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 24 February 2026.
Claims 1 – 8, 11 – 12, 14, 17 – 18 and 21 – 27 are pending. Claims 11 – 12 and 26 – 27 are withdrawn due to a restriction requirement. Claims 9 – 10, 13, 15 – 16, 19 – 20 are cancelled by applicant.
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.
Claim Rejections - 35 USC § 103
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 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 1 – 2, 17, 21, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Yew (US 2013/0199814 A1) in view of Arnold (US 5 233 891 A).
Regarding claim 1, Yew discloses a rotary impact tool comprising:
a housing (110, fig. 1);
an electric motor (114, fig. 1) supported in the housing;
an anvil (400, fig. 1) extending from the housing along an axis and configured to rotate about the axis;
an impact mechanism (200, fig. 1) for converting a continuous torque input from the motor to consecutive discrete applications of torque upon the anvil; and
a means (322, fig. 2) for biasing the anvil in a rotational direction about the axis,
wherein the means for biasing the anvil includes a biased ball (As shown in fig. 3).
Yew does not explicitly disclose the means for biasing the anvil includes a biased pin.
However, Arnold, which is reasonably pertinent to the problem faced by the inventor, teaches a biased pin which can be biased into engagement with another element (Figures 14A-E shows a spring-biased ball biased into engagement with an element P. Figures 15A-C shows a spring-biased pin as being functionally equivalent to the spring-biased ball and can be used in place of the spring-biased ball).
Because both the biased ball of Yew and the biased pin of Arnold function to be biased into engagement with another element, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the biased ball of Yew for the biased pin of Arnold to achieve the predictable result of being biased into engagement with another element (such as an anvil). Moreover, the one having ordinary skill in the art would be motivated to have substituted the biased ball of Yew for the biased pin of Arnold because installation of the spring-biased pin in a tool requires no special tools, unlike the spring-biased ball, and is simply inserted in the bore. Moreover, no ball exists which can be lost or propelled at the operator to cause injury during installation (Col. 1, l. 58 – col. 2, l. 17).
Regarding claim 2, Yew, as modified by Arnold, discloses the invention as recited in claim 1.
The modified Yew discloses the means for biasing the anvil includes a pin (Arnold – 12, fig. 1) is biased into engagement with the anvil.
Regarding claim 17, Yew discloses a rotary impact tool comprising:
a housing (110, fig. 1);
an electric motor (114, fig. 1) supported in the housing;
an anvil (400, fig. 1) extending from the housing along an axis and configured to rotate about the axis;
an impact mechanism (200, fig. 1) for converting a continuous torque input from the motor to consecutive discrete applications of torque upon the anvil;
wherein the anvil is biased in a rotational direction about the axis by a spring-biased ball (322, fig. 2) such that the anvil is configured to return an angular distance in the rotational direction after recoiling by the angular distance in an opposite rotational direction following a discrete application of torque by the impact mechanism (As shown in fig. 5).
Yew does not explicitly disclose a spring-biased pin.
However, Arnold, which is reasonably pertinent to the problem faced by the inventor, teaches a biased pin which can be biased into engagement with another element (Figures 14A-E shows a spring-biased ball biased into engagement with an element P. Figures 15A-C shows a spring-biased pin as being functionally equivalent to the spring-biased ball and can be used in place of the spring-biased ball).
Because both the biased ball of Yew and the biased pin of Arnold function to be biased into engagement with another element, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the biased ball of Yew for the biased pin of Arnold to achieve the predictable result of being biased into engagement with another element (such as an anvil). Moreover, the one having ordinary skill in the art would be motivated to have substituted the biased ball of Yew for the biased pin of Arnold because installation of the spring-biased pin in a tool requires no special tools, unlike the spring-biased ball, and is simply inserted in the bore. Moreover, no ball exists which can be lost or propelled at the operator to cause injury during installation (Col. 1, l. 58 – col. 2, l. 17).
Regarding claim 21, Yew, as modified by Arnold, discloses the invention as recited in claim 17.
