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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/12/2026 has been entered.
Election/Restrictions/Response to Amendment
Applicant’s election without traverse of Group II (Claims 8-17) in the reply filed on 8/4/2025 was previously acknowledged.
Applicant’s amendment filed 6/12/2026 has been entered.
Claims 1-7, 18-20, and 28 were previously cancelled.
Claim 15 is now also cancelled.
Claims 8-14, 16, 17, 21-27, 29-34 remain pending and drawn to the elected invention and therefore, examined below.
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 8, 23-25, 27, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Wolperding (US PGPUB 2016/0199958), in view of Lutz (US PGPUB 2014/0370791) and in further view of Kawakami (US PGPUB 2018/0117728-cited in IDS).
Regarding Claim 8, Wolperding discloses a power tool (10; Figures 1-2) comprising:
a motor housing (14) extending along a first axis (28);
a handle (16) extending from the motor housing (14) along a second axis (34) perpendicular to the first axis (28); and
a motor (20) positioned in the motor housing (14), the motor (20) including a stator (36) supported within the motor housing (14; Para. 0053), a rotor shaft (30) defining a motor axis coaxial with the first axis (28; Para. 0043), and a rotor (42, 44) supported on the rotor shaft (30) for rotation about the motor axis (28; Para. 0053);
a first rotor bearing and a second rotor bearing located external to the rotor (42, 44) and at opposite respective ends of the rotor (42, 44; see “Annotated View of Figure 2” below depicting both rotor bearings), and rotatably supporting the rotor shaft (30), each of the first rotor bearing and the second rotor bearing directly supported by the motor housing (14; as shown the bearings are clearly supported directly by portions of the motor housing 14 or other portions of the housing structure forming the motor housing); and
a fan (46) positioned on the rotor shaft (30) between the first rotor bearing and the second rotor bearing (as shown in “Annotated View of Figure 2” below);
wherein a portion of the rotor shaft (30) defines an output shaft (portion of 30 extending beyond the motor and into spindle 22), and a distal end of the output shaft (30) is configured to couple to a tool holder (spindle 22) configured to receive a cutting tool (i.e. 48; Para. 0060).
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Annotated View of Figure 2
However, the output shaft of Wolperding does not readily extend outward from the motor housing (14).
Attention can be brought to the teachings of Lutz which outlines another power tool (10; Figure 1, 2) comprising a rotor shaft (12) that defines a spindle/output shaft (32; Para. 0029) that extends outward from a motor housing (16).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have integrated the tool spindle of Wolperding with the rotor shaft as taught by Lutz. By modifying Wolperding in this manner, the spindle can be driven directly by the motor as taught by Lutz (Para. 0017, 0037). This further reduces power lost in transmission and further simplifies the construction of the tool.
Further, Wolperding, as modified by Lutz, discloses several features of the claimed invention but does not disclose a vibration damping assembly including:
a first coupling portion defined by the motor housing, the first coupling portion including a boss extending from a first mating surface and including a flange and a groove defined between the first mating surface and the flange,
a second coupling portion defined by the handle, the second coupling portion defining an opening that is configured to receive the boss, and
an elastomeric damper positioned between the first and second coupling portions, the elastomeric damper including a groove portion disposed in the groove, a flange portion that receives the flange, and a mating surface portion that extends from the groove portion on an opposite side of the groove portion from the flange portion.
Attention is brought to Kawakami which includes a power tool (1; Figure 1) comprising a motor housing (2) and a handle (4; Para. 0030) and a vibration damping assembly including:
a first coupling portion (44, 45; Figure 4) defined by the motor housing (2), the first coupling portion including a boss (44) extending from a first mating surface (see “Annotated Views of Figure 4” below) and including a flange (stop 45) and a groove (as shown) defined between the first mating surface and the flange (45),
a second coupling portion (sandwich parts 52, 53; Para. 0037, 0040) defined by the handle (4), the second coupling portion defining an opening that is configured to receive the boss (44; Para. 0037; see Figure 4), and
an elastomeric damper (56; Figure 4, 6A-6b) positioned between the first and second coupling portions (44, 45, 52, 53), the elastomeric damper (56) including a groove portion disposed in the groove (of 44 as shown in “Annotated Views of Figure 4” below), a flange portion that receives the flange (45; as shown the stop 45 is radially within the damper 56 and therefore is viewed as received thereby), and a mating surface portion that extends from the groove portion on an opposite side of the groove portion from the flange portion (refer to the “Annotated Views of Figure 4” below; Para. 0038-0041, 0058-0060, 0062).
