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 .
Election/Restrictions
Applicant’s election without traverse of Group I (drawn to a “hand-held power tool”), claims 1-7 and 13, in the reply filed on July 1, 2026 is acknowledged.
Claims 8-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 1, 2026.
Specification
The disclosure is objected to because of the following informalities: in paragraph 0031, it appears that “mains line” should be –main line--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“clamping element” (“configured to clamp an insertion tool configured to be arranged in the tool holder”), recited in at least claims 1-3, 7;
“clamping element operating unit”, recited in claims 2, 5, and 6 (noting that neither the recited blocking element in claim 2, nor the recited actuating element in claim 5 are recitations of sufficient structure to perform the claimed function of operating the clamping element, for example);
“blocking element”, recited in at least claims 2, 3, 5, and 7; and
“actuating element”, recited in at least claim 5.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, lines 7-8, the claim recites “the clamping element is configured to clamp the insertion tool in the tool holder in a clamping position and release the insertion tool in a release position”. However, it is unclear as set forth in the claim what the “clamping position” and “release position” are positions of, i.e., a “clamping position” of what? A “release position” of what? (E.g., the clamping element, the insertion tool, the tool holder, etc.)
In claim 1, penultimate line, the claim sets forth “in/from”. However, it is unclear as set forth in the claim whether the “/” in “in/from” is intended to mean “and”, “or”, or “and/or”.
In each of claims 2 and 6, the limitation “the clamping element operating unit” lacks sufficient antecedent basis in the claim, noting that no “clamping element operating unit” was previously recited (though a “clamping element operator unit” was previously recited in claim 1). (It is also noted that claim 5, which depends from claim 2, also uses the term “the clamping element operating unit”). That being said, it is unclear as claimed in claims 2, 5, and 6 whether the “clamping element operating unit” is intended to be the previously recited “clamping element operator unit”, or is instead intended to be additional thereto. That said, it is noted that the term “clamping element operator unit” includes the structural modifier “operator”, whereas the term “clamping element operating unit” does not, and thus, the term “clamping element operator unit” in claim 1 does not invoke 35 USC 112(f), whereas the term “clamping element operating unit” does not include that structural modifier and does invoke 35 USC 112(f).
In claim 2, lines 1-3, the claim recites “wherein the clamping element operating unit comprises a blocking element which is configured to block the clamping element on the housing in a rotationally fixed manner in a blocking position”. However, firstly, it is unclear as set forth in the claim what is being set forth as being or occurring “on the housing”, i.e., the clamping element, the “blocking” of the clamping element, or the blocking element itself. Additionally, it is unclear as set forth in the claim what is being set forth as being or occurring “in a rotationally fixed manner”, i.e., the blocking of the clamping element, the clamping element itself, etc. Furthermore, it is unclear as set forth in the claim what is being set forth as being or occurring “in a blocking position”, and it is unclear as claimed what the blocking position is a blocking position “of”, i.e., a blocking position of what.
Additionally it is noted that each of claims 2, 3, 5, and 7 utilize the term “blocking element”. However, it is unclear as claimed what function the term “blocking”/”block” is intended to be/impart, in that it is unclear whether this term is to be given its normal plain meaning, e.g., obstruct, which does not appear to make sense in context, but it does not appear that any “special definition” of the term has been provided. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “block” or “blocking” in claims 2, 3, 5, and 7 is apparently used by the claim to mean something (unclear what) other than obstructing, while the accepted meaning is “obstructing.” The term is indefinite because the specification does not clearly redefine the term.
