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 .
Drawings
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 subject matter of claims 7 and 17-20 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.
The drawings are objected to because:
Figure 1: Reference numeral 2 should not be underlined since it has a reference line and not located physically on the part it is representing.
Figure 2: It appears the electric tool 1 is missing the second display 93.
Figure 4: Reference numeral 5 should not be underlined since it has a reference line and not located physically on the part it is representing
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.
Specification
The incorporation by reference of the international patent application PCT/JP2023/014522 and of the Japanese patent application 2022-073604 is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 4/10/2023, see MPEP 1893.03(b). Therefore, the specification amendment of 10/21/2024 to include the incorporation by reference is new matter, per MPEP 608.01(p).
The disclosure is objected to because of the following informalities: The application includes a “Reference Signs List” section at the end of the specification, however not all of the reference signs used within the disclosure are present.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 –
(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.
Note: Examiner would like to point out that no control circuity has been claimed. Instead, a display is claimed that is capable of completing functions based on operational parameters. Based on the disclosure as originally filed, the display does not make any determination and this is instead left to the unclaimed control features. Therefore, to meet the function limitations of the display as set forth in the claims, examiner is considering any display capable of producing more than one output as meeting the claimed features.
Claims 1-4, 6-9, 13-15, and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McCallops et al (U.S Patent No. 5,473,519), hereinafter McCallops.
Regarding claim 1, McCallops teaches (Figure 1) an electric tool having a motor (Col. 1, lines 50-57), configured to rotate a tool, a holder (17), configured to hold and rotate the tip tool, a display (25 and 30), configured to display a state of a fastening operation (good or bad operation; Col. 2, lines 1-12), and a housing (11). The housing (11) having a grip (12), having an elongated shape and configured to be gripped by a person, and a stopper (inclined portion of 11 located below reference numeral 15 in Figure 1) disposed at an end of the grip and located at a side of the holder (17). The stopper protrudes beyond the end in a protrusion direction intersecting in a longitudinal direction of the grip. The display (25) is located on the stopper.
Regarding claim 2, McCallops teaches (Figure 1) the stopper protrudes in the protrusion direction from an entire circumference of the end.
Regarding claim 3, McCallops teaches (Figures 1 and 3) the display (25 and 30) has a shape extending over an entire circumference of an outer surface of the stopper.
Regarding claims 4, 6, 8, 9, and 13-15, McCallops teaches (Col. 2, lines 1-12) the display can switch between three different colored sets of lights which are capable of indicating normal or improper operation of the device via a microcircuit.
Regarding claims 7 and 17-19, McCallops teaches (Figure 3) the display (25) is a circle. Therefore the display is capable of producing the letter O, i.e. a character.
Additionally, McCallops discloses the claimed invention except for the specific arrangement and/or content of indicia (printed matter) set forth in the claim(s). It has been held that when the claimed printed matter is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 217 USPQ 401, (CAFC 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of picture or indication it does not alter the functional relationship of informing the user via a lit display that does not include additional functionality, such as an LCD screen. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability.
The examiner asserts the device of McCallops comprising a display (25 and 30) is the same structure claimed by applicant and the sole difference is in the content of the printed material. Thus, there is no novel and unobvious functional relationship between the printed matter (e.g. the length demarcations) and the substrate (e.g. the blunted edge of the spatula) which is required for patentability.
Accordingly, there being no functional relationship of the printed material to the substrate, as noted above, there is no reason to give patentable weight to the content of the printed matter which, by itself, is non-statutory subject matter.
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.
Claims 5, 10-12, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over McCallops in view of Ito et al (CN210173433), hereinafter Ito.
Note: Examiner would like to point out that Ito teaches (First paragraph of page 25 of the attached document) additional features of the disclosed invention including changing light outputs based on successful and not successful fastening operations.
Regarding claim 16, McCallops teaches (Col. 2, lines 1-12) the display can switch between three different colored sets of lights which are capable of indicating normal or improper operation of the device via a microcircuit.
Regarding claim 20, McCallops teaches (Figure 3) the display (25) is a circle. Therefore the display is capable of producing the letter O, i.e. a character.
Additionally, McCallops discloses the claimed invention except for the specific arrangement and/or content of indicia (printed matter) set forth in the claim(s). It has been held that when the claimed printed matter is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 217 USPQ 401, (CAFC 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of picture or indication it does not alter the functional relationship of informing the user via a lit display that does not include additional functionality, such as an LCD screen. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability.
The examiner asserts the device of McCallops comprising a display (25 and 30) is the same structure claimed by applicant and the sole difference is in the content of the printed material. Thus, there is no novel and unobvious functional relationship between the printed matter (e.g. the length demarcations) and the substrate (e.g. the blunted edge of the spatula) which is required for patentability.
McCallops teaches all of the elements of the current invention as stated above except a clutch disposed between the stopper and the holder to mechanically interrupt a transmission of the rotational force of the tip tool when a fastening torque value of the fastening operation reaches a target value.
Ito discloses (Figures 1 and 4) it is known in the art of power tools that utilize rotational motion to place a clutch (6) within an end part (5) that is located after a stopper (3), wherein the stopper is located after a grip (7). Ito discloses that utilization of a clutch allows a user to use the device to perform different operations (screw driving, drilling, etc) by setting appropriate torque value (Last paragraph of page 24 of the attached document). This type of torque sensing and clutch use to prevent the over application of torque for specific operations is a common and well known practice in the art of power tools.
Based on the teachings of Ito, it would have been obvious to have incorporated a clutch between the stopper and the holding part that allowed for the selection of torque into the device of McCallops to increase the overall utility of the device to allow for the precise application of specific torques for different operations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
King et al (U.S Patent No. 11,794,320), Hsieh (U.S Publication No. 20170095912), Kugler (U.S Publication No. 20060070459), and Miller (US Publication No. 20070144753) teach similarly located lights utilized for the same purpose as the instant invention.
Hirschburger (U.S Publication No. 20140198486) and Tamura (U.S Publication No. 20230147598) teach it is known to attach the lights to the bottom surface of a ring wherein the LEDS are capable of multiple colors whose operation are based on the output of the tool.
King et al (U.S Publication No. 20140331831), Hsieh (U.S Publication No. 20130249700), and Li (US Publication No. 20090165608) teach using displays and indicators for torque in a hand tool.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD F LANDRUM whose telephone number is (571)272-5567. The examiner can normally be reached M-F 8-5.
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, Marivelisse Santiago-Cordero can be reached at 571-272-7839. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761
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