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 .
Response to Amendment
The amendment filed on April 9, 2026 has been entered. Claims 1-11 and 13-21 are pending. Claim 13 has been amended. Claim 12 has been cancelled. Claim 21 is newly added. The rejections of record have been reconsidered in view of Applicant’s amendments and arguments, and new grounds of rejection are set forth below, necessitated in part by Applicant’s arguments regarding the position of the circuit board within the housing.
Response to Arguments
Applicant’s arguments filed April 9, 2026 with respect to the rejections of claims 1, 10, and 17 under 35 U.S.C. § 103 have been fully considered and are persuasive in part. Specifically, Applicant’s arguments regarding the position of the circuit board (140) of Forster relative to the actuator (102, 114) and the front housing portion, and regarding the perpendicular orientation of the PCB (60) of Leong, are persuasive. Accordingly, the previous rejections over Forster in view of Leong and Leong in view of Forster have been withdrawn.
However, upon further consideration, a new ground of rejection is made over Mergener (US 9,774,229 B1) in view of Leong (US 2010/0149790 A1), and over Schneider (US 2019/0255687 A1) in view of Mergener and Leong, as set forth below. Mergener was not previously cited and explicitly teaches a circuit board positioned within an accommodating region above a trigger actuator and below a motor/drive mechanism (i.e., between the actuator and the front housing portion), with the circuit board extending parallel to the rotational axis of the motor and having a first side facing the drive mechanism and a second side facing the actuator, addressing the structural limitations relied upon by Applicant.
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.
Claim(s) 1-8, 10-11, 13-14, 16, and 21 is/are rejected under 35 U.S.C 103 as being unpatentable over MERGENER(US9774229B1) in view of LEONG(US2010/0149790A1).
Regarding claim 1, Mergener teaches a power tool (250, brushless impact wrench, Figs. 9-11; Col. 9 lines 33-46) comprising:
a housing (256) including a motor housing portion (260), a front housing portion (portion of housing 256 housing the impact mechanism 254 and from which impact output unit 252 extends) coupled to the motor housing portion (260), and a handle portion (258) extending from the motor housing portion (Figs. 9-11; Col. 9 lines 38-46);
a motor (126) supported within the motor housing portion (Col. 9 lines 40-42);
an output (impact output unit 252) driven by the motor (126) to rotate about an axis (axis of motor shaft 158), the output extending from the front housing portion (Figs. 9-11; Col. 9 lines 33-37);
an actuator (trigger 112) supported by the handle portion (258) and configured to control operation of the motor (Col. 4 lines 38-46; Col. 9 lines 33-46);
and a circuit board (combined surfboard PCB 202) supported within an accommodating region (region 211, Fig. 7) between the actuator (trigger 112) and the front housing portion (Col. 8 lines 8-22; Fig. 7, explicitly disclosing that "the combined surfboard PCB 202 is centrally located within the power tool 200 above the trigger 112, but below the motor 126 and drive mechanism 148"; and Figs. 9-11 incorporating the same PCB layout into the impact wrench 250).
Mergener is silent wherein a vibration isolator positioned on the circuit board and between the circuit board and the housing.
However, Leong teaches a power tool (10) with a vibration isolator (68) positioned on the circuit board (60) and between the circuit board (60) and the housing (floor 66 of housing/cavity 52)(Fig. 4; Para [0032]-[0033]).
Leong is considered to be analogous to the claimed invention of Mergener because they are both in the same field of endeavor of electrically-powered hand-held power tools having a circuit board mounted within a housing. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the power tool of Mergener to include a vibration isolator positioned on the circuit board and between the circuit board and the housing, as taught by Leong, in order to absorb vibrations transmitted from the motor and drive/impact mechanism to the circuit board, thereby protecting the electronic components from vibration-induced damage and extending the operating life of the power tool. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (the simple substitution of one known element for another to obtain predictable results is obvious).
Regarding claim 2/1, Mergener in view of Leong teaches the power tool of claim 1.
Leong further teaches wherein the vibration isolator (68) is configured to reduce the transfer of vibration generated by operation of the power tool to the circuit board(Para [0033], the annular pad 68 is configured to absorb vibrations to isolate the circuit board).
Regarding claim 3/1, Mergener in view of Leong teaches the power tool of claim 1.
The combination does not explicitly teach wherein the vibration isolator is made of foam.
However, Leong teaches wherein the vibration isolator (68) is made of a soft, dampening material (Para [0032]). Foam is a well-known species of vibration-damping pad material, and the selection of foam would have been a mere substitution of one known dampening material for another with predictable results. See KSR, 550 U.S. at 416.
Regarding claim 4/1, Mergener in view of Leong teaches the power tool of claim 1.
