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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 24 September 2024 & 25 February 2026 have been considered by the examiner.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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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Claims 1-17 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-5, 8-11 & 13-20 of U.S. Patent No. 12,126,226 (‘the Patent’). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of independent claims 1, 9 & 14 of the Patent encompass independent claims 1, 7 & 11 of the Application, as shown in the following side-by-side comparison:
Application
1.A tool having a housing, the tool comprising:
a motor disposed in the housing and adapted to receive power from a power source, wherein the motor includes:
an end cap having opposing first and second surfaces;
a power board coupled to the first surface and including position sensors and switching elements; and
a control board coupled to the second surface and including a processor.
7. A motor controller for a motor having an end cap with opposing first and second surfaces, wherein the first surface faces an interior of the motor, the motor controller comprising:
a power board adapted to couple to the first surface and including position sensors and switching elements; and
a control board adapted to couple to the second surface and including a processor.
11. A motor adapted to be powered by a power source, the motor comprising:
an end cap having opposing first and second surfaces, wherein the first surface faces an interior of the motor;
a power board coupled to the first surface and including position sensors and switching elements; and
The Patent
1.A tool having a housing, comprising:
a motor disposed in the housing and adapted to receive power from a power source, wherein the motor includes:
an end cap having opposing first and second surfaces;
a power board coupled to the first surface … wherein the power board includes position sensor.. and switching elements…; and
a control board coupled to the second surface and including a processor.
9. A motor controller for a motor having an end cap with opposing first and second surfaces, wherein the first surface faces an interior of the motor, the motor controller comprising:
a power board adapted to couple to the first surface…, wherein the power board includes position sensors…and switching elements…; and
a control board adapted to couple to the second surface and including a processor.
14. A motor adapted to be powered by a power source, the motor comprising:
an end cap having opposing first and second surfaces, wherein the first surface faces an interior of the motor;
a power board coupled to the first surface …, wherein the power board includes position sensors…and switching elements…, and
a control board coupled to the second surface and including a processor.
a control board coupled to the second surface and including a processor.
Dependent claims 2-6, 8-10 & 12-17 of the Application corresponds to respective claims 2-5, 8, 10-11, 13 & 15-20 of the Patent.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 7, 11 & 17 are rejected under 35 U.S.C. 103 as being unpatentable over Shramo et al. (US 5,200,661) in view of Kakutani et al. (US 7,166,981).
Regarding claim 1, Shramo teaches a tool (c.1:15-18) having a housing 26, the tool comprising: a motor 10 disposed in the housing and adapted to receive power from a power source (power supply) 84, wherein the motor includes: an end cap (end section/end member) 32/38 having “opposing” first and second surfaces 1 (not numbered, internal and external surfaces); a power board 44 coupled to the first surface and including position sensors 88 and switching elements (transistors) 86 (Figs.1,3&16).
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Shramo’s motor includes a processor (integrated circuit) 90 that controls commutation of the power transistors 86, but it is part of the electronics package 78 on power board 44 (c.11:8-21; Fig.16), not on “a control board coupled to the second surface”.
But, Kakutani teaches a motor 1 including a power (drive) board 20 coupled to a first (interior) surface of an end plate (not numbered, one end of housing of motor 4; the motor drive circuit 2 is fixedly provided inside the motor unit 4 facing to one side of the rotor 12 and the stator 13; c.4:53-55) and including position sensors 21 and switching (power) elements 24; and a control (controller) board 50 coupled to the second (exterior) surface and including a processor (inherent to motor control circuit 51 on control board 50), which operates current command values to be given to motor drive circuit; c.6:38-40; Fig.8). By coupling the control board to the second (exterior) surface of the end plate, Kakutani teaches the controller is adapted so as to be detachable, thus allowing the controller to be commonly applied to a plurality of models without requiring complicated setting operation of control parameters, thereby improving cost effectiveness, reusability and expandability (abstract, c.1:66-c.2:3).
It would thus have been obvious before the effective filing date to provide Shramo’s processor on a control board coupled to the second surface of the end cap since Kakutani teaches this would have allowed the controller to be commonly applied to a plurality of models without requiring complicated setting operation of control parameters, thereby improving cost effectiveness, reusability and expandability.
Regarding claim 7, Shramo teaches a motor controller for a motor 10 having an end cap 32/38 with opposing first and second surfaces (not numbered), wherein the first surface faces an interior of the motor, the motor controller comprising: a power board 44 adapted to couple to the first surface and including position sensors 88 and switching elements 86 (Figs.1,3&16). Similarly, regarding claim 11, Shramo teaches a motor 10 adapted to be powered by a power source (power supply) 84, the motor comprising: an end cap 32/38 having opposing first and second surfaces (not numbered), wherein the first surface faces an interior of the motor; a power board 44 coupled to the first surface and including position sensors 88 and switching elements 86.
Shramo’s motor controller includes a processor (integrated circuit) 90 that controls commutation of the power transistors 86, but it is part of the electronics package 78 on power board 44 (c.11:8-21; Fig.16), not on a control board coupled to the second surface.