Claim limitation “clamping element operating unit” in claims 2, 5, and 6 has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it is unclear as claimed whether this limitation is actually intended to be the “clamping element operator unit” previously set forth in claim 1, or whether this limitation is instead intended to be a different element than the previously-recited “clamping element operator unit” of claim 1. That said, the term “operator” is structural, and thus the term “clamping element operator unit” does not invoke 35 USC 112(f), whereas the term “operating” is functional and the limitation “clamping element operating unit” would invoke 35 USC 112(f) (if it is not the same as or further limiting the previously-recited “clamping element operator unit”. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claim limitation “blocking element” (in claims 2, 3, 5, and 7) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid of adequate structure to perform the claimed function. In particular, while the specification points to element 220 in the drawings as a “blocking element”, the specification never discloses what this element is. The limited view of element 220 in Figure 2 likewise does not provide sufficient details that one of ordinary skill in the art would know what structure(s) perform(s) the claimed function. There is no disclosure of any particular structure, either explicitly or inherently, to perform the “blocking”. As would be recognized by those of ordinary skill in the art, there are many different ways to effect “blocking” or “preventing common rotational movement of the tool holder and the clamping element”, and to “release” the clamping element to allow a common rotational movement of the tool holder and clamping element. The specification does not provide sufficient details such that one of ordinary skill in the art would understand which structure(s) perform(s) the claimed function(s). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
In claim 2, last three lines, the claim indicates that the blocking element is configured to “release the clamping element in a release position to allow a common rotational movement of the tool holder and the clamping element”. However, it is unclear as set forth in the claim that the recited “release position” is a position of, i.e., a “release position” of what or in which what is released, e.g., the clamping element vs. the blocking element. Furthermore, it is unclear as set forth in the claim whether “a release position” is intended to be the same “release position” that was previously set forth in claim 1, line 8, or whether “a release position” in claim 2 is instead intended to be a different “release position”. In the event that it is Applicant’s intent for the release position in claim 1 to be a release position of the clamping element, and for the release position of claim 2 to instead be a release position of the blocking element, Applicant should consider clarifying language to be added to the claim(s) to clarify this distinction.
In claim 2, the claim sets forth “wherein the clamping element operating unit comprises a blocking element which is configured to block the clamping element on the housing in a rotationally fixed manner in a blocking position, to prevent a common rotational movement of the tool holder and the clamping element, and to release the clamping element in a release position to allow a common rotational movement of the tool holder and the clamping element”. However, it is unclear as set forth in the claim whether the limitation “to prevent a common rotational movement of the tool holder and the clamping element” is intended to refer to/be a further limitation on the recited “blocking position”, vs. whether the limitation “to prevent a common rotational movement of the tool holder and the clamping element” is instead intended to be another function in the list of functions recited in claim 2. For example, regarding the latter, it is unclear as set forth in the claim whether claim 2 intends to recite “wherein the clamping element operating unit comprises a blocking element which is configured to” (i) “block the clamping element on the housing in a rotationally fixed manner in a blocking position,” (ii) “to prevent a common rotational movement of the tool holder and the clamping element, and” (iii) “to release the clamping element in a release position to allow a common rotational movement of the tool holder and the clamping element”.
In claim 3, line 4, the limitation “the release position” lacks sufficient clear antecedent basis in the claim, noting that it is unclear as claimed whether such is intended to refer to the “release position” that was previously set forth in claim 2 (lines 4-6), or whether such is instead intended to refer to the “release position” that was previously set forth in claim 1 (lines 7-8). The same situation exists in claim 5 re the limitation “the release position”.
In claim 3, the claim sets forth “the blocking element is configured to actuate the switch in the blocking position”. However, it is unclear as set forth in the claim what is being set forth as being “in the blocking position” in this limitation, i.e., the switch (as the claim appears to say), or the blocking element.
In claim 3, the claim sets forth “the blocking element is configured to actuate the switch in the blocking position, such that the clamping element is arranged in the release position in a preset first direction of rotation when the drive unit rotates and such that the clamping element is arranged in the clamping position in a preset second direction of rotation when the drive unit rotates”. However, it is unclear as set forth in the claim what is being set forth as being/occurring/being arranged in “a preset first direction of rotation” and “in a preset second direction of rotation”, e.g., the release position and the clamping position (respectively), per se (which is grammatically what it appears that the claim is saying), the clamping element, the actuation of the switch, etc. It is unclear as set forth in the claim how or in what regard a position, per se, is to be considered to be “arranged in” a particular direction of rotation. Furthermore, it is unclear as set forth in the claim what the claim intends to indicate is rotating in the recited directions of rotation, i.e., a “preset firth direction of rotation” of what? “A preset section direction of rotation” of what? It is additionally unclear as claimed what action or actions are intended to be set forth as being capable of occurring “when the drive unit rotates” as set forth in claim 3 (re both recitations of “when the drive unit rotates”). It is also unclear as claimed whether “when the drive unit rotates” (both occurrences) is intended to refer to a time period at which the drive unit is actuated to cause the drive unit to begin rotating, vs. whether “when the drive unit rotates” is instead intended to refer to a time period at which the drive unit is (already) rotating.
