Prosecution Insights
Last updated: October 02, 2026
Application No. 18/807,366

POWER TOOL WITH SENSOR BOARD HAVING INDICATOR

Final Rejection §103
Filed
Aug 16, 2024
Priority
Aug 17, 2023 — provisional 63/520,223
Examiner
SETZER, NICHOLAS LEE
Art Unit
2834
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
MILWAUKEE ELECTRIC TOOL Corporation
OA Round
2 (Final)
68%
Grant Probability
Favorable
3-4
OA Rounds
5m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 68% — above average
68%
Career Allowance Rate
45 granted / 66 resolved
At TC average
Strong +41% interview lift
Without
With
+41.2%
Interview Lift
resolved cases with interview
Typical timeline
2y 7m
Avg Prosecution
32 currently pending
Career history
88
Total Applications
across all art units

Statute-Specific Performance

§101
0.3%
-39.7% vs TC avg
§103
51.2%
+11.2% vs TC avg
§102
24.9%
-15.1% vs TC avg
§112
23.4%
-16.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 66 resolved cases

Office Action

§103
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 . This Office Action is responsive to the Applicant's communication filed August 7, 2026. In view of this communication and the amendment concurrently filed: claims 1-20 were previously pending; claims 2 and 14 were cancelled and no claims were added by amendment; and thus, claims 1, 3-13, and 15-20 are now pending in the application. Response to Arguments Applicant's arguments filed August 7, 2026 have been fully considered. The Applicant's first point (page 6-7 of Remarks) amends claim 1 with the new limitation, “the controller is configured to switch the selected operating mode between the plurality of operating mode.” The Applicant goes on to argue that turning on the working light when the trigger is pulled does not teach this limitation. The Examiner fundamentally disagrees. When the trigger (actuator) of MERGENER is pulled (actuated) the motor turns from off to on (selecting and switching operating mode), additionally the working light (indicator assembly) turns on and off with respect to the motors operation mode. This is all taught and shown in the 103 rejection of claim 2 in the prior office action filed May 7, 2026. Under a reasonably broad interpretation operating mode does not exclusively limit itself to forward/reverse/neutral as indicated in the applicants arguments. If the Applicant wishes to limit the claims to such a degree the claims should be amended to represent that. Since MERGENER does teach the broad claims as presented the 103 rejection is maintained. The Applicant's second point (page 8 of Remarks) argues that the rational for combining references MERGENER and KWON shows no reason to teach the functional limitations. The Examiner acknowledges the argument but also recognizes that the functional limitations are taught by MERGENER alone and a combination is not need to teach the functional limitations. Additionally, there is no requirement that a motivation to make the modification be expressly articulated. The test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin, 170 USPQ 209 (CCPA 1971). References are evaluated by what they suggest to one versed in the art, rather than by their specific disclosures. In i.e Bozek, 163 USPQ 545 (CCPA)1969. In this case, MERGENER teaches the functional limitations, and the combination of art with KWON simply teaches the structure of a single PCB to contain both the indicator assembly and hall sensor in order to simplify structure. The Applicant's second point (page 9 of Remarks) amends claim 20 to include previously indicated allowable subject matter. The subject matter is properly folded in the independent claim putting it into condition for allowance, thus the rejections on claim 20 are moot and removed. Claim Rejections - 35 USC § 103 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. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claim(s) 1, 3-11, 13, and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over MARGENER (US 20130313925 A1) in view of KWON (KR 20220095280 A). In regards to claim 1, MARGENER teaches: A power tool (Fig 1; 100) comprising: a housing(Fig 1; 102); a motor (Fig 3A; 126) supported within the housing(shown in Fig 3A), the motor (Fig 1; 126) including a stator and a rotor[0010]; and a PCBA (Fig 3B; 142 and 144) supported within the housing(Shown in Fig 3A that’s the PCBs are housed), the PCBA (Fig 3B; 142 and 144) including a sensor configured to detect rotation (Fig 5; 128) of the rotor and an indicator assembly(Fig 3B; 116), a controller (Fig 2; 130) configured to control operation of the motor (Fig 2; 126)according to a selected operating mode of a plurality of operating modes(the controller receives input such as the modes of trigger being depressed or open to influence the motor [0004]); and an actuator(Fig 2; 132), wherein the controller (Fig 2; 130) is configured to switch the selected operating mode between the plurality of operating modes in response to actuation of the actuator(Fig 2; 132)[0004], and wherein the controller (Fig 2; 130) is configured to control the indicator assembly (Fig 2; 133/116) (the LEDs are an example of other components 133 in Fig 2 [0004]) to indicate the selected operating mode[0034]. PNG media_image1.png 470 644 media_image1.png Greyscale PNG media_image2.png 744 743 media_image2.png Greyscale PNG media_image3.png 360 564 media_image3.png Greyscale PNG media_image4.png 724 531 media_image4.png Greyscale PNG media_image5.png 417 669 media_image5.png Greyscale MARGENER does not teach: a single PCB containing both hall sensors and an indicator assembly KWON teaches: a PCBA (Fig 4; 111) supported within the housing(Fig 4; 119/117), the PCBA (Fig 4; 111) including a sensor configured to detect rotation [0038] of the rotor and an indicator assembly(Fig 4; 115), wherein the indicator assembly (Fig 4; 115) is configured to indicate an operational parameter of the power tool(The indicator LEDs display the level of battery [0048]). PNG media_image6.png 810 692 media_image6.png Greyscale PNG media_image7.png 597 727 media_image7.png Greyscale Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify MARGENER by using a single PCB to contain both the indicator assembly and hall sensors as taught by KWON, in order to simplify the structure [0001KWON]. Additionally, it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893). Additionally, it has been held that the use of a one piece construction instead of the multiple piece structure would be merely a matter of obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) In regards to claim 3, MARGENER, in view of KWON, teaches the power tool of claim 1: wherein the controller (Fig 2; 130) is configured to switch the selected operating mode between the plurality of operating modes in response to actuation of the actuator in a first manner(Fig 2; 132)(trigger closed), and wherein the controller (Fig 2; 130) is configured to operate the motor in accordance with the selected operating mode in response to actuation of the actuator in a second manner (Fig 2; 132)(trigger open) different than the first manner[0032]. In regards to claim 4, MARGENER, in view of KWON, teaches the power tool of claim 3: wherein the actuator (Fig 2; 132)is a trigger (Fig 2; 1112)supported by the housing(shown in Fig 1). In regards to claim 5, MARGENER, in view of KWON, teaches the power tool of claim 4: wherein the housing (Fig 1; 102)includes a handle portion(Fig 1; 104), and wherein the trigger (Fig 1; 112)is located on the handle portion(Fig 1; 104). In regards to claim 6, MARGENER, in view of KWON, teaches the power tool of claim 1: further comprising a gear assembly(Fig 3A; 148) driven by the motor(Fig 3A; 126)[0029], wherein the PCBA (Fig 3A; 142)is located between the stator(Fig 3A; 126) and the gear assembly(Fig 3A; 148). In regards to claim 7, MARGENER, in view of KWON, teaches the power tool of claim 1: wherein the PCBA (Fig 19F; 302)is coupled to the stator(Fig 19F; 330)(Fig 19F shows how the PCB may be attached to the stator 330). PNG media_image8.png 464 650 media_image8.png Greyscale In regards to claim 8, MARGENER, in view of KWON, teaches the power tool of claim 1: wherein the PCBA(Fig 3B; 142 and 144) is a first PCBA, and wherein the power tool further comprises a second PCBA(Fig 3B; 138), the second PCBA (Fig 3B; 138)including a plurality of switching elements configured to provide power to the motor[0031]. In regards to claim 9, MARGENER, in view of KWON, teaches the power tool of claim 1: wherein the sensor(Fig 5; 128) is a Hall-Effect sensor[0033]. In regards to claim 10, MARGENER, in view of KWON, teaches the power tool of claim 1. MARGENER does not teach: wherein the indicator assembly includes a light source mounted to the PCBA. KWON teaches: wherein the