DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5-8, 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-13 of U.S. Patent No. 12,059,792. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same power tool see the table below for equivalent claim language between the patent and the application.
Instant Application Claims
U.S. 12,059,792 Claim
1
5,10
5
5,10
6
10
7
6,7,8
8
10
16
5,10
17
5, 10, 11
18
6
19
12
20
9
Allowable Subject Matter
The claims are free of art rejections.
Claims 2-4 and 9 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.
The following is a statement of reasons for the indication of allowable subject matter: the claims include the same allowable subject matter from parent application 17/056,589. upon further examination of the art of record it has been decided that the prior art neither anticipates nor renders obvious the claimed method and tool for controlling an operating mode of a power tool, the method comprising: operating, by a motor controller, a motor of the power tool in a first operating mode; receiving, by the motor controller, a first input associated with a position of a forward- reverse selector of the power tool; receiving, by the motor controller, a second input associated with the position of the forward-reverse selector of the power tool; determining, by the motor controller, whether the receipt of the first input and the second input occurred within a predetermined time period; determining, based on detection of the first input and the second input occurring within the predetermined time period, whether a combination of the first input and the second input corresponds to a request to modify a parameter of the power tool; and modifying the parameter of the power tool in response to determining the combination of the first input and the second input corresponds to a request to modify the parameter of the power tool; wherein the forward-reverse selector is selectable from at least a forward position and a reverse position, and wherein the first input and the second input are associated with the forward- reverse selector transitioning from a first position to a second position, wherein at least one of the first position and the second position is separate from the forward position and the reverse position and the first position and the second position are separate physical positions of the forward- reverse selector. The prior art fails to distinctly disclose or suggest a forward-reverse selector having two distinct positions wherein the controller determines movement from a first position to a second position within a predetermined amount of time such that the tool is placed in a mode for modifying the parameter of the tool as claimed in claim 1. Or wherein the forward-reverse selector includes three positions a forward position and reverse position and a mode selection position separate from the forward and reverse position for receiving a signal and changing the mode of the tool if the selector is in the mode selection position. As claimed in claim 7 and 21.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCAS E A PALMER whose telephone number is (303)297-4779. The examiner can normally be reached Monday -Thursday 8am-6pm PT.
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/Lucas E. A. Palmer/Primary Examiner, Art Unit 3731