In claim 4, the claim recites “wherein: an electronic unit is configured to control the drive unit in a working mode at a first speed and in a clamp-release mode at a second speed”. However, it is unclear as set forth in the claim it is unclear as claimed what the recited modes are modes of, i.e., modes of the electronic unit, modes of the drive unit, modes of the clamping element or clamping element operator/operating unit (given the recitation of a “clamp-release” mode), etc. It is also unclear as set forth in the claim what the first and second speeds are speeds of, i.e., the ability of the electronic unit to control the drive units (which is how the claim reads), vs. speeds of the drive unit, etc.
In claim 4, the claim recites “the switch is connected to the electronic unit, to allow a rotational movement of the drive unit in the clamp-release mode via the electronic unit”. However, firstly, it is unclear as set forth in the claim what is being set forth as being/occurring “via the electronic unit”. Additionally, it is unclear as set forth in this limitation in the claim what is being set forth as being “in the clamp-release mode”, i.e., the clamp-release mode of what (and in which what action(s) occur(s))?
Claim limitation “actuating element” (“configured to actuate the blocking element such that the blocking element is moved from the release position to the blocking position”) set forth in claim 5 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid of adequate structure to perform the claimed function. In particular, the specification merely points to generically shown element 210 as the actuating element, and describes the claimed function of actuating the blocking element 220 to allow the blocking element 220 to be moved from the release position to the blocking position (in the direction of arrow 201), and states that in an alternative, the actuating element 210 can be moved “via a suitable application or app” when the power tool 100 is coupled to an external device such as a smartphone on which the app is installed. See paragraph 0040, for example. See also paragraphs 0042-0043 and Figure 2. However, there is no disclosure of any particular structure, either explicitly or inherently, of the actual actuating element 210. The description of, for example, the app to actuate element 210, or the description of the element 210 being movable in direction 201, is not an indication of what element 210 is. As would be recognized by those of ordinary skill in the art, there are many different ways/structures to effect the claimed actuation of the blocking element. The specification does not provide sufficient details such that one of ordinary skill in the art would understand which structures perform(s) the claimed function(s). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
In claim 6, the claim sets forth “wherein the clamping element operating unit comprises contact protection”. However, it is unclear as set forth in the claim whether “contact protection” is intended to be a tangible element (noting that in the specification, element 215 is described as “contact protection”), as in “a contact protection”, vs. whether such is instead intended to merely indicate that the clamping element operating unit is configured in a manner so as to provide/perform (in some fashion) the action/function of protecting a (such as an electrical) contact, or configured in a manner so as to provide/perform (in some fashion) the action/function of protecting (something unspecified in the claim) something from being contacted in some fashion/manner.
In claim 7, the claim sets forth that the contact-protection is “box-shaped”. Noting that there is a wide variety of shapes of boxes (including shapes other than prismatic/cuboid), it is unclear as claimed what shape or shapes such limitation is intended to require. For example, it is unclear as claimed whether a cylindrical “box” shape would meet the claim because boxes of that shape exist, vs. whether the claim intends to require only rectangular parallelepiped-shaped boxes. Furthermore, noting that it does not appear that element 215 includes a fully-enclosed box (see Fig. 2), such further raises questions about what configuration(s) are intended to be included by the term “box-shaped” vs. what configuration(s) are intended to be excluded by the term “box-shaped”.
In claim 7, the limitation “the blocking element” lacks sufficient antecedent basis in the claim.
In claim 7, the limitation “the switch” lacks sufficient antecedent basis in the claim.
