claim 19, PA (prior art, Baber modified by Dil`069, Talesky and Oster) meets the limitations, i.e., the rotary tool assembly of claim 18, wherein the spindle includes a lock structure 24, and wherein the spindle lock switch assembly includes: a lock member 26 selectively engageable with the lock structure Fig. 2 to limit rotation of the spindle, and a switch member 25 slidable along the rotary tool to selectively move the lock member into and out of engagement with the lock structure.
Regarding claim 20, PA meets the limitations, i.e., the e rotary tool assembly of claim 19, wherein the rotary tool further includes a bias structure 30, Fig. 2 Oster configured to press the switch member towards an unlocked position in which the spindle may rotate.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are finally provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of USP 11,958,180.
For double patenting to exist as between the rejected claims and the reference claims it must be determined that the rejected claims are not patentably distinct from the reference claims. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and the reference claims and, if so, whether those differences render the claims patentably distinct.
In this case the reference claims noted above recite for a rotary tool meeting the pending claims, except for that which is old and within the knowledge of one of ordinary skill in the art in view of prior art cited above, since combining prior art elements according to known methods yields predictable results.
Allowable Subject Matter
Claims 1-5, as best understood, and 21 would be allowable if rewritten or amended 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.
Claims 22-25 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: art of record considered as a whole, alone or in combination, neither anticipates nor renders obvious a rotary tool, as best understood, with a first bit storage area being a drawer and a second bit storage area being a tray, having a plurality of apertures formed therein, each of the apertures configured to receive a second bit and extending along an axis towards the drawer when the drawer is in the second position, wherein in the second position of the drawer, (defining the orientation or relative location of the drawer and the tray, as best understood), or wherein the aperture extends along an axis toward the storage bin with the storage bin coupled to the cavity, and wherein with the storage bin coupled to the cavity, the storage bin and the tray are each intersected by the axis, together in combination with the rest of the limitations as recited in claims 1 or 22 and 24.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Response to Arguments
Applicant's arguments filed June 24, 2025 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the rejection of claim 6 over Wise in view of Dil`069, Applicant argues that the arrangements of Wise does not amount to the claimed rotary tool assembly, since the prime mover 14 in sot disposed in the boy as claimed. Examienr, respectfully disagrees. Claim recites for a rotary tool assembly 10, which include the prime mover 14, an internal power cord 16, an external power cord 18 and an external rechargeable battery pack. The prime mover 14 is disclosed as part of the tool assembly, see 03:10-20. Applicant then argues that the external power cord 18 is not flexible structure extending between a rotary tool and a body with a power tool and a motor disposed therein. Examiner, respectfully disagrees, since Fig. 1 clearly discloses these features for the body of the tool assembly as describe by Wise. The argument regarding the modification for a tray, that it would be on the wrong location, is not persuasive, since the body of the assembly is not limited as suggested by the Applicant.
Applicant’s arguments regarding the rejection of claim 6 over Dils`069 and Talesky and Mascari, Applicant argues that the combination is improper and would render the operation of the base reference Dill`069 unsatisfactory. Applicant states that Dil`069 does not desire storing separately store drill bits or tool bits from the end working member. Examiner respectfully disagrees. The arguments that the combination would provide a handpiece remote from the removable attachment 30, is not persuasive, since there is not suggestion in the base reference that such arrangement would be undesirable and providing a flexible cord does not define a “remote” access to the sensor or any accessories stored in the body. The argument that flexible cord would inhibit maneuverability, is not persuasive, since the teaching reference teaches a flexible shaft that conveniently allows the user to operate various tool bits around the corners and in other remote areas of operation under Background/Summary of the invention.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, modifying the tool assembly of Dils`069 with flexible cord as taught by Talesky for enhanced maneuverability and with the bracket as taught by Mascari to support/hang the cord are clear motivations suggested by each respective reference.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant’s arguments regarding the rejection of claim 11 over Baber and Dils`069 and Talesky, Applicant argues that the combination would leave the tray on the exterior and not the interior of the tool housing, which arguing features not recited in the claim. Applicant further argues that Baber already has a storage area and adding another would be duplicative and unnecessary. Examiner, respectfully disagrees. Multiple storage areas for a rotary tool, is commonly practiced in the art, as evident by reference cited and the instant application. Applicant further argues that such modification would not result in an integrated storage compartment and the working end would be remote from the tray and no longer integrated. Examiner, respectfully disagrees. A flexible shaft for maneuverability, does not define a “remote” operation to define a non-integral arrangement. As noted above, the tool assembly as recited, is met by a flexible cord and a handpiece. Applicant finally argues that there would be no motivation. As indicated above, providing a tray to store accessories and to provide a flexible cord for access to work around the corners and in remote areas, are each suggested by the respective teaching references.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., tray on the interior ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the inventions of Dils`069, the hand tool of Talesky and the rotary knife of Mascari have different purpose and are used in different environment, seems to be arguments for nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, they are all related as hand tools, and secondly providing a hanger to hang a flexible cord on a tool, or to provide a flexible cord for hand tool, in addition to all being within the same filed, are also pertinent to the particular problem with which the inventor was concerned, i.e., flexible cord and a hanger to support it on the tool.
With regards to the combination applied applicant argues that the combination would not have been obvious, no reason to combine and hindsight reasoning. Examienr, respectfully disagrees. Providing the tool of Baber having a drawer with another storage or support means, e.g., the magnetic tray of Dils, would have been obvious and properly motivated by the disclosure of Dils. Further the argument that the power tool of Mascari functions differently than or is intended for different use (although withdrawn) are not persuasive, since the improvements, e.g., augmenting storage areas or providing a flexible shaft for accessibility is considered well within the knowledge of one of ordinary skill in the art and since doing so would merely amount to (A) combining prior art elements according to known methods to yield predictable results; (B) simple substitution of one known element for another to obtain predictable results; (C) use of known technique to improve similar devices in the same way; (D) applying a known technique to a known device ready for improvement to yield predictable results; or (F) known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007); See also MPEP 2143
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HADI SHAKERI whose telephone number is (571)272-. The fax phone number for forwarding unofficial documents for discussion purposes only is (571) 273-4495. The examiner can normally be reached on M-F.
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, Brian Keller can be reached on 571 272 8548. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hadi Shakeri/
September 22, 2026 Primary Examiner, Art Unit 3723
Prosecution Insights