Leong further teaches wherein the vibration isolator (68) is compressed between the circuit board (60) and the housing (cavity 52)(Fig. 4; Para [0032]-[0033]).
Regarding claim 5/1, Mergener in view of Leong teaches the power tool of claim 1.
Leong further teaches wherein the vibration isolator (68) is adhered to the circuit board (60)(Fig. 4; Para [0032], pad 68 attached to PCB 60).
Regarding claim 6/1, Mergener in view of Leong teaches the power tool of claim 1.
Mergener further teaches wherein the circuit board includes a plurality of semi-conductor switching elements(combined surfboard PCB 202 includes FETs 124, Figs. 6-7, 8A-C; Col. 4 lines 11-26; Col. 7 lines 4-25).
Regarding claim 7/1, Mergener in view of Leong teaches the power tool of claim 1.
Mergener further teaches wherein the circuit board extends parallel to the axis(Col. 7 lines 56-60, explicitly disclosing that "a top surface of the combined surfboard PCB 202 is substantially parallel to the longitudinal axis of the motor shaft 158"; Figs. 6-7).
Regarding claim 8/1, Mergener in view of Leong teaches the power tool of claim 1.
Mergener further teaches wherein the actuator is a trigger movable in a direction parallel to the axis to vary an operating speed of the motor(trigger 112 is depressed in a direction generally parallel to motor shaft 158 to provide variable user input to motor control unit 130, Col. 4 lines 38-46; Figs. 1, 6-7, 9-11).
Regarding claim 10, Mergener teaches a power tool (250, brushless impact wrench, Figs. 9-11; Col. 9 lines 33-46) comprising:
a housing (256) including a motor housing portion (260), a front housing portion (portion of housing 256 housing the impact mechanism 254 and from which impact output unit 252 extends) coupled to the motor housing portion, and a handle portion (258) extending from the motor housing portion (Figs. 9-11; Col. 9 lines 38-46);
a motor (126) supported within the motor housing portion (Col. 9 lines 40-42);
an impact mechanism (254) driven by the motor (126) to deliver rotational impacts to an output (impact output unit 252) extending from the front housing portion, the output being rotatable about an axis (axis of motor shaft 158)(Figs. 9-11; Col. 9 lines 33-37);
an actuator (trigger 112) supported by the handle portion (258) and configured to control operation of the motor (Col. 4 lines 38-46; Col. 9 lines 33-46); and
a circuit board (combined surfboard PCB 202) extending parallel to the axis (Col. 7 lines 56-60), the circuit board (202) supported within the housing (Col. 8 lines 8-22; Fig. 7) and including a first side (top surface of PCB 202) facing the impact mechanism (motor 126 and drive mechanism 148/impact mechanism 254 are positioned above PCB 202) and a second side (bottom surface of PCB 202) facing the actuator (trigger 112 is positioned below PCB 202)(Col. 7 lines 50-60; Col. 8 lines 8-22; Figs. 6-7, 9-11).
Mergener is silent wherein a vibration isolator positioned on the first side of the circuit board.
However, Leong teaches a power tool (10) with a vibration isolator (68) positioned on the first side of the circuit board (60)(Fig. 4; Para [0032]-[0033]).
Leong is considered to be analogous to the claimed invention of Mergener because they are both in the same field of endeavor of electrically-powered hand-held power tools having a circuit board mounted within a housing. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the power tool of Mergener to include a vibration isolator positioned on the first side of the circuit board, as taught by Leong, in order to absorb vibrations transmitted from the impact mechanism to the circuit board, thereby protecting the electronic components from impact-induced vibration damage and extending the operating life of the power tool. See KSR, 550 U.S. at 416.
Regarding claim 11/10, Mergener in view of Leong teaches the power tool of claim 10.
Leong further teaches wherein the vibration isolator (68) is configured to reduce the transfer of vibration generated by operation of the power tool to the circuit board(Para [0033]).
Regarding claim 13/10, Mergener in view of Leong teaches the power tool of claim 10.
The combination does not explicitly teach wherein the vibration isolator is made of foam.
However, Leong teaches wherein the vibration isolator (68) is made of a soft, dampening material (Para [0032]). Foam is a well-known species of vibration-damping pad material, and the selection of foam would have been a mere substitution of one known dampening material for another with predictable results. See KSR, 550 U.S. at 416.
Leong further teaches wherein the vibration isolator (68) is compressed between the first side of the circuit board (60) and the housing (cavity 52)(Fig. 4; Para [0032]-[0033]).
Regarding claim 14/10, Mergener in view of Leong teaches the power tool of claim 10.