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 2-5 and 7 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 2 and the recited “blocking element which is configured to block the clamping element on the housing in a rotationally fixed manner in a blocking position, to prevent a common rotational movement of the tool holder and the clamping element, and to release the clamping element in a release position to allow a common rotational movement of the tool holder and the clamping element”, (and the further recitations of the “blocking element” in each of claims 3, 5, and 7) as discussed above, the “blocking element” limitation invokes 35 USC 112(f). As described above in a rejection of claims 2, 3, 5, and 7 under 35 USC 112(b), the disclosure does not provide adequate structure to perform the claimed function(s). That said, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
Additionally, in claim 2, last three lines, the claim indicates that the blocking element is configured to “release the clamping element in a release position to allow a common rotational movement of the tool holder and the clamping element”. However, as noted in a separate rejection of claim 2 under 35 USC 112(b) set forth hereinabove, it is unclear as set forth in the claim that the recited “release position” is a position of, i.e., a “release position” of what or in which what is released, e.g., the clamping element vs. the blocking element. Furthermore, it is unclear as set forth in the claim whether “a release position” is intended to be the same “release position” that was previously set forth in claim 1, line 8, or whether “a release position” in claim 2 is instead intended to be a different “release position”. That said, in the event that “a release position” in claim 2 is intended to be the same “release position” as that set forth in claim 1, then it is noted that it does not appear that the specification teaches such in a manner so as to demonstrate possession thereof.
In particular, it appears that in claim 1, lines 7-8, the “release position” (re the limitation “the clamping element is configured to clamp the insertion tool in the tool holder in a clamping position and release the insertion tool in a release position”) is a release position of either the insertion tool (145) or the clamping element (230). See claim 1, lines 7-8, as well as paragraphs 0030 and 0035, for example. However, it appears that in claim 2, the “release position” may be intended to refer to a position of the clamping element operating unit (200), or to a position of the “blocking” element (220), for example, in which position the clamping element (230) is “released” (from either 200 or 220) in order to allow a “common”/together rotational movement of the tool holder (140) and the clamping element (230). See Figure 2 and paragraphs 0037-0038 and 0040. In particular, it is noted that the “release” position (of a blocking element 220 or of the clamping element operator unit 200) in which a common rotational movement of the tool holder (140) and clamping element (230) is capable of occurring (as set forth in claim 2) would not appear to be the same position as a position in which the clamping element (230) is configured to release the insertion tool (145), i.e., since when the tool (145) and clamping element (230) are rotating together (i.e., with common rotation), that is a time during which the tool (145) is clamped by the clamping element (230).
Thus, the specification as filed does not appear to clearly teach, in a manner so as to demonstrate possession thereof, that the clamping element operating unit (200) comprises a blocking element (220) which is “configured to release the clamping element in a release position to allow a common rotational movement of the tool holder and the clamping element”, and wherein “the clamping element is configured to clamp the insertion tool in the tool holder in a clamping position and release the insertion tool” in that same “release position”, as apparently set forth in claim 2.
The aforementioned issue regarding the “release position” of claim 2 (vs the “release position” of claim 1) is further compounded in claims 3 and 5. In particular, in claim 3, line 4, as noted in a separate rejection of claims 3 and 5 under 35 USC 112(b), the limitation “the release position” lacks sufficient clear antecedent basis in the claim, noting that it is unclear as claimed whether such is intended to refer to the “release position” that was previously set forth in claim 2 (lines 4-6), or whether such is instead intended to refer to the “release position” that was previously set forth in claim 1 (lines 7-8). That being said, it does not appear that the specification as filed teaches, in a manner so as to demonstrate possession thereof, that the clamping element (230) is arranged in a “release position” that is “in a preset first direction of rotation” (as set forth in claim 3), which release position also allows “a common rotational movement of the tool holder” (140) “and the clamping element” (230), as required by claim 2, while also “release[ing] the insertion tool” by/from the clamping element as set forth in claim 1. Similarly, it does not appear that the specification as filed teaches, in a manner so as to demonstrate possession thereof, that the clamping element operating unit (200) comprises an actuating element (210) (re claim 5) configured to actuate the blocking element (220) such that the blocking element (220) is moved from the “release position” (of claim 1) in which the insertion tool (145) is released of/from the clamping element/tool holder (re claim 1), as set forth in claim 5.