But, Kakutani teaches a motor 1 including a power (drive) board 20 coupled to a first (interior) surface of an end plate (not numbered, one end of housing of motor 4; the motor drive circuit 2 is fixedly provided inside the motor unit 4 facing to one side of the rotor 12 and the stator 13; c.4:53-55) and including position sensors 21 and switching (power) elements 24; and a control (controller) board 50 coupled to the second (exterior) surface and including a processor (inherent to motor control circuit 51 on control board 50), which operates current command values to be given to motor drive circuit; c.6:38-40; Fig.8). By coupling the control board to the second (exterior) surface of the end plate, Kakutani teaches the controller is adapted so as to be detachable, thus allowing the controller to be commonly applied to a plurality of models without requiring complicated setting operation of control parameters, thereby improving cost effectiveness, reusability and expandability (abstract, c.1:66-c.2:3).
It would thus have been obvious before the effective filing date to provide Shramo’s processor on a control board coupled to the second surface of the end cap since Kakutani teaches this would have allowed the controller to be commonly applied to a plurality of models without requiring complicated setting operation of control parameters, thereby improving cost effectiveness, reusability and expandability.
Regarding claim 17, Shramo’s motor comprises a rotor 12 and stator 14, wherein the end cap 32/38 is coupled to the stator (Fig.1).
Claims 2-3, 5, 8-9, 12-13 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over Shramo & Kakutani as applied to respective claims 1, 7 & 11 above, further in view of Wright et al. (US 6,949,849).
Regarding claims 2, 8 & 12, Shramo & Kakutani substantially teach the invention but do not further teach a thermal interface material disposed between the power board and the first surface. Regarding claims 5 & 15, Shramo & Kakutani do not specifically teach the end cap is composed of one of aluminum, magnesium and carbon steel.
But, Wright teaches a motor comprising an endshield 102 including a thermal interface material (thermal pad) 112 disposed between a power (control) board 108 and a first surface thereof, to transfer and dissipate heat from switching elements (transistors) 110 on the power board 108 to the endshield and ambient environment to ensure proper operation of the motor (c.3:20-45; Fig.1). Further, Wright’s end cap 102 is composed of aluminum, a material that serves a heatsink (c.3:29-31).
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It would have been obvious before the effective filing date to provide Shramo & Kakutani with a thermal interface material disposed between the power board and the first surface since Wright teaches this would have transferred and dissipated heat from the switching elements and ensured proper operation of the motor. It would further have been obvious before the effective filing date to provide the end cap of Shramo & Kakutani from aluminum since Wright teaches this material would have served as a heatsink.
Regarding claims 3, 9 & 13, Wright’s thermal interface material comprises a thermally conductive pad 112.
Claims 4, 6, 10, 14 & 16 are rejected under 35 U.S.C. 103 as being unpatentable over Shramo & Kakutani as applied to respective claims 1, 7 & 11 above, further in view of Toukairin et al. (US 8,513,838).
Regarding claim 4, Shramo & Kakutani substantially teach the invention including an output shaft 16 in Shramo (Fig.1), but do not further teach a gear assembly disposed in the housing, wherein the motor output shaft engages the gear assembly. Regarding claims 6, 10 & 16, Shramo & Kakutani substantially teach the invention including transistors or power FET switching elements (Shramo, c.4:54-56; Kakutani c.4:65-66) and Hall effect position sensors (Shramo, c.4:54-56), but neither further teaches the switching elements are metal-oxide semiconductor field-effect transistors (MOSFETs), per se. Regarding claim 14, Shramo & Kakutani both teach a brushless (BLDC) motor and a power source (Shramo, power supply 84), but neither teaches the power source is a battery, per se.
But, regarding the first difference, Toukairin teaches an electric power tool comprising a brushless motor 2 with a planetary gear 5a assembly disposed in the housing, wherein the motor output shaft 2e engages the gear assembly, to provide speed reduction (c.7:24-35; Fig.1). Regarding the second difference, Toukairin teaches MOSFET semiconductor switching elements 3a on power (inverter) circuit board 3 that perform switching operations in response to switching drive signals from a control signal output circuit 13 (c.9:27-45). Regarding the third difference, Toukairin teaches the power tool has a detachable battery 8 pack as the power source (c.6:27-29).
It would have been obvious before the effective filing date to further provide the tool of
Shramo & Kakutani with a gear assembly disposed in the housing, wherein the motor output shaft engages the gear assembly, since Toukairin teaches a planetary gear would have provided speed reduction. It would have been obvious before the effective filing date to further provide the tool of Shramo & Kakutani with MOSFET switching elements since Toukairin teaches these were known to perform switching operations. It would have been obvious before the effective filing date to further provide the tool of Shramo & Kakutani with a battery as a power source since Toukairin teaches a battery would have been desirable as a power source for a power tool.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BURTON S MULLINS whose telephone number is (571)272-2029. The examiner can normally be reached 9-5. 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, Tulsidas C Patel can be reached at 571-272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BURTON S MULLINS/Primary Examiner, Art Unit 2834
1 Per the specification ¶[0017] & ¶[0022], the “opposing” first and second sides of the end cap are understood to refer to respective internal and external surfaces, i.e., first surface 132 of second end cap 122 facing an interior of the motor 106 and second surface 134 on an exterior of the motor (Figs.3-5).
Prosecution Insights