CTFR 18/799,556 CTFR 93993 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Response to Arguments Applicant's arguments regarding claim 16 have been fully considered but they are not persuasive. The reasoning stated in the Non-Final action is sufficient to uphold these rejections/objection. Furthermore, the Examiner must also note the ease with which the rejections/objection could be overcome by the very minor alteration of the claim language. Regarding the arguments to claim 1, the Examiner notes that 1) the differences between the way the Application and the prior art “collectively define both the motor housing and the handle housing portion” are not relevant to the argument beyond that which is claimed. Accordingly, the prior art meets the claim limitations. 2) Applicant argues that Nakashima lacks a coupling mechanism “positioned within the motor housing portion”. The Examiner notes that all parts of the motor housing portion are considered, and the flanges which house the bolts are “within” the motor housing portion. Regarding the arguments to claim 8, the Examiner notes that these features are in fact discussed in claim 5 (although called the coupling mechanism in claim 1 instead of the screw boss of claim 8, both of which are cited in Nakashima as items 14 ribs, 15 rear bosses and 16 front bosses in the primary citation in claim 1). While this claim limitation is obvious from the drawings, the Examiner would further note that the specific language in the specification further supports this feature - the cited ring gear, 92, is Col. 7, line 9, “an internal gear 92 held inside the gear case 13”. As seen in the figures, front boss 16 is forward of the ring gear located in 13, and therefore between the ring gear and the hammer. Finally, the current application is clear that the screw boss and coupling mechanism are in fact materially the same – [0037], “As such, the coupling mechanism may be a screw boss 158” and [0038], “a plurality of handle coupling mechanisms, such as a plurality of handle screw bosses 168, for coupling the clamshell halves 28a, 28b (FIG. 1) together to form the handle housing portion 26”. Drawings 06-36 AIA The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the Claim 16 – “the bore of the screw boss and the motor are positioned such that a line can be drawn parallel to the axis and through both the bore of the screw boss and the motor.” - please see below 112A and 112B rejections for further clarification of the objection; must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Claim Rejections - 35 USC § 112 07-30-01 AIA 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. 07-31-01 Claims 16 and all subsequent dependent claims 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 16 , the claim limitation “the bore of the screw boss and the motor are positioned such that a line can be drawn parallel to the axis and through both the bore of the screw boss and the motor.” Is not found within the specification or drawings and therefore represents a written description violation. First, the bore of the screw boss runs perpendicular to the claimed axis. As such, a line CANNOT be drawn parallel to both the axis and the screw bore. Second, even assuming arguendo that the bore of the screw boss did run parallel to the axis, the bore of the motor exists at the height level of line 54, as shown in Figs. 3A-5. Finally, assuming arguendo that the screw boss was parallel, and that the entirety of the motor was claimed as where the line could pass through, as seen in Fig. 3A, the cited Line “L1” actually passes at the top of the stator, rather than through the motor. 07-30-02 AIA 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 16 and all subsequent dependent claims 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. Regarding claim 16 , the claim limitation “the bore of the screw boss and the motor are positioned such that a line can be drawn parallel to the axis and through both the bore of the screw boss and the motor.” renders the claim indefinite, as it is unclear as to the metes and bounds of the claim limitation. First, it is unclear what a line passing through the” bore of the screw” means. The most common interpretation would mean that a line through the bore would follow the lengthwise direction of the bore, which in this case would run perpendicular to the cited axis. As an example of the confusion, if someone told you to go through the Holland Tunnel (or any other driving tunnel of the readers choice), one would expect to enter at the beginning of the tunnel in New Jersey and exit the tunnel in Manhattan. It would NOT be expected to pass through the tunnel in a perpendicular fashion. Second, the limitation “ through both the bore of the screw boss and the motor” it is unclear as to whether the “bore” applies only to the screw bore or to both the screw and the motor bore. It makes more sense to read the limitation as the line passing through the bore of the motor (as opposed to the entirety of the motor), as it is impossible to determine where the line would be if it can pass through the motor as a whole, while it is clear exactly where the line would be if passing through the bore of the motor. In the interest of compact prosecution, the Examiner will include citations in the below rejection that have similar placement of the motor, ring gear, and screw bosses. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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 1-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Nakashima, US 11453109. Regarding claim 1 , Nakashima discloses: A power tool (Fig. 1, power tool 1) comprising: a housing (Fig. 1, body 2 including body housing 7 (half housings 7a and 7b) and hammer case 9 and handle 3) including a first housing portion (Fig. 1, body 2 including body housing 7) and a second housing portion (Fig. 1, hammer case 9) , the first housing portion and the second housing portion collectively defining a motor housing portion and a handle housing portion; a motor (Fig. 2, motor 2) supported within the motor housing portion, the motor including an output shaft (Figs. 2,3, shaft 70) defining an axis (Col. 6, line 8, “The rotor 61 includes a rotational shaft 70 aligned with its axis”) ; a battery (Fig. 1, battery pack 6) removably coupled to the handle housing portion to provide power to the motor; and a coupling mechanism (Figs. 1, 13, gear case 13, specifically Col. 3, lines 26-41, “The body housing 7 contains a metal gear case 13 behind the hammer case 9. The gear case 13 protrudes rearward, and is fitted with a rear end of the hammer case 9. The gear case 13 has four ribs 14 circumferentially protruding at upper-right, upper-left, lower-right, and lower-left positions on its outer periphery. Behind the ribs 14, rear bosses 15 are located on the outer periphery of the front end of the body housing 7. In front of the ribs 14, front bosses 16 are located on the outer periphery of the rear end of the hammer case 9. As shown in FIGS. 1 and 4, the front bosses 16 receive bolts 17 screwed from the rear through the rear bosses 15 and the ribs 14, fastening the body housing 7, the gear case 13, and the hammer case 9 together. In this manner, the metal hammer case 9 receives the bolts 17, which firmly join the body housing 7 and the hammer case 9 together and improve durability.”; Col. 3, line 23, “The body housing 7 is assembled by fastening a pair of right and left half housings 7a and 7b with screws 12 extending in right-left direction”) positioned within the motor housing portion to couple the first housing portion and the second housing portion together. Regarding claim 2 , Nakashima further discloses: the coupling mechanism (Figs. 1, 13, gear case 13, specifically Col. 3, lines 26-41) includes a screw boss (Figs. 1-14b, ribs 14) extending through both the first housing portion and the second housing portion (Fig. 1, bosses 15, 16) , the screw boss configured to receive a fastener (Figs. 9-14b, bolts 17) for securing the first housing portion and the second housing portion together (Col. 3, lines 26-41) . Regarding claim 3 , Nakashima further discloses: the screw boss (Fig. 1, bosses 15, 16) includes an opening formed in one of the first housing portion (Fig. 1, body 2 including body housing 7) or the second housing portion (Fig. 1, hammer case 9) and an enclosed receptacle formed in the other of the first housing portion or the second housing portion (see Fig. 1) . Regarding claim 4 , Nakashima further discloses: the first housing portion (Fig. 1, body 2 including body housing 7) includes a first coupling protrusion (Fig. 1, boss 15) , and the second housing portion (Fig. 1, hammer case 9) includes a second coupling protrusion (Fig. 1, boss 16) , and wherein the coupling mechanism (Figs. 1, 13, gear case 13, specifically Col. 3, lines 26-41) includes a clip (Fig. 1, bolts 17) that is configured to apply a biasing force on each of the first coupling protrusion and the second coupling protrusion in the direction of the other of the first coupling protrusion and the second coupling protrusion to clamp the first coupling protrusion and the second coupling protrusion together, thereby coupling the first housing portion and the second housing portion together mechanism (Col. 3, lines 26-41) . Regarding claim 5, Nakashima further discloses: a gear assembly (Figs. 1-14b, sun gear 76, planetary gears 82 and 83) driven by the output shaft (Figs. 2,3, shaft 70) ; and an impact mechanism (Figs. 1-14b, hammer 100) driven by the gear assembly, the impact mechanism configured to apply periodic rotational impacts to a workpiece (Figs. 1-14b, anvil 4) , wherein the gear assembly includes a ring gear (Figs. 1-14b, internal gear 92) , wherein the impact mechanism includes a hammer (Figs. 1-14b, hammer 100) , and wherein the coupling mechanism is disposed axially between the ring gear and the hammer (see Fig. 12) . Regarding claim 6, Nakashima further discloses: a plurality of handle coupling mechanisms (see Figs. 1-14b, screws 12 are located in both the handle portion of the device as well as in the motor housing region) located within the handle housing portion and configured to couple the first housing portion and the second housing portion together, and wherein each of the plurality of handle coupling mechanism is positioned on a side of the axis (Col. 6, line 8, “The rotor 61 includes a rotational shaft 70 aligned with its axis”) opposite from the coupling mechanism positioned within the motor housing portion. Regarding claim 7 , Nakashima further discloses: comprising an interlocking mechanism having a protrusion formed on one of the first housing portion and the second housing portion and an elongated slot formed in the other of the first housing portion and the second housing portion, and wherein the elongated slot is configured to receive the protrusion to align the first housing portion and the second housing portion (see Examiner Illustration 1). PNG media_image1.png 288 778 media_image1.png Greyscale Examiner Illustration 1 Regarding claim 8-20 , upon intense scrutiny, the Examiner has determined that the claimed features are materially identical to those claimed in claims 1-7. As such, the claim citations are hereby incorporated by reference. Conclusion 07-39 AIA THIS ACTION IS MADE FINAL. 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 DANIEL JEREMY LEEDS whose telephone number is (571)272-2095. The examiner can normally be reached Mon-Thurs, 0730-1730. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at 571-270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /DANIEL JEREMY LEEDS/Primary Examiner, Art Unit 3731 Application/Control Number: 18/799,556 Page 2 Art Unit: 3731 Application/Control Number: 18/799,556 Page 3 Art Unit: 3731 Application/Control Number: 18/799,556 Page 4 Art Unit: 3731 Application/Control Number: 18/799,556 Page 5 Art Unit: 3731 Application/Control Number: 18/799,556 Page 6 Art Unit: 3731 Application/Control Number: 18/799,556 Page 7 Art Unit: 3731 Application/Control Number: 18/799,556 Page 8 Art Unit: 3731
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