Mergener further teaches wherein the circuit board is supported within an accommodating region between the front housing portion and the actuator(combined surfboard PCB 202 is located in region 211, above the trigger 112 and below the motor 126 and drive mechanism 148/impact mechanism 254 which are housed within the front housing portion side of the tool, Col. 8 lines 8-22; Figs. 6-7, 9-11).
Regarding claim 16/10, Mergener in view of Leong teaches the power tool of claim 10.
Leong further teaches wherein the vibration isolator (68) covers less than 50% of the first side of the circuit board(Fig. 4, showing pad 68 occupying only an annular peripheral region of the first side of PCB 60, which is less than half of the total first-side surface area).
Regarding claim 21/1, Mergener in view of Leong teaches the power tool of claim 1.
Mergener further teaches wherein the handle portion extends from the motor housing portion in a direction perpendicular to the axis(handle portion 258 extends downward from motor housing portion 260 in a pistol-grip configuration substantially perpendicular to the rotational axis of motor shaft 158, Figs. 9-11; see also Figs. 1, 12).
Claim(s) 9 and 15 is/are rejected under 35 U.S.C 103 as being unpatentable over MERGENER(US9774229B1) in view of LEONG(US2010/0149790A1) and further in view of SCHNEIDER(US2019/0255687A1).
Regarding claim 9/1, Mergener in view of Leong teaches the power tool of claim 1.
Mergener in view of Leong does not explicitly teach wherein the housing includes cooperating clamshell halves defining the motor housing portion and the handle portion, wherein the clamshell halves define an upper wall of the accommodating region, the upper wall extending adjacent a bottom side of the front housing portion, and wherein the vibration isolator is compressed between the circuit board and the upper wall.
However, Schneider teaches an impact wrench (10) wherein the housing (14) includes cooperating clamshell halves defining the motor housing portion (18) and the handle portion (26), wherein the clamshell halves define an upper wall of the accommodating region above the handle and below the front housing portion (22), the upper wall extending adjacent a bottom side of the front housing portion (Para [0026], explicitly disclosing that "the handle portion 26 and the motor housing portion 18 are defined by cooperating clamshell halves, and the front housing portion 22 is a unitary body"; Fig. 1).
Schneider is considered to be analogous to the claimed invention of Mergener because they are both in the same field of endeavor of brushless cordless impact power tools. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have constructed the housing of Mergener with cooperating clamshell halves defining the motor housing portion and the handle portion, with a unitary front housing portion coupled thereto, as taught by Schneider, in order to facilitate assembly of internal components (motor, gear assembly, drive mechanism, circuit board, trigger) within the housing and to permit servicing of the tool. See KSR, 550 U.S. at 416.
Further, when combined with the vibration isolator of Leong, the vibration isolator is compressed between the circuit board and the upper wall because Leong’s pad (68) is disclosed as compressed between the PCB (60) and the surrounding housing wall (Leong, Fig. 4; Para [0033]); positioning Mergener’s surfboard PCB 202 in region 211 between the trigger and the bottom of the front housing portion, with the clamshell-defined upper wall of Schneider above, places Leong’s compressed pad between the circuit board and that upper wall.
Regarding claim 15/14, Mergener in view of Leong teaches the power tool of claim 14.
Mergener in view of Leong does not explicitly teach wherein the housing includes cooperating clamshell halves defining the motor housing portion and the handle portion, wherein the clamshell halves define an upper wall of the accommodating region, the upper wall extending adjacent a bottom side of the front housing portion, and wherein the vibration isolator is compressed between the first side of the circuit board and the upper wall.
However, Schneider teaches an impact wrench (10) wherein the housing (14) includes cooperating clamshell halves defining the motor housing portion (18) and the handle portion (26), and wherein the clamshell halves define an upper wall above the handle and below the front housing portion (22), the upper wall extending adjacent a bottom side of the front housing portion (Para [0026]; Fig. 1).
Schneider is considered to be analogous to the claimed invention of Mergener because they are both in the same field of endeavor of brushless cordless impact power tools. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have constructed the housing of Mergener with cooperating clamshell halves defining the motor housing portion and the handle portion, with a unitary front housing portion coupled thereto, as taught by Schneider, in order to facilitate assembly and servicing of internal components within the housing. See KSR, 550 U.S. at 416. The vibration isolator (68) of Leong, when incorporated into the resulting combination, is necessarily compressed between the first side of the circuit board and the upper wall formed by the clamshell halves of Schneider above the surfboard PCB 202 of Mergener (Leong, Fig. 4; Para [0033]).
Claim(s) 17-20 is/are rejected under 35 U.S.C 103 as being unpatentable over SCHNEIDER(US2019/0255687A1) in view of MERGENER(US9774229B1) and further in view of LEONG(US2010/0149790A1).