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Annotated Views of Figure 4
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have incorporated a vibration damping assembly as taught by Kawakami into the tool of Wolperding. By modifying Wolperding in this manner, vibration produced and transmitted to the handle can be readily suppressed and further vibration to electrical components therein can also be suppressed and therefore the service life of such components can be improved as taught by Kawakami (Para. 0062).
Regarding Claim 23, Wolperding, as modified, does not disclose the rotor shaft (30) defines a shaft length L1;the rotor shaft defines a bearing span L2 measured between the first rotor bearing and the second rotor bearing; and a ratio of the bearing span L2 to the shaft length L1 is less than or equal to 0.6.
However, it would have been an obvious matter of design choice, to one of ordinary skill in the art at the time the invention was effectively filed, to embody the rotor shaft and bearing positions of Wolperding to be positioned such that the bearing span and shaft length result in the ratio as claimed, since such a modification would have involved a mere change in the size of components. Further, it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this instance the motor construction of Wolperding would perform in the same manner as a device comprising the same dimensions.
Regarding Claim 24, Wolperding, as modified, discloses the shaft length L1 is no greater than 97 mm (see Para. 0044 which outlines the height of the housing 14 is up to 100mm and therefore the shaft must be less than 97mm). Alternatively, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have embodied the shaft to be less than 97mm as “in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)” per MPEP 2144.05. In this instance, based on the housing being 100mm or less, such a shaft length of 97mm or less must be comprised within the disclosed lengths of the shaft of Wolperding.
Regarding Claim 25, Wolperding, as modified, discloses the rotor shaft (30) and the output shaft (30) are integrally formed (As shown).
Regarding Claims 27 and 30, Wolperding, as modified, discloses the stator (36) defines a stator outside diameter D3, the motor housing (14) defines a housing head diameter D4; and a ratio of the stator outside diameter D3 to the housing head diameter D4 is greater than 0.7 (as clearly shown the stator 36 is nearly abutting the housing in Figure 2) and further discloses the rotor (42) defines a rotor outside diameter D2 (as shown in Figure 2) the stator (36) defines the stator outside diameter D3 and a ratio of the rotor outside diameter D2 to the stator outside diameter D3 is greater than 0.5 (as shown the stator diameter is clearly not twice as large as the rotor diameter).
Alternatively, it would have been an obvious matter of design choice, to one of ordinary skill in the art at the time the invention was effectively filed, to embody the diameters of the stator and rotor of Wolperding to result in the ratios as claimed, since such a modification would have involved a mere change in the size of components. Further, it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this instance the motor construction of Wolperding would perform in the same manner as a device comprising the same dimensions. See MPEP 2144.04(IV)(A).
Alternatively, Claims 8, 23-25, 27, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Wolperding (US PGPUB 2016/0199958), in view of Lutz (US PGPUB 2014/0370791) and Kawakami (US PGPUB 2018/0117728), and in further view of Umemura (JP 2013119129A; see attached PDF for English translation including paragraph numbering referred to below)
Regarding Claim 8, assuming arguendo that the first rotor bearing and second rotor bearing are not directly supported by the motor housing, in which the Examiner does not concede to, attention can be brought to the teachings of Umemura which teaches another power tool (101; Figures 1-2) comprising a motor (111) including a rotor (117) and stator (116) and a spindle (121) forming a rotor shaft (of 117) wherein the spindle (121) is supported by bearings (131, 133) positioned at opposite ends of the spindle shaft (121) and wherein the bearings are directly supported by a motor housing (105a, 105b; Para. 0023).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have supported the bearings of Wolperding directly with the motor housing as taught by Umemura. By modifying Wolperding in this manner, rotational operation of components such as the rotor and the fan can be stabilized as taught by Umemura (Para. 0023).
Regarding Claims 23-25, 27, and 30, refer to the previous 103 rejection above.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Wolperding (US PGPUB 2016/0199958), in view of Lutz (US PGPUB 2014/0370791), Kawakami (US PGPUB 2018/0117728) and, alternatively in further view of Umemura (JP 2013119129A), as applied to Claim 8, and in further view of Hirschburger (US PGPUB 2003/0042803-cited in IDS).
Regarding Claim 22, Wolperding, alone or as modified, discloses several features of the claimed invention but does not readily disclose the tool holder is a nut and collet assembly.
