DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to file provisions. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Application Status
This office action is in response to applicant’s response to election/restriction filed 1/20/2026.
Applicant’s election of Group I without traverse in the remarks filed 1/20/2026 is acknowledged. In light of the new amendments, the restriction requirement is withdrawn and all claims are being examined.
Claims 51-58, 60, 63-70 are currently pending and being examined.
Information Disclosure Statement
The IDS filed on 6/18/2024 has been considered. See the attached PTO 1449 forms.
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 58, 60, and 63-70 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 pre-AIA the applicant regards as the invention.
Regarding claim 58:
Claim 58 recites “a camshaft” which is indefinite because independent claim 51 already introduced a camshaft, making it unclear if the claim 58 camshaft is a different camshaft from the one introduced in claim 51. For examination purposes, the limitation is interpreted as “the camshaft” (introduced in claim 51).
Claims dependent on claim 58 are therefore also rejected as being dependent on a rejected claim.
Regarding claim 70:
Claim 70 is an identical duplicate of claim 51, rendering claim 70 indefinite and redundant.
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 51-52, 54, 58, 60, 68, and 70 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seko et al. US 2021/0301977.
Regarding claims 51 and 70:
Seko teaches a power tool (1) comprising: a housing (2) including a first portion and a second portion coupled together at a seam (seam unnumbered but shown in FIG. 1 vertically bisecting first and second housing half portions), and an end cap (FIG. 2, portion that numeral 1 is touching) coupled to the first and second portions; a motor (3) mounted within a motor housing portion (e.g., 320) of the housing defined by the first portion and the second portion, the motor including a shaft (311) configured to rotate about an axis; a gear assembly (48) operably coupled to the motor, the gear assembly including a ring gear (483) fixed relative to the housing and a plurality of planet gears (482) meshed with the ring gear; a drive assembly (4) operably coupled to the gear assembly to receive torque from the shaft through the gear assembly, the drive assembly including a camshaft (41), an anvil (45), and a hammer (42) configured to reciprocate along the camshaft to impart rotational impacts to the anvil in response to rotation of the camshaft; an impact case (62) coupled to the housing opposite the end cap; and an intermediate housing (61) disposed between the ring gear and the impact case, such that the ring gear, the impact case, and the intermediate housing at least partially define a sealed chamber (FIG. 3, region bounded by 483, 61, 62) containing the gear assembly and the drive assembly.
Regarding claim 52:
Seko teaches the power tool of claim 51, as discussed above, wherein the housing includes a dividing wall (611-612) extending between the motor and the gear assembly, wherein the shaft extends through an opening in the dividing wall ([0054] last sentence), and wherein the ring gear is seated against the dividing wall (shown in FIG. 3).
Regarding claim 54:
Seko teaches the power tool of claim 51, as discussed above, wherein the ring gear includes a toothed portion (shown in FIG. 3 where numeral 48 is touching) and a flange portion (see rear portion of 483) extending from the toothed portion, and wherein the flange portion rotatably supports the camshaft (i.e., supported via the ring gear and associated geartrain).
Regarding claim 58:
Seko teaches the power tool of claim 51, as discussed above, wherein the motor includes a stator (32) having a plurality of windings ([0034]) and a rotor (31) including: the shaft (311), wherein the stator defines an outer diameter; [the] camshaft (41), wherein the power tool further comprises a rear bearing (54) rotatably supporting a rearward portion of the shaft; and a forward bearing (53) rotatably supporting a forward portion of the shaft, wherein a distance measured between a front edge of the rear bearing and a rear edge of the forward bearing is less than the outer diameter of the stator (can be verified in FIG. 2).
Regarding claim 60:
Seko teaches the power tool of claim 58, as discussed above, wherein the motor housing portion directly supports the stator (shown in FIG. 2).
Regarding claim 68:
Seko teaches the power tool of claim 58, as discussed above, wherein the housing includes a battery receptacle (below 23), and wherein the power tool further comprises a battery (9) removably coupled to the battery receptacle (see FIG. 1) and configured to provide power to the motor.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 53 and 63 are rejected under 35 U.S.C. 103 as being unpatentable over Seko, as applied above, and further in view of Tadokoro et al. US 2008/0025017.
Regarding claim 53:
Seko teaches the power tool of claim 51, as discussed above, but does not teach further comprising a lighting assembly including a cap coupled to a front end of the impact case opposite the intermediate housing and a plurality of LEDs.
Tadokoro discloses a lighting assembly (60) including a cap (21A) coupled to a front end of the impact case and at least one LED (62).
