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 .
Status of Claims
This office action is in response to Applicant’s Amendment/Request for Reconsideration filed on 21 May 2026.
Claims 1, 3, 7 – 17, and 19 – 26 are pending. Claims 2 and 4 – 6 are cancelled.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3 June 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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) 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) 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) because the claim limitations 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 is:
“an isolation member” in claims 1 and 12. Please note, the claim limitation, “an isolation member”, uses a term, “member”, used as a substitute for “means” that is a generic placeholder for performing the claimed function and the term, “member”, is modified by the functional language, “selectively receive a battery pack to electrically connect the battery pack to the electric motor”. While the claim recites the isolation member having the structure of a damper post (claim 1) or an opposed posts (claim 12), the structure of the damper post does not perform the claimed function of selectively receiving the battery pack to electrically connect the battery pack to the electric motor. Thus, the term, “an isolation member”, is not modified by sufficient structure, material, or acts for performing the claimed function of selectively receiving the battery pack to electrically connect the battery pack to the electric motor.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f), it is 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), applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 13 – 17 and 20 – 25 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed had possession of the claimed invention.
Regarding claim 21, the limitation, “the isolation member defines an insertion axis that extends parallel to the pair of sidewalls and through the end wall”, fails to comply with the written description requirement because the limitation amended to the claims after the filing of the original disclosure constitutes new matter. Neither the written description nor the drawings disclose a insertion axis that extends parallel to the pair of sidewalls and through the end wall. Therefore, the limitation 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 at the time the application was filed had possession of the claimed invention. Since claims 13 – 17 and 20 – 25 depends upon claim 21, claims 13 – 17 and 20 – 25 are also rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to 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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 12 – 17 and 19 – 22 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Thorson (US 2014/0326477 A1).
(The claims are listed in order of dependency – not numerical order)
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Regarding claim 12, Thorson discloses an impact tool comprising:
an electric motor (18, fig. 2);
a housing (14, fig. 2) containing the electric motor; and
an isolation member (70, fig. 5) movably positioned within the housing ([0021] describes isolation system 70 is configured to allow the housing 14 to move in six degrees of freedom (i.e., forward-backward, up-down, and side-to-side) relative to the battery pack 30 thus, conversely, the isolation system 70 is also movable relative to housing 14) and configured to selectively and detachably couple to a battery pack (via rails 86) to electrically connect the battery pack to the electric motor (via terminal block 82), the isolation member including a pair of sidewalls (110A, 110B, fig. 6), a top wall (118, fig. 6), and an end wall (end wall A, annotated fig. 5), wherein the pair of sidewalls, the top wall, and the end wall define a cavity (cavity B, annotated fig. 5) configured to receive a connecting structure of the battery pack ([0028]), and an elastomeric damper (78C, annotated fig. 5) positioned between the housing and the end wall (Annotated fig. 5 shows an isolator 78C between a battery support portion 42 of a housing 14 and the end wall A as shown by the dotted line).
Regarding claim 19, Thorson discloses the top wall (118, fig. 6) defines an aperture, and wherein the power tool further includes a terminal block (82, fig. 5) that extends through the aperture to reside within the cavity (cavity B, annotated fig. 5) (Figures 5, 6 shows a terminal block 82 within a top wall 118 of an interface member. [0027] describes a terminal bock 82 as a separate piece from the interface member 74 of the isolation member implying that a top wall 118 of the interface member 74 has an aperture that contains and supports the terminal block 82).
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Regarding claim 21, Thorson discloses the isolation member (70, fig. 5) defines an insertion axis (axis D, annotated fig. 5 – for inserting a battery) that extends parallel to the pair of sidewalls (110A, 110B, fig. 6) and through the end wall (end wall A annotated fig. 5).
Regarding claim 22, Thorson disclose the elastomeric damper (78C, annotated fig. 5) is a first elastomeric damper (78C, annotated fig. 5), and further comprising a second elastomeric damper (78E, annotated fig. 5) positioned between the housing and the isolation member, wherein the second elastomeric damper is spaced apart from the first elastomeric damper along the insertion axis (axis D, annotated fig. 5) (As shown in annotated fig. 5).
Regarding claim 17, Thorson discloses the isolation member (70, fig. 5) includes a central ridge (114, fig. 5) protrudes from the top wall (118, fig. 6), and wherein the central ridge supports the second elastomeric damper (78E, annotated fig. 5) and a third elastomeric damper (78F, annotated fig. 5).
Regarding claim 13, Thorson discloses the housing (14, fig. 2) defines a first damper pocket (106, fig. 5 – specifically the opening 106 that corresponds to the isolator 78C) that receive the first elastomeric damper (78C, annotated fig. 5) and a second damper pocket (106, fig. 5 – specifically the opening 106 that corresponds to the isolator 78E) that receives the second elastomeric damper (78E, annotated fig. 5).
Regarding claim 14, Thorson discloses each of the first elastomeric damper (78C, annotated fig. 5) and the second elastomeric damper (78E, annotated fig. 5) is disposed between one of a post (98, 102, fig. 5 – specifically posts 98, 102 that correspond to the isolators 78C, 78E) and the first damper pocket (106, fig. 5 – specifically the opening 106 that corresponds to the isolator 78C) and the second damper pocket (106, fig. 5 – specifically the opening 106 that corresponds to the isolator 78E), respectively.