Regarding claim 17, Schneider teaches a power tool (impact wrench 10, Fig. 1) comprising:
a housing (14) including cooperating clamshell halves defining a motor housing portion (18) and a handle portion (26) extending from the motor housing portion, the housing further including a front housing portion (22) coupled to the clamshell halves (Para [0026], explicitly disclosing that "the handle portion 26 and the motor housing portion 18 are defined by cooperating clamshell halves, and the front housing portion 22 is a unitary body"; Fig. 1);
a motor (42) supported within the motor housing portion (Para [0027]-[0030]; Fig. 2);
an output (anvil 200) driven by the motor to rotate about an axis (axis 54), the output extending from the front housing portion (22)(Para [0033]-[0036]; Figs. 1-2); and
an actuator (trigger 62) supported by the handle portion (26) and configured to control operation of the motor (42)(Para [0031]; Fig. 2).
Schneider is silent wherein a circuit board supported within an accommodating region between the actuator and the front housing portion, wherein the clamshell halves define an upper wall of the accommodating region, the upper wall extending adjacent a bottom side of the front housing portion; and a vibration isolator positioned between the circuit board and the upper wall.
However, Mergener teaches a brushless power tool wherein a circuit board (combined surfboard PCB 202) is supported within an accommodating region (region 211) between the actuator (trigger 112) and the front housing portion(housing portion containing motor 126 and drive/impact mechanism)(Col. 8 lines 8-22, explicitly disclosing that "the combined surfboard PCB 202 is centrally located within the power tool 200 above the trigger 112, but below the motor 126 and drive mechanism 148"; Figs. 6-7, 9-11).
Mergener further teaches that this accommodating region is defined by an upper wall of the housing extending adjacent the bottom side of the front housing portion (Figs. 6-7; Col. 8 lines 8-22).
Mergener is considered to be analogous to the claimed invention of Schneider because they are both in the same field of endeavor of brushless impact-tool power tools having a controller circuit board for driving a brushless motor. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have located the control circuit board of Schneider within an accommodating region between the trigger actuator and the front housing portion, defined in part by an upper wall of the clamshell halves extending adjacent a bottom side of the front housing portion, as taught by Mergener, in order to provide a central location within the tool that allows relatively short wire connections between the circuit board, the trigger, the motor, and other components, while improving thermal management of the circuit board through proximity to the cooling fan (Mergener, Col. 8 lines 22-46). See KSR, 550 U.S. at 416.
The combination of Schneider in view of Mergener is silent wherein a vibration isolator positioned between the circuit board and the upper wall.
However, Leong teaches a power tool (10) with a vibration isolator (68) positioned between the circuit board (60) and the upper wall (housing wall of cavity 52)(Fig. 4; Para [0032]-[0033]).
Leong is considered to be analogous to the claimed invention of Schneider/Mergener because they are all in the same field of endeavor of hand-held power tools having a circuit board mounted within a housing. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the combination to include a vibration isolator positioned between the circuit board and the upper wall, as taught by Leong, in order to absorb vibrations transmitted from the impact mechanism through the housing to the circuit board, thereby protecting the electronic components from vibration-induced damage and extending the operating life of the power tool.
Regarding claim 18/17, Schneider in view of Mergener and Leong teaches the power tool of claim 17.
Mergener further teaches wherein the actuator is a multi-position switch(forward/reverse multi-position switch operable to control the motor, in addition to or in combination with trigger 62).
Regarding claim 19/17, Schneider in view of Mergener and Leong teaches the power tool of claim 17.
The combination does not explicitly teach wherein the vibration isolator includes foam compressed between the circuit board and the upper wall.
However, Leong teaches wherein the vibration isolator (68) is made of a soft, dampening material (Para [0032]) and is compressed between the circuit board (60) and the housing wall (Fig. 4; Para [0033]). Foam is a well-known species of vibration-damping pad material, and the selection of foam would have been a mere substitution of one known dampening material for another with predictable results. See KSR, 550 U.S. at 416.
Regarding claim 20/17, Schneider in view of Mergener and Leong teaches the power tool of claim 17.
Schneider further teaches wherein the actuator is a trigger configured to control an operating speed of the motor(trigger 62 selectively electrically connects motor 42 and battery pack 34 to provide DC power to motor 42, with speed varying based on trigger position, Para [0031]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED QURESHI whose telephone number is (571)-272-8310. The examiner can normally be reached on 8:30 AM - 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tulsidas Patel can be reached on 571-272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pairdirect. uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/MOHAMMED AHMED QURESHI/Examiner, Art Unit 2834
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
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