Regarding claim 5 and the recited “actuating element configured to actuate the blocking element such that the blocking element is moved from the release position to the blocking position”, as discussed above, this limitation invokes 35 USC 112(f). As described above in a rejection of claim 5 under 35 USC 112(b), the disclosure does not provide adequate structure to perform the claimed function. That said, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
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 1-2, 5-7, and 13, as best understood in view of the above rejections based on 35 USC 112, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 10 2020 200 922 A1 (hereinafter, “DE ‘922”).
It is noted that a machine translation of DE ‘922 is being made of record on the Notice of References Cited (PTO-892) accompanying this Office Action. That said, attention is directed to that machine translation regarding any references herein to page numbers, line numbers, paragraph numbers, or the like, re DE ‘922.
DE ‘922 teaches a hand-held power tool (such as, regarding claim 13, a router 14a; see Figure 1 and at least paragraphs 0004, 0023) comprising:
a tool holder (18a, for example; see Figures 2-4 and at least paragraphs 0024-0028, for example); and
a housing (such as 44a; see Figures 1-3) in which at least one drive unit (a motorized drive unit, described in paragraph 0024) configured to drive the tool holder (18a) (about axis 62a, for example) is arranged (see Figures 1-3, noting that 52a is the power supply unit and 110a is an armature winding; see also paragraphs 0023, 0024, and 0004, and the translation of claim 1), wherein
the tool holder (such as for example, shaft 16a, or alternatively, the tapered opening 66a in the shaft 16a, in which tapered opening 66a a collet 18a and the tool bit 12a are received; see Figures 2-3 and at least paragraphs 0024-0026) is “associated with” a clamping element (such as 22a; see Figures 1-3 and at least paragraphs 0024) configured to clamp an insertion tool (12a; see Figures 2-3 and at least paragraphs 0024-0029) configured to be arranged in the tool holder (see Figures 2-3),
the clamping element (22a) is configured to clamp the insertion tool (12a) in the tool holder (16a, or alternatively, 66a) in a clamping position (shown in Figure 3) and release the insertion tool (12a) in a release position (shown in Figure 2) (see Figures 2-3 and at least paragraphs 0024-0029, for example), and
a clamping element operator unit (24a+34a+26a, for example; see Figures 2-3 and at least paragraphs 0024-0035, for example) configured to be actuated without tools (see at least paragraphs 0002, 0011, 0023) is provided to enable tool-free actuation of the clamping element (such as 22a) to clamp or release the insertion tool (12a) in/from the tool holder (16a, or alternatively, 66a). See Figures 1-3, noting that element 24a is brought into a position in which it (24a) blocks a rotational movement of clamping element 22a relative to the output shaft 16a (see also paragraph 0028). Then either an operator presses 26a/100a downward (in direction 104a) from the position shown in Figure 2 to the position shown in Figure 3 so that the rotationally driven polygonal contour 30a is brought into contact with the correspondingly-shaped rotary drive contour 28a of the output shaft 16a, or alternatively, 26a/100a are moved downward (i.e., from the position shown in Figure 2 to the position shown in Figure 3) via an actuator such as a hydraulic cylinder, pneumatic cylinder, or magnet, as described in paragraph 0031, for example. See Figures 2-3 and paragraphs 0030-0031. Given the internal 82a and external threads 84a connecting output shaft 16a and the clamping element 22a (see Figures 2-3 and at least paragraphs 0026, 0029-0030, 0033), when either an operator manually grips 100a and rotates 26a/30a/28a/16a (paragraph 0027), or a motor (paragraph 0027) automatically drives 26a/30/28a/16a in rotation, such rotation (of 26a/30a/28a/16a) causes axial movement of 22a and 18a relative to shaft 16a (due to the engagement of 24a with 22a). See Figures 2-3 and paragraphs 0024-0035. Noting the tapered conical shape of the opening 66a of the output shaft 16a and the mating outer conical shape of the collet 18a, such axial movement of 22a and 18 relative to shaft 16a causes the inner diameter 78a of the collet 18a to change (i.e., get larger when unclamping the bit 12a; get smaller when clamping down on the bit 12a, depending on whether the direction of movement of 22a/18a is upwards or downwards; see Figures 2-3 and at least paragraph 0025, for example). See also paragraphs 0024-0035. Note that the aforedescribed clamping element operator unit is thus “configured to be actuated without tools” to enable a “tool-free” actuation of the clamping element (22a) to clamp or release the insertion tool (12a) in/from the tool holder.