The modified Yew discloses the pin (Arnold – 12, fig. 1) is biased into engagement with the anvil.
Regarding claim 25, Yew, as modified by Arnold, discloses the invention as recited in claim 17.
The modified Yew discloses the anvil (Yew – 400, fig. 1) includes an inclined surface (Yew – 410, fig. 2) oriented at an angle relative to a rear face of the anvil (Yew – Figure 2 shows surface 410 oriented 90 degrees relative to a rear face of the anvil 400), wherein the pin (Arnold – 12, fig. 1) is engageable with the inclined surface, and wherein engagement between the pin and the inclined surface imparts a moment on the anvil in the rotational direction about the axis (Yew – As shown in fig. 5).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yew (US 2013/0199814 A1) in view of Arnold (US 5 233 891 A) in further view of Seith (US 11 097 405 B2).
Regarding claim 14, Sasaki discloses the invention as recited in claim 1.
Yew discloses the anvil (400, fig. 1) includes a rearward extension (the portion of the anvil 400 within a housing 110, fig. 1).
Yew does not disclose the rotary impact tool further comprises a sensor configured to detect rotation of the rearward extension.
However, Seith, in the same field of endeavor, teaches an anvil (26, 28, fig. 1) with a rearward extension (the portion of the anvil 16 within a housing 4, fig. 1) and a sensor (36, fig. 1) configured to detect rotation of the rearward extension (Col. 5, II. 29 - 32).
Seith is evidence that having the anvil with the rearward extension and the sensor configured to detect rotation of the rearward extension was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the rotary impact tool of the modified Yew with the sensor configured to detect rotation of the rearward extension, as taught by Seith. Additionally, the one having ordinary skill in the art would have been motivated to modify the rotary impact tool of the modified Yew with the sensor configured to detect rotation of the rearward extension as well as the other components for the control method, as taught by Seith, in order to calculate the status of bolt torque during the fastening process wherein a controller can make a decision to stop a motor when a targeted torque has been reached.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Yew (US 2013/0199814 A1) in view of Arnold (US 5 233 891 A) in further view of Gaul (US 2017 0232589).
Regarding claim 18, Yew, as modified by Arnold, discloses the invention as recited in claim 17.
The modified Yew does not disclose a sensor configured to detect rotation of the anvil, wherein the sensor includes a Hall-effect sensor.
However, Gaul, in the same field of endeavor, teaches a sensor (39, fig. 2) configured to detect rotation of the anvil (27, fig. 2) ([0028], II. 1 - 5), wherein the sensor includes a Hall-effect sensor ([0028], II. 8 - 10).
Gaul is evidence that having the sensor configured to detect rotation of the anvil, wherein the sensor includes the Hall-effect sensor was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the rotary impact tool of the modified Yew with the Hall-effect sensor configured to detect rotation of the anvil, as taught by Gaul. Additionally, the one having ordinary skill in the art would have been motivated to modify the rotary impact tool of the modified Yew with the Hall-effect sensor configured to detect rotation of the anvil, as taught by Gaul, in order to optimize a setting process of a fastener such that the fastener in a workpiece can be subjected to a highest possible tensile force load.
Allowable Subject Matter
Claims 7 – 8 are allowed.
Claims 3 – 6 and 22 – 24 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.
Terminal Disclaimer
The terminal disclaimer filed on 24 February 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 12 053 862 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
The drawings received on 6 August 2024 are acceptable.
Applicant’s arguments, filed 24 February 2026, with respect to the objections to the Specifications have been fully considered and are persuasive. The objections to the Specifications have been withdrawn.
Applicant’s amendments and arguments, filed 24 February 2026, with respect to the rejections of claims 15 – 16 under 35 USC 112(b) have been fully considered and are persuasive. The rejections of claims 15 – 16 under 35 USC 112(b) has been withdrawn.
Applicant’s amendments and arguments, filed 24 February 2026, with respect to the rejections of claims 1 and 17 under 35 USC 103(b) have been fully considered and are persuasive. The rejections have been withdrawn. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Yew and Arnold.
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 extension fee 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 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
31 May 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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