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 § 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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Baber et al. (7,547,167 “Baber”) in view of Dils et al. (6,979,155 “Dils”).
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[AltContent: arrow][AltContent: textbox (TOP OF HANDLE)]Baber meets all of the limitations of claim 1, i.e., a rotary tool assembly comprising:
a main body 110;
a motor 02:61 disposed in the main body;
a power source 130 coupled to the main body, the power source being configured to provide electrical power to the motor Fig. 1;
a rotary tool 150 attached to the main body, the rotary tool configured to be actuated by the motor;
a first bit storage area 202 Fig. 3 ( disposed on the main body, the first bit storage area defining a storage cavity 204 configured to receive a bit 04:08, the first bit storage area 202 being a drawer that is slidable between a first position Fig. 3, in which the storage cavity 38 is accessible and a second position Fig. 1 in which the storage cavity 38 is concealed; except for a second bit storage area disposed on the main body, the second bit storage area being a tray configured to receive a second bit and wherein in the second position, the storage areas are stacked upon each other.
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Dills teaches power tool with a first bit storage area 30 and a magnetic tray 32 stacked on top the first one Figs. 3 or a magnetic tray 70 integrated on top surface of the handle Fig. 4. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to provide the top handle surface annotated above of Baber with the magnetic tray 32 as taught by Dils to attract and retain small objects placed within the tray.
Regarding claim 2, PA (prior art, Baber modified by Dils) meets the limitations, i.e., the rotary tool assembly of claim 1, wherein in the first position of the first bit storage area Fig. 1, the first bit storage area and the second bit storage area are not stacked upon one another Fig. 3 Baber drawer removed, modified with Fig. 4 of Dils with tray 70 on the handle.
Regarding claim 3, PA meets the limitations, i.e., the rotary tool assembly of claim 1, wherein the first bit storage area is removably coupled to the body Fig. 3.
Regarding claim 4, PA meets the limitations, i.e., the rotary tool assembly of claim 1, wherein one of the first bit storage area drawer 202 or the second bit storage area to include a cover top of the handle modified for the tray Fig. 3, Baber.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over PA in view of Oster (2,211,216).
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PA (prior art, Dils) meets all of the limitations of claim 5, as described above, 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.
Oster teaches rotary tools with a spindle lock switch 25, Figs. 2 and 3 to lock and unlock the spindle 02:8-11. 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 with the lock switch as taught by Oster facilitating the attachment and removal of bits.
CLAIM 6
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Claims 6 is rejected under 35 U.S.C. 103 as being unpatentable over Wise (8,272,813) in view of Dils.
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;
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a power source battery coupled to the body, the power source being configured to provide electrical power to the motor Fig. 1;
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
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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.
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 rejected under 35 U.S.C. 103 as being unpatentable over Dils in view of Talesky (6,821,048) and Mascari (9,121,438).
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Dils 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.
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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 and Talesky with bracket as taught by Mascari to support the flexible structure on the housing when not in use.
Regarding claim 7, PA (prior art, Dils 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 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.
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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.
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 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 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 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.
Response to Arguments
Applicant's arguments filed December 10, 2025 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the anticipation rejection of claim 1 are moot, since the rejections are withdrawn in view of Applicant’s persuasive argument regarding concealment of the storage cavity.
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
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).
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, providing storage areas or flexible shafts are suggested by the teaching references.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HADI SHAKERI whose telephone number is (571)272-4495. 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.
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/Hadi Shakeri/
March 20, 2026 Primary Examiner, Art Unit 3723