Regarding claim 2, the clamping element operating unit (24a+34a+26a) comprises a blocking element (24a) which is configured to “block” the clamping element (22a) “on” the housing (44a) in a rotationally fixed manner (when the blocking element 24a is) in a blocking position (i.e., when 24a is engaged with 22a), to prevent a common rotational movement of the tool holder (16a, or alternatively, 66a) and the clamping element (22a) (see paragraph 0028, for example), and to release the clamping element (22a) in a release position (i.e., when 24a is not engaged with 22a) to allow a common rotational movement of the (aforedescribed) tool holder and the (aforedescribed) clamping element. See Figures 2-3 and also at least paragraphs 0028-0029 and the translation of at least claims 1-3, for example.
Regarding claim 5, the clamping element operating unit (24a+34a+26a) comprises an actuating element (either the portion of 24a that is configured to be grasped by an end user to manually move 24a from the position shown in Figures 1 and 2 to the position shown in Figure 3 as described in paragraph 0028, or alternatively, the motor/actuator described in paragraph 0028 for actuating element 24a) configured to actuate the blocking element (24a) such that the blocking element (24a) is moved from the (aforedescribed) release position (shown in Figure 2) to the (aforedescribed) blocking position (shown in Figure 3).
Regarding claim 6, the clamping element operating unit (24a+34a+26a, and additionally including, re claim 6, 44a/46a/108a) comprises “contact protection”. See, for example, Figures 2-3, noting that there are a number of interpretations of the reference in which this limitation, as broadly recited, is met. For example, 108a is a safety switch that is designed to mechanically and/or electrically block a main switch of the machine tool 14a depending on a lack of actuation. See paragraph 0034. In particular, the safety switch 108a is actuated by the access element 46a, especially in a closed state of the housing unit 44a, shown in Figure 2. The safety switch 108a is free from actuation in a state of at least partial opening of the access element 46a of the housing unit 44a, i.e., when 46a is open, the safety switch 108a does not actuate, but when 46a is closed, safety switch 108a actuates to mechanically and/or electrically block actuation of a main switch of the machine tool 14a. See paragraphs 0034-0035. Thus, the (aforedescribed) clamping element operating unit “comprises”/has “contact protection” in that 44a/46a/108a provide protection regarding accidental contact with the main switch of the machine tool 14a, and/or provide protection for the electrical contacts of the main switch of the machine tool 14a. Alternatively, 46a/44a provide “protection” for the portions 26a/34a from “contact” with, for example, dust or other debris. See Figures 2-3.
Regarding claim 7 (as best understood in view of the above rejections based on 35 USC 112), the contact protection is “box-shaped” (see the enclosure/box “shape” formed by 44a/46a as shown in Figures 2-3) and has an internal space (i.e., the space within 44a/46a) in which “the” blocking element (such as 102a, which blocks 30a from dust; or such as 26a which “blocks”/locks rotation of 16a relative to 26a by virtue of the engagement of the polygonal shape of 30a when 30a engages with 28a as described above), the clamping element (22a), and “the” switch (108a) are arranged. See Figures 2-3.
Comment Regarding Non-Indication of Allowable Subject Matter
A thorough search has been conducted re the elected invention/claims. That being said, though no art rejections are considered to presently apply to claims 3-4, no indication regarding the allowability of the subject matter of elected claims 3-4 with respect to the prior art is being made at this time due to the rejection(s) thereof based on 35 USC 112(a) set forth above, particularly given that is unclear what changes to the claims might be necessary to overcome the above-described issues with respect to 35 USC 112(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, note that U.S. Pat. No. 6,350,087 to Berry et al. teaches a tool free actuation arrangement for actuation of a clamping element of a hand-held power tool.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA E CADUGAN whose telephone number is (571)272-4474. The examiner can normally be reached Monday-Thursday, 5:30 a.m. to 4:00 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICA E CADUGAN/Primary Examiner, Art Unit 3722
eec
August 4, 2026
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