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 .
This Office Action is in response to the applicant’s RCE filing on 02/20/2026.
Applicant’s cancelation of claims 2-3, 5, 11-12, and 14 is acknowledged and require no further examining. Claims 1, 4, 6-10, 13, and 15-26 are pending and examined below.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/20/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6-8, 15, 17, 21-23, and 25-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 6, the phrase “causes the drive mechanism to operate sequentially at at least a third speed and a fourth speed” renders claim 6 to be non-complying with the written description requirement because the feature appears to be new matter. On page 7 paragraph 25 of the Specification, the impact tool is disclosed to turn at a first predetermined speed when in the partially actuated position, and turned at a second predetermined speed when in the fully actuated position. The Specification as originally filed does not disclose a third speed nor a fourth speed. Therefore, the feature is considered new matter.
Claims 7 and 21 are dependent of claim 6 and include all the same limitations.
Regarding claim 8, the phrase “accelerate from the third speed to the fourth speed while the trigger assembly is in the fully actuated position” renders claim 8 to be non-complying with the written description requirement because the feature appears to be new matter. On page 7 paragraph 25 of the Specification, the impact tool is disclosed to turn at a first predetermined speed when in the partially actuated position, and turned at a second predetermined speed when in the fully actuated position. The Specification as originally filed does not disclose accelerating from the third speed to the fourth speed while the trigger assembly is in the fully actuated position. Therefore, the feature is considered new matter.
Regarding claim 15, the phrase “causes the drive mechanism to operate sequentially at at least a third speed and a fourth speed” renders claim 15 to be non-complying with the written description requirement because the feature appears to be new matter. On page 7 paragraph 25 of the Specification, the impact tool is disclosed to turn at a first predetermined speed when in the partially actuated position, and turned at a second predetermined speed when in the fully actuated position. The Specification as originally filed does not disclose a third speed nor a fourth speed. Therefore, the feature is considered new matter.
Regarding claim 17, the phrase “accelerate from the third speed to the fourth speed while the trigger assembly is in the fully actuated position” renders claim 17 to be non-complying with the written description requirement because the feature appears to be new matter. On page 7 paragraph 25 of the Specification, the impact tool is disclosed to turn at a first predetermined speed when in the partially actuated position, and turned at a second predetermined speed when in the fully actuated position. The Specification as originally filed does not disclose accelerating from the third speed to the fourth speed while the trigger assembly is in the fully actuated position. Therefore, the feature is considered new matter.
Regarding claim 20, the phrase “causes the drive mechanism to operate sequentially at at least a third speed and a fourth speed” renders claim 20 to be non-complying with the written description requirement because the feature appears to be new matter. On page 7 paragraph 25 of the Specification, the impact tool is disclosed to turn at a first predetermined speed when in the partially actuated position, and turned at a second predetermined speed when in the fully actuated position. The Specification as originally filed does not disclose a third speed nor a fourth speed. Therefore, the feature is considered new matter.
Regarding claim 22, the phrase “acceleration from the third speed to the fourth speed is non-linear” renders claim 22 to be non-complying with the written description requirement because the feature appears to be new matter. On page 9 paragraph 29 of the Specification, the drive mechanism is configured to accelerate at a non-linear rate between the first speed and second speed. Specification as originally filed does not disclose accelerating from the third speed to the fourth speed. Therefore, the feature is considered new matter.
Regarding claim 23, the phrase “the second speed is equal to the third speed” renders claim 23 to be non-complying with the written description requirement because the feature appears to be new matter. On page 7 paragraph 25 of the Specification, the impact tool is disclosed to turn at a first predetermined speed when in the partially actuated position, and turned at a second predetermined speed when in the fully actuated position. The Specification as originally filed does not disclose a third speed. Therefore, the feature is considered new matter.
Regarding claim 25, the phrase “acceleration from the third speed to the fourth speed is non-linear” renders claim 25 to be non-complying with the written description requirement because the feature appears to be new matter. On page 9 paragraph 29 of the Specification, the drive mechanism is configured to accelerate at a non-linear rate between the first speed and second speed. Specification as originally filed does not disclose accelerating from the third speed to the fourth speed. Therefore, the feature is considered new matter.