Attention is brought to Hirschburger which teaches another power tool (10; Figure 1) comprising a collet (32) and nut (36) assembly (see Figure 2).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have utilized a collet and nut assembly as taught by Hirschburger in the tool of Wolperding such that tool accessories can be readily inserted in a secure and known manner as taught by Hirschburger (Para. 0027).
Claims 9-14, 26, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Wolperding (US PGPUB 2016/0199958), in view of Lutz (US PGPUB 2014/0370791), Kawakami (US PGPUB 2018/0117728), and, alternatively in further view of Umemura (JP 2013119129A), as applied to Claim 8, and in further view of Zhang (US PGPUB 2019/0099873).
Regarding Claims 9 and 10, Wolperding, as modified, discloses several features including the rotor shaft (30) defines a rotor shaft outside diameter D1 (of 30), wherein the rotor (42) defines a rotor outside diameter D2 (defined by outer diameter of magnets 44 connected to shaft 30) but does not readily disclose a ratio R1 of the rotor outside diameter D2 to the rotor shaft outside diameter D1 is less than or equal to 3 and is silent on the rotor shaft outside diameter D1 is at least 6 millimeters.
Attention can be brought to the teachings of Zhang which include another power tool (100; Figure 1) which includes an electric motor (3; Figure 2) which comprises a stator (31), a rotor (32) and a rotor shaft (33), wherein the rotor shaft comprises a diameter ranging from 7.5-9mm (Para. 0035, 0109).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the shaft of Wolperding to comprise the shaft diameter of 7.5-9mm as taught by Zhang. By modifying the shaft to comprise such a diameter, the deflection of the shaft during increased loads can be readily reduced as taught by Zhang (Para. 0105-0107).
Further note Wolperding discloses the outer diameter of the motor is approximately 38 mm (Para. 0038) and therefore considering the rotor is interior of the stator, the diameter of the rotor in combination with the shaft diameter as incorporated above would readily result in the claimed ratio range.
Alternatively, assuming arguendo that Wolperding, as modified, would not readily result in the claimed ratio range, in which the Examiner does not concede to, it would have been obvious to one of ordinary skill in the art to further modify the diameter of the rotor to obtain such a ratio as such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being obvious to one of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See MPEP 2144.04(IV)(A)
Further, it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this instance the motor/rotor construction of Wolperding, as modified, would perform in the same manner as a device comprising the same dimensions. See MPEP 2144.04(IV)(A)
Also note a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In this instance Wolperding, as modified, at the very least would comprise such a diameter ratio between the shaft and rotor close to that as claimed.
Regarding Claims 11 and 12, Wolperding, as modified, discloses several features of the claimed invention but does not readily disclose a ratio R2 of the stator outside diameter D3 to the rotor shaft outside diameter D1 is less than or equal to 6 and wherein the rotor shaft outside diameter D1 is at least 6 millimeters, and wherein the stator outside diameter D3 is no greater than 36 millimeters.
Attention can again be brought to Zhang (see above).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the shaft of Wolperding to comprise the shaft diameter of 7.5-9mm as taught by Zhang. By modifying the shaft to comprise such a diameter, the deflection of the shaft during increased loads can be readily reduced as taught by Zhang (Para. 0105-0107).
Further note Wolperding discloses the outer diameter of the motor is approximately 38 mm (Para. 0038) and therefore the outer diameter of the stator (36) is at least close to the claimed 36mm. It would have been obvious to one of ordinary skill in the art to modify the diameter of the stator to be 36mm or less as such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being obvious to one of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See MPEP 2144.04(IV)(A)
Further, it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this instance the motor construction of Wolperding would perform in the same manner as a device comprising the same dimensions. See MPEP 2144.04(IV)(A)
And lastly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In this instance, the disclosed 38mm is clearly close to the claimed 36mm.
Regarding Claim 13, Wolperding, as modified, discloses the rotor shaft (30) defines a rotor shaft outside diameter D1, the rotor shaft defines a bearing span L2 measured between the first rotor bearing and the second rotor bearing (as shown) but does not disclose a ratio R3 of the bearing span L2 to the rotor shaft outside diameter D1 is less than or equal to 9.5.
Attention can again be brought to Zhang (see above).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the shaft of Wolperding to comprise the shaft diameter of 7.5-9mm as taught by Zhang. By modifying the shaft to comprise such a diameter, the deflection of the shaft during increased loads can be readily reduced as taught by Zhang (Para. 0105-0107). Wolperding discloses the height “h” being 70-90mm, preferably 80mm and therefore the “span length” is clearly much less and with the modified shaft diameter, the claimed ratio would readily be obtained.