indicator assembly (Fig 4; 115) includes a light source mounted to the PCBA[0035]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify MARGENER by using a PCB with a light source coupled to it as taught by KWON, in order to simplify the structure [0001 KWON]. In regards to claim 11, MARGENER, in view of KWON, teaches the power tool of claim 10. MARGENER does not teach: wherein the indicator assembly includes a light output configured to emit visible light generated by the light source and a light pipe configured to transmit the visible light from the light source to the light output. KWON teaches: wherein the indicator assembly includes a light output (Fig 6; 159) configured to emit visible light generated by the light source (Fig 6; 115) and a light pipe (Fig 6; 153) configured to transmit the visible light from the light source(Fig 6; 115) to the light output(Fig 6; 159) [0043]. PNG media_image9.png 710 505 media_image9.png Greyscale In regards to claim 13, MARGENER teaches: A power tool(Fig 1; 100) comprising: a housing(Fig 1; 102); a motor (Fig 3A; 126) supported within the housing(shown in Fig 3A), the motor (Fig 1; 126) including a stator and a rotor[0010] having an output shaft rotatable about an axis[0008]; a gear assembly (Fig 3A; 148) supported within the housing (Fig 1; 102)and coupled to the output shaft(shown in Fig 3A), the gear assembly including a ring gear(Fig 3A shows several gear in the drive mechanism 148 that could be a ring gear); a PCBA (Fig 3A; 142)supported within the housing (Fig 3A; 102) between the stator(Fig 3A; 126) and the ring gear(Fig 3A; 148) in a direction along the axis, the PCBA (Fig 3B; 142 and 144) including an indicator assembly (Fig 2; 133)including a light source (Fig 3B; 116)mounted to the PCBA; a controller (Fig 2; 130) configured to control operation of the motor (Fig 2; 126)according to a selected operating mode of a plurality of operating modes(the controller receives input such as the modes of trigger being depressed or open to influence the motor [0004]); and an actuator(Fig 2; 132), wherein the controller (Fig 2; 130) is configured to switch the selected operating mode between the plurality of operating modes in response to actuation of the actuator(Fig 2; 132)[0004], and wherein the controller (Fig 2; 130) is configured to control the indicator assembly (Fig 2; 133/116) (the LEDs are an example of other components 133 in Fig 2 [0004]) to indicate the selected operating mode[0034]. MARGENER does not teach: a single PCB containing both hall sensors and an indicator assembly a light source mounted to the PCBA KWON teaches: a PCBA (Fig 4; 111) supported within the housing(Fig 4; 119/117), the PCBA (Fig 4; 111) including a sensor configured to detect rotation [0038] of the rotor and an indicator assembly(Fig 4; 115), wherein the indicator assembly (Fig 4; 115) is configured to indicate an operational parameter of the power tool(The indicator LEDs display the level of battery [0048]). the indicator assembly (Fig 4; 115) includes a light source mounted to the PCBA[0035]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify MARGENER by using a single PCB to contain both the indicator assembly with a light source coupled and hall sensors as taught by KWON, in order to simplify the structure [0001KWON]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify MARGENER by using a PCB with a light source coupled to it as taught by KWON, in order to simplify the structure [0001 KWON]. Additionally, it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893). Additionally, it has been held that the use of a one piece construction instead of the multiple piece structure would be merely a matter of obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) In regards to claim 15, MARGENER, in view of KWON, teaches the power tool of claim 13. MARGENER does not teach: wherein the light source is one of a plurality of light sources mounted to the PCBA. KWON teaches: wherein the light source(Fig 4; 115) is one of a plurality of light sources mounted to the PCBA[0035]. In regards to claim 16, MARGENER, in view of KWON, teaches the power tool of claim 13: wherein the housing (Fig 1; 102)includes a battery receptacle(Fig 1; 114), and wherein the light output (Fig 1; 116)is located on a top side of the housing (Fig 1; 102)opposite the battery receptacle(Fig 1; 114). MARGENER does not teach: wherein the indicator assembly includes a light output configured to emit visible light generated by the light source. KWON teaches: wherein the indicator assembly includes a light output (Fig 6; 159) configured to emit visible light generated by the light source (Fig 6; 115). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify MARGENER by using the lighting guild as taught by KWON, in order to simplify the structure and configure the light so that the operator can easily recognize the indicator [0001KWON]. In regards to claim 17, MARGENER, in view of KWON, teaches the power tool of claim 16. MARGENER does not teach: wherein the indicator assembly includes a light pipe configured to transmit the visible light from the light source to the light output. KWON teaches: wherein the indicator assembly includes a light pipe (Fig 6; 153) configured to transmit the visible light from the light source(Fig 6; 115) to the light output(Fig 6; 159) [0043]. In regards to claim 18, MARGENER, in view of KWON, teaches the power tool of claim 17. MARGENER does not teach: wherein the light output includes a lens. KWON teaches: wherein the light output(Fig 6; 159) includes a lens(transparent cover). Allowable Subject Matter Claims 12 and 19 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. Regarding claim 12, the following is a statement of reasons for the indication of allowable subject matter: The prior art teaches: wherein the light output and the light pipe are integrally formed together as a single light output body OR wherein the indicator assembly further includes a seal disposed between the light output body and the housing. However, the prior does not teach: both of these limitations combined or the proper motivation to do so. Regarding claim 19, the following is a statement of reasons for the indication of allowable subject matter: The prior art teaches: wherein the light output and the light pipe are integrally formed together as a single light output body OR wherein the indicator assembly further includes a seal disposed between the light output body and the housing. However, the prior does not teach: both of these limitations combined or the proper motivation to combine them. Claims 12 and 19 are objected to, and not rejected, because the limitation of a single solid lighting apprentice that carries light from its source to output is too specific in this art field which makes it novel, also there was no motivation found to use such technology in this application. As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a). Claim 20 is allowed. The following is an examiner' s statement of reasons for allowance: The prior art teaches: wherein the light output and the light pipe are integrally formed together as a single light output body OR wherein the indicator assembly further includes a seal disposed between the light output body and the housing. However, the prior does not teach: both of these limitations combined or the proper motivation to do so. 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 NICHOLAS L SETZER whose telephone number is (571)272-3021. The examiner can normally be reached Mon-Fri, 8am-5pm EST. 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, Oluseye Iwarere can be reached at (571) 270-5112. 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. /N.L.S./Examiner, Art Unit 2834 /OLUSEYE IWARERE/Supervisory Patent Examiner, Art Unit 2834
Read full office action

Prosecution Timeline

Aug 16, 2024
Application Filed
May 07, 2026
Non-Final Rejection mailed — §103
Aug 07, 2026
Response Filed
Aug 31, 2026
Final Rejection mailed — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12744433
ELECTRICAL MACHINE
3y 1m to grant Granted Sep 22, 2026
Patent 12738828
LINEAR DRIVE FOR TRACK-GUIDED MEANS OF LAND TRANSPORTATION OR RAILWAY VEHICLES
2y 10m to grant Granted Sep 15, 2026
Patent 12732058
COOLING ASSEMBLY, INSERT AND DRIVE ASSEMBLY HAVING A COOLING ASSEMBLY OF THIS KIND
3y 0m to grant Granted Sep 08, 2026
Patent 12732060
DRIVE DEVICE WITH ELECTRIC MOTOR
2y 8m to grant Granted Sep 08, 2026
Patent 12710438
POSITIONING SYSTEM
3y 3m to grant Granted Aug 18, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

3-4
Expected OA Rounds
68%
Grant Probability
99%
With Interview (+41.2%)
2y 7m (~5m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 66 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month