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 action is in response to applicant amendment received on 10/02/2025:
Amendments of Claims 1, 5 and 6 are acknowledged.
Cancelation of Claim 3 is acknowledged.
New Claims 7 to 12 are acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/02/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The Claim includes only the limitation “wherein the hammer and the light overlap each other in a front-rear direction”, that corresponds to the last limitation added to Claim 1.
Applicant may cancel the claim, amend the claim to place the claim it in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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 1, 4, 5, 7, 8, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Scott (US 2015/0174744) in view of Friedman (US 2011/0058356).
Regarding Claims 1 and 4:
Scott discloses an impact tool, comprising: a motor; a motor housing accommodating the motor; a grip extending downward from the motor; a hammer configured to be rotated by the motor; an anvil configured to be struck by the hammer in a rotation direction; a hammer case accommodating the hammer; a spring configured to urge the hammer frontward (Figure 4, paragraphs 0021, 0031, Tool 10 comprises motor 38, back section of Housing 34 bellow bevel pinion gear 164, around motor 34, including support of trigger switch 60 and extending bellow the motor until battery support portion will be considered the grip, hammer 146, anvil 150 with lugs 172, compression spring 178 will be considered the spring, positioned between the hammer 146, having lungs 162, lower housing portion 130 will be considered the hammer case, and the bevel ring gear 160 to bias the hammer 146 toward the anvil 150, for transferring torque between the shaft 142 and the hammer 146 between consecutive impacts of the lugs 162 upon the corresponding lugs 172 on the anvil 150);
a guard in front of the grip, extending downward from the hammer case (Figure 4, battery support portion 50 will be considered the guard), and having an internal wiring housing (Figures 7 and 8, illumination assembly 270 has wires passing from a board connected to the battery pack 50 to light 274 by a space that will be considered an internal wiring housing);
a battery mount connected to a lower end of the grip and a lower end of the guard, and configured to receive a battery pack (Figure 4, battery mount not numbered receives battery pack 54, connected to a lower end of the grip and a lower end of the guard);
a light configured to illuminate distally from the anvil (Figures 7 and 8, light 274); and
a lead wire in the internal wiring housing and electrically connected to the lights (Figures 7 and 8, as mentioned above, illumination assembly 270 has wires passing from a board connected to the battery pack 50 to light 274 by a space that will be considered an internal wiring housing),
Scott does not disclose the light being disposed in a front portion of the hammer case.
Friedman teaches using a ring shaped light emitting holder being disposed in a front portion of the hammer case configured to illuminate all around a workpiece machined by the power tool (paragraph 0024, Figure 1, light emitting holder 52 at an end of the transmission housing 56, the holder including LEDs and wires 64 with a connector 66 to power the lights from the battery).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Scott the teachings of Friedman and replace the lights 274 for the ring shaped light emitting holder, placing it in the front portion of the hammer case, overlapping the anvil as viewed from the front, as a way to illuminate all around a workpiece being machined by the power tool even in substandard light conditions.
Regarding Claim 5:
Scott discloses a screwing tool, comprising: a motor; a motor housing accommodating the motor; a grip extending downward from the motor; a reducer configured to reduce rotation from the motor; a tool holding portion configured to be driven by the reducer (Figures 3 and 4, paragraphs 0021, 0025, 0031, Tool 10 comprises motor 38, impact mechanism housing 140 and motor support portion 48 will be considered the motor housing, back section of Housing 34 bellow bevel pinion gear 164, around motor 34, including support of trigger switch 60 and extending bellow the motor until battery support portion will be considered the grip, transmission 42 up to bevel pinion gear 164 and bevel ring gear 160 will be considered the reducer, drive end 14 receiving driver bit 20 will be considered the tool holding portion),
a guard in front of the grip, extending downward from the motor housing, and having an internal wiring housing (Figure 4, battery support portion 50 will be considered the guard, Figures 7 and 8, illumination assembly 270 has wires passing from a board connected to the battery pack 50 to light 274 by a space that will be considered an internal wiring housing);
a battery mount connected to a lower end of the grip and a lower end of the guard, and configured to receive a battery pack (Figure 4, battery mount not numbered receives battery pack 54, connected to a lower end of the grip and a lower end of the guard);
a light configured to illuminate a distal end of the tool holding portion; and a lead wire in the internal wiring housing, and electrically connected to the light (Figures 7 and 8, light 274, part of illumination assembly 270 that has wires passing from a board connected to the battery pack 50 to light 274 by a space that will be considered an internal wiring housing).
Scott does not disclose the light being disposed in front of the reducer.
Friedman teaches using a ring shaped light emitting holder being disposed in a front portion of the hammer case, just in front of the mode selector, configured to illuminate all around a workpiece machined by the power tool (paragraph 0024, Figure 1, light emitting holder 52 at an end of the transmission housing 56, the holder including LEDs and wires 64 with a connector 66 to power the lights from the battery).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Scott the teachings of Friedman and replace the lights 274 for the ring shaped light emitting holder, placing it in the front portion of the hammer case, in front and overlapping at least bevel gear 160 of the reducer, as a way to illuminate all around a workpiece being machined by the power tool even in substandard light conditions.