It would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the tool or Seko by providing the impact case with a lighting assembly including a cap coupled to a front end of the impact case opposite the intermediate housing, as taught by Tadokoro, since this would allow the tool to be used when external lighting is limited, and to include a plurality of LEDs for additional lighting, as it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (see MPEP 2144.04 VI. B.).
Regarding claim 63:
Seko teaches the power tool of claim 58, as discussed above, but does not teach wherein the rear bearing is supported by the end cap.
Tadokoro discloses a related power tool wherein, “[o]ptionally, the rear bearing is supported by the end cap” ([0009], envisaged in FIG. 2).
It would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the tool of Seko, by having the rear bearing is supported by a removable end cap, since Tadokoro discloses such an arrangement as an alternative, which a user may find useful for accessing the shaft and motor from the rear end cap for maintenance purposes.
Claim 55 is rejected under 35 U.S.C. 103 as being unpatentable over Seko, as applied above.
Regarding claim 55:
Seko teaches the power tool of claim 51, as discussed above, but does not explicitly teach wherein the housing and the impact case are coupled together by one or more fasteners each received in an insert fixed within the housing and formed of a metal material.
However, Examiner takes official notice that coupling housings via one or more fasteners (e.g., screws, which Seko shows unnumbered in FIGS. 1 and 2) each received in a metallic insert fixed within one of the housings is old and well-known in the art for providing a strong and secure attachment, and it would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the tool of Seko by providing such fastening means for those reasons.
Claim 64 is rejected under 35 U.S.C. 103 as being unpatentable over Seko, as applied above, and further in view of Anthony, III US 5,269,733.
Regarding claim 64:
Seko teaches the power tool of claim 58, as discussed above, wherein the first and second housing portions define a slot, and wherein the ring gear is supported within the slot.
Anthony discloses a related power tool wherein “lugs 41 of the ring gear 31 are adapted to fit between the end surfaces 12a and 13a of the front and rear housings 12 and 13 and be secured thereto by the screws 19 which are respectively received through the slots 43 (see FIG. 9). Thus, it will be appreciated that the ring gear 31 is fixedly secured to both the motor 20 and to the tool housing assembly 11.” (col. 3, lines 45-51)
It would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the tool of Seko, by having the first and second housing portions define a slot, and wherein the ring gear is supported within the slot., as suggested by Anthony, which since this would provide sufficient support for the ring gear.
Claim 67 is rejected under 35 U.S.C. 103 as being unpatentable over Seko, as applied above, and further in view of Duncan et al. US 2020/0215668.
Regarding claim 67:
Seko teaches the power tool of claim 58, as discussed above, but does not teach wherein the outer diameter of the stator is 50 mm to 70 mm.
Duncan discloses a related power tool wherein “[t]he stator 76 has a nominal diameter of at least 60 mm” ([0043]).
It would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the tool of Seko, by having the outer diameter of the stator between 50 mm to 70 mm, such as the 60 mm disclosed by Duncan, since this appears to be an appropriate size for similar impact tools.
Claim 69 is rejected under 35 U.S.C. 103 as being unpatentable over Seko, as applied above, and further in view of Fischer et al. US 2021/0237249.
Regarding claim 69:
Seko teaches the power tool of claim 68, as discussed above, but does not teach wherein the battery receptacle includes an elastomeric element engageable with the battery when the battery is coupled to the power tool.
Fischer discloses a related tool teaching “[t]he battery receptacle also includes an elastomeric damper supported within the housing. During operation of the impact tool, the isolation member is configured to translate relative to the housing and impact the elastomeric damper which, in turn, is configured to attenuate the transmission of vibration from the housing to the battery pack.” (abstract).
It would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the tool of Seko, by providing the battery receptacle with an elastomeric element engageable with the battery when the battery is coupled to the power tool, as taught by Fischer, since this can help dampen vibrations of the tool when in use.
Allowable Subject Matter
Claims 56 and 57 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 65 and 66 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an Examiner’s statement of reasons for allowance of claims 56, 57, 65, and 66: the prior art does not disclose the ring gear (i.e., the ring gear itself) having a portion supporting the forward bearing or camshaft; and such a modification to Seko would necessarily eliminate the claimed intermediate housing required in independent claim 51.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARIUSH SEIF whose telephone number is (408)918-7542. The examiner can normally be reached Monday-Friday 9:30 AM-6:00 PM PST.
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/DARIUSH SEIF/Primary Examiner, Art Unit 3731