Regarding claim 26, the phrase “the second speed is equal to the third speed” renders claim 26 to be non-complying with the written description requirement because the feature appears to be new matter. On page 7 paragraph 25 of the Specification, the impact tool is disclosed to turn at a first predetermined speed when in the partially actuated position, and turned at a second predetermined speed when in the fully actuated position. The Specification as originally filed does not disclose a third speed. Therefore, the feature is considered new matter.
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, 4, 9-10, 13, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by reference Still et al. (10,373,715).
Regarding claim 1, Still et al. disclose a power tool (18) comprising:
a housing (20) configured to house a drive mechanism (22); and
a trigger system (26, 28, 34, 38) including:
a trigger assembly (26, 28) having at least one magnet (28),
wherein the trigger assembly (26, 28) is configured to be actuated so that the at least one magnet (28) slides along a sliding axis; and
a sensor assembly (34, 38) disposed in the housing (20) proximate to the trigger assembly (26, 28),
wherein the sensor assembly (34, 38) including a first digital non-contact sensor (34) and a second digital non-contact sensor (38), wherein the first (34) and second (38) digital non-contact sensors having axes of sensitivity generally orthogonal to the sliding axis of the at least one magnet (28),
wherein the trigger assembly (26, 28) is configured to be actuated between a non-actuated position (Figure 3A), an intermediate actuated position, and a fully actuated position (Figure 3B) so that the at least one magnet sequentially activates the first digital non-contact sensor (34) when the trigger assembly is in the intermediate actuated position to initiate a first predetermined profile and the second digital non-contact sensor (38) when the trigger assembly (26, 28) is in the fully actuated position to initiate a second predetermined profile.
(Figure 2, 3A, 3B and Column 3 lines 21-23, 65-67, Column 4 lines 27-41, Column 5 lines 26-29, Column 8 lines 16-25)
Regarding claim 4, Still et al. disclose a controller (40) in communication with the sensor assembly (34, 38), wherein the controller is configured to select the first predetermined profile when the at least one magnet activates the first digital non-contact sensor (34) and to select the second predetermined profile when the at least one magnet (28) activates the second digital non-contact sensor (38). (Column 5 lines 8-11, 26-29, Column 8 lines 16-25)
Regarding claim 9, Still et al. disclose the first and second digital non-contact sensors (34, 38) comprise switch Hall effect sensors. (Column 4 lines 46-49)
Regarding claim 10, Still et al. disclose a trigger system (26, 28, 34, 38) including:
a trigger assembly (26, 28) having at least one magnet (28),
wherein the trigger assembly (26, 28) is configured to be actuated so that the at least one magnet (28) slides along a sliding axis; and
a sensor assembly (34, 38) disposed in the housing (20) proximate to the trigger assembly (26, 28),
wherein the sensor assembly (34, 38) including a first digital non-contact sensor (34) and a second digital non-contact sensor (38), wherein the first (34) and second (38) digital non-contact sensors having axes of sensitivity generally orthogonal to the sliding axis of the at least one magnet (28),
wherein the trigger assembly (26, 28) is configured to be actuated between a non-actuated position (Figure 3A), an intermediate actuated position, and a fully actuated position (Figure 3B) so that the at least one magnet sequentially activates the first digital non-contact sensor (34) when the trigger assembly is in the intermediate actuated position to initiate a first predetermined profile and the second digital non-contact sensor (38) when the trigger assembly (26, 28) is in the fully actuated position to initiate a second predetermined profile.
(Figure 3A, 3B and Column 3 lines 65-67, Column 4 lines 27-41, Column 5 lines 26-29, Column 8 lines 16-25)
Regarding claim 13, Still et al. disclose a controller (40) in communication with the sensor assembly (34, 38), wherein the controller is configured to select the first predetermined profile when the at least one magnet activates the first digital non-contact sensor (34) and to select the second predetermined profile when the at least one magnet (28) activates the second digital non-contact sensor (38). (Column 5 lines 8-11, 26-29, Column 8 lines 16-25)
Regarding claim 18, Still et al. disclose the first and second digital non-contact sensors (34, 38) comprise switch Hall effect sensors. (Column 4 lines 46-49)
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 6-8, 15-17, and 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over reference Still et al. (10,373,715) as applied to claims 4 and 13 respectively, and further in view of reference Forster et al. (8,988,015).