Regarding Claims 7 and 8:
The modified invention of Scott discloses that the grip includes a trigger to drive the motor, and the light is above the grip (As discussed above for Claims 1 and 5, the grip includes a trigger switch 60, and since the light is being placed as a ring around the front portion of the hammer case the light would be above the grip).
Regarding Claims 11 and 12:
Scott discloses that the guard and the battery mount partially overlap each other as viewed from below (Figure 4, The battery mount is inside the guard and the overlaps the guard).
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Scott (US 2015/0174744) in view of Friedman (US 2011/0058356) as applied to claims 1 and 5 above, and further in view of Kumagai (US 2018/0222022).
Regarding Claims 2 and 6:
As discussed for Claim 1 and 5 above, Scott discloses the invention as claimed, including that the motor housing, the grip, and the guard are dividable into a left portion and a right portion (Paragraph 0025, Figure 3, housing 34, that comprises the motor housing, the grip, and the guard is split in two opposite halves).
Scott does not disclose the two halves being fixed by a screw.
Kumagai teaches a similar impact tool in which the motor housing, the grip, and the guard are dividable into a left portion and a right portion and the halves are attached to each other by screws (Paragraph 0050, Figures 1 and 2).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Scott the teachings of Kumagai and have the two opposite halves, namely a left portion and a right portion and the halves are attached to each other by screws, since the use of screws to join them is a very common practice in the art.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Scott (US 2015/0174744) in view of Friedman (US 2011/0058356) as applied to claims 1 and 5 above, and further in view of Teranishi (US 2016/0361809) and in the alternative of Cannaliato (US 2013/0118767).
Regarding Claims 9 and 10:
As discussed for Claim 1 and 5 above, the modified invention of Scott discloses the invention as claimed, in particular a light placed as a ring in a front portion of the hammer case around the tool holder.
The modified invention of Scott does not disclose having the motor and the light partially overlap each other as viewed from the front, the motor of Scott is set perpendicular to the tool holder axis.
Teranishi teaches similar tool that includes a motor, a grip extending downward the motor with a trigger , a guard in front of the grip with an internal wiring housing, a battery mount connected to a lower end of the grip and a lower end of the guard (Figures 2 and 5, Motor 11, grip extending downward the motor with trigger 23, guard with battery 24 with wiring to connect to trigger and motor) wherein the motor is disposed in an axis parallel to the tool holder axis, so the front of the tool holder overlap the motor viewed from the front, as part of a design of a tool casing for reducing vibration generated during the striking operation to the handle of the tool.
Cannaliato teaches a power tool is provided which accommodates interchangeable tool heads, including a hammer drill that as can be seen on Figure 6 can receive a screwdriver bit, the tool includes a motor, a grip extending downward the motor with a trigger, a guard in front of the grip with an internal wiring housing, a battery mount connected to a lower end of the grip and a lower end of the guard and a light (Figures 1 to 3 and 6, motor 20, grip 10 extending downward the motor with trigger 12, Guard 14 with battery 26 and wiring to connect the battery to trigger and motor and light 210 ) wherein the motor is disposed in an axis parallel to the tool holder axis, so the front of the tool holder overlap the motor viewed from the front as a way to couple the hammer drill mechanism to the motor.
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to the modified invention of Scott the teachings of Teranishi or Cannaliato and have the motor aligned with the tool holder axis to the tool holder overlap the motor viewed from the front, resulting on the motor and the light at least partially overlapping each other as viewed from the front, as a common way to couple the motor to the rest of the hammer drill mechanism, in particular avoiding the cost and loses of efficiency due to the use of two beveled gears on Scott.
Response to Arguments
Applicant’s arguments with respect to the rejection of the claims over Schneider (US 2020/0180128) in view of Tsukamoto (WO 2019/150651) and Kumagai (US 20180222022) 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. The amendment required to make a new rejection under Scott (US 2015/0174744) in view of Friedman (US 2011/0058356).
The Examiner wonders if when Claim 1 mentions the “reducer”, interpreted as the reducer 75 in the Specification and Drawings, in particular Figure 5, more or less in the middle of the tool, the Applicant actually means to claim the mode change ring 6, that is actually located so the light is located in front and close to the mode change ring 6, as can be seen on Figure 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In particular Fu (US 2015/0251299) and Ely (US 2016/0354889) teach lights relevant to the invention and Bantle (US 2018/0354114) a similar tool including a guard in front of the handle.
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 EDUARDO R FERRERO whose telephone number is (571)272-9946. The examiner can normally be reached M-F 9:30-7:00.
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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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/EDUARDO R FERRERO/Examiner, Art Unit 3731
/STEPHEN F. GERRITY/Primary Examiner, Art Unit 3731 19 December 2025
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