Regarding claim 15, Thorson discloses the first elastomeric damper (78C, annotated fig. 5) and the second elastomeric damper (78E, annotated fig. 5) are cylindrical in shape (As shown in figures 5 – 7), such that the first elastomeric damper and the second elastomeric damper completely surround each post ((98, 102, fig. 5 – specifically posts 98, 102 that correspond to the isolators 78C, 78E) (As shown in fig. 6).
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[AltContent: textbox (X)][AltContent: textbox (X)][AltContent: textbox (Y)][AltContent: textbox (Y)][AltContent: textbox (Thorson (US 2014/0326477 A1)
Annotated figs. 6 and 7)]
Regarding claim 16, Thorson discloses the first elastomeric damper (78C, annotated fig. 5) and the second elastomeric damper (78E, annotated fig. 5) define a distal end (end Y, annotated fig. 6, 7) that is opposite the open end (end I, annotated fig. 6, 7), wherein the distal end of each of the first elastomeric damper and the second elastomeric damper extend beyond the posts (98, 102, fig. 5 – specifically posts 98, 102 that correspond to the isolators 78C, 78E) (As shown fig. 6).
Regarding claim 20, Thorson discloses the first elastomeric damper (78C, annotated fig. 5) and the second elastomeric damper (78E, annotated fig. 5) are configured to attenuate transmission of vibrations from the housing to the battery pack along three orthogonal directions ([0021] describes the isolation system 70 being configured to allow the isolation member 70 having an attached battery pack to move in six degrees of freedom (i.e., forward-backward, up-down, and side-to-side) relative to a housing 14 such that certain frequencies of vibrations of the housing 14 are not transferred to the battery pack 30. This implies the isolators 78 of the isolation system 70 attenuates relative motion between the housing 14 and the battery receptacle along three orthogonal directions (forward-backward, up-down, side-to-side)).
Allowable Subject Matter
Claims 1, 3, 7 – 11 and 26 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding independent claim 1: the subject matter of the power tool is allowable over the prior art because of the arrangement of the combination of structural limitations set forth in the claim and their functional relationship to one another. Dependent claims 3, 7 – 11 and 26 are also allowable over the prior art as they depend from allowable claim 1.
Claim 1 includes the following limitations which, in combination with the other limitations of claim 1, are what make the subject matter allowable over the prior art, as the subject matter of claim 1 is neither taught or suggested by the prior art:
“the isolation member further includes a second central ridge protruding from the end wall, a third damper post, and a fourth damper post, wherein the third damper post and the fourth damper post project laterally outward in opposite directions from the second central ridge”
The closest prior art is Thorson. Thorson does not disclose the second central ridge protruding from the end wall, the third damper post, and the fourth damper post, wherein the third damper post and the fourth damper post project laterally outward in opposite directions from the second central ridge. Please note, Thorson does disclose a first central ridge protruding from the top wall having the first damper post and the second damper post project laterally outward in opposite directions from the first central ridge. While case law indicates it is common practice to duplicate parts, such as the central ridge in Thorson (In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)) and then the rearranging this duplicated part, such as on the end wall of the isolation member of Thorson (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)), a skilled artisan would have to include knowledge gleaned only from the applicant's disclosure to modify the prior art as described above to produce the claimed subject matter, and thus such a modification would not be proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Additionally, the prior art of record does not anticipate or render obvious this limitation. Thus, it is examiner's opinion that it would not have been obvious to one having ordinary skill in the art at the time of the invention to combine or modify the prior art in order to arrive at applicant's invention as claimed.
The examiner reserves judgement on the determination of allowability of dependent claims 23 – 25 until the resolution of the rejection of claims 13 – 17 and 20 – 25 under 35 USC 112(a) for failing to comply with the written description requirement.
A message was left with applicant’s representative, Attorney Katherine Lyons, to offer an Examiner’s Amendment to allow claims 1, 3, 7 – 11 and 26 and cancel claims 12 – 17 and 19 – 25 on 23 July 2026. No response to this message was received.
Response to Arguments
Applicant’s amendments and arguments, filed 21 May 2026, with respect to the rejection of claim 12 under 35 USC 102(a)(1) and 35 USC 102(a)(2) have been fully considered but are not persuasive. The applicant argues:
Independent claim 12 is directed to a power tool and is amended to recite an isolation member movably positioned within the housing and configured to selectively and detachably couple to a battery pack to electrically connect the battery pack to the electric motor. The isolation member includes a pair of sidewalls, a top wall, and an end wall. The pair of sidewalls, the top wall, and the end wall define a cavity configured to receive a connecting structure of the battery pack. An elastomeric damper is positioned between the housing and the end wall.
Thorson discloses an isolation system 70 including an interface member 74 and isolators 82. The isolators 78 are positioned on posts 98, 102 that extend from the interface member 74 and are received in openings 106 formed in the housing 14. The illustrated interface member 74 includes six posts 98 extending from opposing sidewalls HOA, 110B of the member 74, with three posts 98 extending from each sidewall 110A, 110B. The interface member 74 also includes an upper projection 114 from which two additional posts 102 extend.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they do not specifically point out how the language of the claims patentably distinguishes them from the Thorson reference. The applicant states how independent claim 12 has been amended and then states the structure of the power tool of Thorson. However, the applicant does not state how this amended claim 12 overcomes the rejection of claim 12 recited in the Office action filed 24 February 2026.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID G SHUTTY whose telephone number is (571)272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SHELLEY SELF can be reached on 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID G SHUTTY/Examiner, Art Unit 3731
24 July 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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