Regarding claim 6, Still et al. disclose the claimed invention as stated above but do not disclose operating sequentially at at least a first speed and a second speed, and operating sequentially at at least a third speed and a fourth speed.
Forster et al. disclose a power tool comprising a trigger assembly (24), wherein trigger assembly (24) profile is broken down into a plurality of control zones, wherein each zone differs from the other zones, and wherein the further the trigger assembly (24) is compressed the higher the speed. (Figure 3 and Column 7 lines 1-10)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the trigger assembly of Still et al. by incorporating the plurality of control zones as taught by Forster et al., since column 5 lines 5-14 of Forster et al. states such a modification would allow more control at lower speeds.
Regarding claim 7, Still et al. modified by Forster et al. disclose the first predetermined fastening profile causes the drive mechanism (Still et al. – 22) to accelerate from the first speed to the second seed while the trigger assembly is in the intermediate actuated position. (Forster et al. – Figure 3 and Column
7 lines 4-10)
Regarding claim 8, Still et al. modified by Forster et al. disclose the first predetermined fastening profile causes the drive mechanism (Still et al. – 22) to accelerate from the third speed to the fourth seed while the trigger assembly is in the fully actuated position. (Forster et al. – Figure 3 and Column
7 lines 4-10)
Regarding claim 15, Still et al. disclose the claimed invention as stated above but do not disclose operating sequentially at at least a first speed and a second speed, and operating sequentially at at least a third speed and a fourth speed.
Forster et al. disclose a power tool comprising a trigger assembly (24), wherein trigger assembly (24) profile is broken down into a plurality of control zones, wherein each zone differs from the other zones, and wherein the further the trigger assembly (24) is compressed the higher the speed. (Figure 3 and Column 7 lines 1-10)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the trigger assembly of Still et al. by incorporating the plurality of control zones as taught by Forster et al., since column 5 lines 5-14 of Forster et al. states such a modification would allow more control at lower speeds.
Regarding claim 16, Still et al. modified by Forster et al. disclose the first predetermined fastening profile causes the drive mechanism (Still et al. – 22) to accelerate from the first speed to the second seed while the trigger assembly is in the intermediate actuated position. (Forster et al. – Figure 3 and Column
7 lines 4-10)
Regarding claim 17, Still et al. modified by Forster et al. disclose the first predetermined fastening profile causes the drive mechanism (Still et al. – 22) to accelerate from the third speed to the fourth seed while the trigger assembly is in the fully actuated position. (Forster et al. – Figure 3 and Column
7 lines 4-10)
Regarding claim 21, Still et al. modified by Forster et al. disclose the acceleration from the first speed to the second speed is non-linear. (Forster et al. – Column 7 lines 14-17)
Regarding claim 22, Still et al. modified by Forster et al. disclose the acceleration from the third speed to the fourth speed is non-linear. (Forster et al. – Column 7 lines 14-17)
Regarding claim 23, Still et al. modified by Forster et al. disclose the second speed is equal to the third speed. (Forster et al. – Figure 3)
Regarding claim 24, Still et al. modified by Forster et al. disclose the acceleration from the first speed to the second speed is non-linear. (Forster et al. – Column 7 lines 14-17)
Regarding claim 25, Still et al. modified by Forster et al. disclose the acceleration from the third speed to the fourth speed is non-linear. (Forster et al. – Column 7 lines 14-17)
[AltContent: textbox (Fourth Speed)][AltContent: arrow][AltContent: textbox (First Speed)][AltContent: arrow][AltContent: oval][AltContent: textbox (Second Speed / Third Speed)][AltContent: arrow][AltContent: oval][AltContent: oval]
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Regarding claim 26, Still et al. modified by Forster et al. disclose the second speed is equal to the third speed. (Forster et al. – Figure 3)
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over reference Jacque et al. (2023/0013688) in view of reference Still et al. (10,373,715).
Regarding claim 19, Jacque et al. disclose an impact tool (100) comprising:
a housing (102) having:
a front end;
a rear end; and
a pistol grip (106),
wherein the front end and the rear end define an axis extending between the front end and the rear end, and
wherein the housing (102) is configured to house a drive mechanism (108),
a hammer (112) having at least one hammer jaw (126),
wherein the hammer (112) is configured to be driven by the drive mechanism (108) about the axis,
an anvil (114) disposed inside the housing (102),
wherein the anvil (114) defines at least one anvil jaw (134) configured to periodically engage with the at least one hammer jaw (126) to rotate the anvil (114) about the axis;
a multiple position trigger assembly (118); and
a controller (pg 2 para 29) configured to control the drive mechanism (108).
