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 .
Application Status
This action is responsive to the claims filed 20 November 2025.
Claims 1-8 and 10-20 are currently pending and being examined.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim 7 and dependents are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-12 of U.S. Patent No. 12,059,777. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations of the patent reads on currently filed claims of this application. As shown in the table below, differences in language are underlined, explained below.
Present Application – Claim 7
US 12,059,777
A rotary power tool comprising:
a gear case;
an output shaft extending from the gear case;
a drive mechanism configured to provide torque to the output shaft, causing the output shaft to rotate;
a clutch mechanism between the output shaft and the drive mechanism, the clutch mechanism configured to limit the amount of torque provided by the output shaft, the clutch mechanism including a compression spring;
A rotary power tool comprising:
a gear case;
an output shaft extending from the gear case;
a drive mechanism configured to provide torque to the output shaft, causing the output shaft to rotate;
a clutch mechanism between the output shaft and the drive mechanism, the clutch mechanism configured to limit the amount of torque provided by the output shaft, the clutch mechanism including a compression spring; [claim 10]
a clutch adjustment assembly including a collar configured to be grasped and rotated by a user to adjust a length of the compression spring
the clutch adjustment assembly includes a collar disposed circumferentially around the neck portion of the gear case and a nut threadably coupled to the neck portion of the gear case, wherein the nut co-rotates with the collar to adjust the compressed length of the compression spring [claim11]
a lockout feature adjustable between a lockout state, in which adjustment of the length of the compression spring by the clutch adjustment assembly is prevented, and a release state, in which adjustment of the length of the compression spring by the clutch adjustment assembly is permitted
a lockout feature adjustable between a lockout state, in which adjustment of the compressed length of the compression spring by the clutch adjustment assembly is prevented, and a release state, in which adjustment of the compressed length of the compression spring by the clutch adjustment assembly is permitted [claim 10]
wherein the lockout feature mechanically interferes with the collar to inhibit rotational movement of the collar relative to the gear case.
wherein the lockout feature mechanically interferes with the collar so that the collar is no longer capable of rotating relative to the gear case [claim 12]
As shown in the table above, the difference in language, which is underlined, does not differentiate from the patent because the limitation of the collar being configured to be grasped by a user is intended use, which the patent is capable of. In regard to the last clause, the langue of “inhibit rotational movement” is synonymous to “no longer capable rotating relative”, therefore the parent application reads on the current claim limitations.
Allowable Subject Matter
Claims 1-6 and 14-20 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding independent claims 1 and 14: the subject matter of the rotary 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 2-6 and 15-20 are also allowable over the prior art as they depend from allowable claims 1 and 14.
Claims 1 and 14 includes the following limitations which, in combination with the other limitations of claims 1 and 14, are what make the subject matter allowable over the prior art, as the subject matter of claims 1 and 14 is neither taught or suggested by the prior art:
Claim 1: “a clutch mechanism between the output shaft and the drive mechanism, the clutch mechanism configured to limit the amount of torque provided by the output shaft, the clutch mechanism including a compression spring positioned around the output shaft and a conductive target engaged with the compression spring; wherein the conductive target includes a narrow portion extending toward the inductive sensor.”
Claim 14: “a clutch adjustment assembly configured to change the length of the compression spring by moving the second plate relative to the compression spring; an inductive sensor proximate the compression spring such that a voltage is induced in the inductive sensor in response to a change in the length of the compression spring relative to a magnetic field emitted by the inductive sensor, wherein the compression spring is disposed circumferentially around the inductive sensor.”
The prior art of record that comes closest to teaching the limitations is JP2019066365A teaches a rotary tool comprising: a gear case, output shaft, drive mechanism, a clutch mechanism including a compression spring positioned around the output shaft, a clutch assembly having a collar rotatable to adjust a length of the compression spring, an inductive sensor disposed within the collar and proximate the compression spring, and an electronic control unit configured to receive an output signal from the inductive sensor indicative of the change in inductance in the inductive sensor and to determine a parameter of the clutch mechanism based on the output signal.
The prior art is silent in regard to “the clutch mechanism including a compression spring positioned around the output shaft and a conductive target engaged with the compression spring; wherein the conductive target includes a narrow portion extending toward the inductive sensor” and “the compression spring is disposed circumferentially around the inductive sensor”.
Therefore, the combination set forth in the claims are not discussed, taught, or suggested in the prior art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments with respect to claim(s) 7 and dependents have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 KATIE L GERTH whose telephone number is (303)297-4602. The examiner can normally be reached Monday-Thursday 9am-4pm (CT).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at (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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/KATIE L GERTH/Examiner, Art Unit 3731
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731