Regarding Claim 14, Wolperding, as modified, discloses the rotor shaft outside diameter D1 is at least 6 millimeters (as taught by Zhang), but does not readily disclose the bearing span L2 is no greater than 57 millimeters. However, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the bearing span such a modification would have involved a mere change in the size of a component (i.e. the shaft). A change in size is generally recognized as being obvious to one of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding Claim 26, Wolperding, as modified, discloses the first rotor bearing is positioned proximate the output shaft (of 30; see “Annotated View of Figure 2” above).
Regarding Claim 29, Wolperding, as modified, discloses the fan (46) is positioned between the first rotor bearing and the rotor (44; note that the “first rotor bearing” can be viewed as the bearing closest to the tool 48).
Claims 16, 17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Wolperding (US PGPUB 2016/0199958), in view of Lutz (US PGPUB 2014/0370791), Kawakami (US PGPUB 2018/0117728), and, alternatively in further view of Umemura (JP 2013119129A), as applied to Claim 8, and in further view of Hessenberger (US PGPUB 2014/0124231-cited in IDS).
Regarding Claims 16, 17 and 21, Wolperding, as modified, discloses the fan (46) mounted between the rotor bearings and between the rotor (42) and the first rotor bearing (i.e. the bottom bearing in this instance) but does not disclose a bushing affixed to the rotor shaft between the rotor and the first rotor bearing; and a fan supported on the bushing; wherein the bushing includes a balancing portion that extends axially away from the fan and toward the rotor. Further Wolperding, alone or as modified, does not disclose the balancing portion is configured to have material removed and is copper.
Attention can be brought to the teachings of Hessenberger which includes another power tool (10; Figure 1) comprising motor (414; Figures 10-12) including a stator, a rotor (34), a rotor shaft (42) and a bushing (430) affixed to the rotor shaft (42), and a fan (74) supported on the bushing (430; Para. 0040) wherein the bushing (430) includes a balancing portion (formed on 430 per Para. 0042) that extends axially away from the fan (74) and toward the rotor (34; note Para 0040 describes bushing being adjacent face 50B of the rotor; note the overmold 222 of Figure 6) and wherein the balancing portion (of 430) is configured to have material removed therefrom (i.e. see 442) to rotatably balance the rotor (34; Para. 0042).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have incorporated a copper/brass bushing as taught by Hessenberger into the tool of Wolperding such that the fan is mounted is mounted on the bushing and further the motor can be readily balance the motor to within a predetermined specification as taught by Hessenberger (Para. 0042).
Note with respect to the copper bushing material, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Please note that in the instant application, applicant has not disclosed any criticality for the bushing being only copper. In this instance the brass of Hessenberger would perform in the same manner.
Claims 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Wolperding (US PGPUB 2016/0199958), in view of Lutz (US PGPUB 2014/0370791), Kawakami (US PGPUB 2018/0117728), and, alternatively in further view of Umemura (JP 2013119129A), as applied to Claim 8, and in further view of Etter (US Patent 6,120,362).
Regarding Claims 31-33, Wolperding, as modified, fails to disclose a trigger assembly including a paddle member rotatably coupled to the handle and configured to activate the motor, wherein the trigger assembly includes a lock-off member rotatably coupled to the paddle member to selectively lock and unlock the paddle member, and the tool further comprising a microswitch coupled to and extending from the handle, the paddle member engaging the microswitch to activate the motor.
Attention is brought to Etter which teaches a power tool (100; Figure 1) which includes a trigger assembly including a paddle member (paddle 126) rotatably coupled to a handle (102) and configured to activate a motor (106), wherein the trigger assembly includes a lock-off member (134) rotatably coupled to the paddle member (126) to selectively lock and unlock the paddle member (126; Col 3, line 64 through Col 4, line 9), and the tool (100) further comprising a microswitch (142) coupled to and extending from the handle (102), the paddle member (126) engaging the microswitch (142) to activate the motor (106; Col 4, lines 33-44).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have utilized a trigger assembly as taught by Etter in the tool of Wolperding. By modifying Wolperding in this manner, activation of the motor can be readily controlled by the user and further with the lock-off member, inadvertent activation can be prevented as taught by Etter (see Col 5, lines 2-10).
Regarding Claim 34, Wolperding, as modified, discloses the rotor shaft is rotatable at a speed above 20,000 rpm (see Para. 0055 as it can be readily implied the “20000 min-1” is referring to rpm).
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. see “Notice of References Cited”.
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/JOSHUA G KOTIS/Examiner, Art Unit 3731 6/18/2026
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