(Figure 1 and Page 2 paragraph 28, 29, 32)
However, Jacque et al. do not disclose a trigger assembly comprising: a magnet; a first digital non-contact sensor; and a second digital non-contact sensor, wherein the controller is configured to select a first fastening profile when the trigger assembly is in an intermediate actuated position and a second fastening profile when the trigger assembly is in a fully actuated position.
Still et al. disclose a power tool (18) comprising:
a housing (20) configured to house a drive mechanism (22); and
a trigger system (26, 28, 34, 38) including:
a trigger assembly (26, 28) having at least one magnet (28),
wherein the trigger assembly (26, 28) is configured to be actuated so that the at least one magnet (28) slides along a sliding axis; and
a sensor assembly (34, 38) disposed in the housing (20) proximate to the trigger assembly (26, 28),
wherein the sensor assembly (34, 38) including a first digital non-contact sensor (34) and a second digital non-contact sensor (38), wherein the first (34) and second (38) digital non-contact sensors having axes of sensitivity generally orthogonal to the sliding axis of the at least one magnet (28),
wherein the trigger assembly (26, 28) is configured to be actuated between a non-actuated position (Figure 3A), an intermediate actuated position, and a fully actuated position (Figure 3B) so that the at least one magnet sequentially activates the first digital non-contact sensor (34) when the trigger assembly is in the intermediate actuated position to initiate a first predetermined profile and the second digital non-contact sensor (38) when the trigger assembly (26, 28) is in the fully actuated position to initiate a second predetermined profile.
(Figure 2, 3A, 3B and Column 3 lines 21-23, 65-67, Column 4 lines 27-41, Column 5 lines 26-29, Column 8 lines 16-25)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the impact tool of Jacque et al. by incorporating the trigger assembly as taught by Still et al., since column 2 lines 22-27 of Still et al. states such a modification would help reduce the potential for malfunctioning of the tool.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over reference Jacque et al. (2023/0013688) in view of reference Still et al. (10,373,715) as applied to claim 19 above, and further in view of reference Forster et al. (8,988,015).
Regarding claim 20, Jacque et al. modified by Still et al. disclose the claimed invention as stated above, but do not disclose operating sequentially at at least a first speed and a second speed, and operating sequentially at at least a third speed and a fourth speed.
Forster et al. disclose a power tool comprising a trigger assembly (24), wherein trigger assembly (24) profile is broken down into a plurality of control zones, wherein each zone differs from the other zones, and wherein the further the trigger assembly (24) is compressed the higher the speed. (Figure 3 and Column 7 lines 1-10)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the controller of Jacque et al. by incorporating the plurality of control zones as taught by Forster et al., since column 5 lines 5-14 of Forster et al. states such a modification would allow more control at lower speeds.
Response to Arguments
The Amendments filed on 02/20/2026 have been entered. Applicant’s cancelation of claims 2-3, 5, 11-12, and 14 is acknowledged and require no further examining. Claims 1, 4, 6-10, 13, and 15-26 are pending and examined below.
In response to the arguments of the claim interpretation under 35 U.S.C. 112(f), in view of the amendments to the claims, examiner withdraws the 112(f) interpretation.
In response to the arguments of the rejections under 35 U.S.C. 102(a)(1) with reference Gisselman et al. (2021/0252689), in view of the amendments to the claims, Examiner withdraws the 102 rejections. However, upon further consideration, a new ground(s) of rejection is made in view of reference Still et al. (10,373,715).
In response to the arguments of the rejections under 35 U.S.C. 103 with reference Jacque et al. (2023/0013688) modified by reference Gisselman et al. (2021/0252689), in view of the amendments to the claims, Examiner withdraws the 103 rejections. However, upon further consideration, a new ground(s) of rejection is made in view of reference Jacque et al. (2023/0013688) modified by reference Still et al. (10,373,715).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK B FRY whose telephone number is (571)272-0396. The examiner can normally be reached on Mon-Thur 7am-4pm.
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/PATRICK B FRY/Examiner, Art Unit 3731 April 2, 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731