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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-3, 13-15, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 9120213 B2 to (Elger).
Regarding claim 1, (Elger) discloses a power tool comprising: a main housing (12) including a pair of clamshells; a motor (18) including a front bearing retainer (motor plate 19), the motor (18) being supported within the main housing (12); a yoke housing (head housing 14) coupled to the main housing (12); a plurality of fasteners (85) configured to secure the front bearing retainer (19) within the main housing (12), each fastener passing through the main housing, the yoke housing, and the front bearing retainer (Fig. 2); and an output assembly (24) arranged in the yoke housing (14) and configured to receive torque from the motor (Col. 3, lines 17-24), the output assembly including an anvil (56) having an output member (102) configured to engage a socket, and a pawl (58) that is moveable between a first position in which the pawl is operatively coupled to drive the anvil (56) in a first direction and a second position in which the pawl (58) is operatively coupled to drive the anvil (56) in a second direction opposite the first direction.
Regarding claim 2, in the power tool of (Elger) according to claim 1, the front bearing retainer (19) is formed of metal (“a steel motor plate 19” – Col. 3, lines 20-21).
Regarding claim 3, in the power tool of (Elger) according to claim 1, the front bearing retainer (19) is encapsulated within the yoke housing (14)(Figs. 5 and 8)(Col. 3, lines 20-21).
Regarding claim 13, (Elger) discloses a power tool comprising: a main housing (12); a motor (18) including a front bearing retainer (motor plate 19), the motor (18) being supported within the main housing (12); a yoke housing (head housing 14) coupled to the main housing (12); a plurality of fasteners (85) configured to secure the front bearing retainer (19) within the main housing (12), each fastener (85) passing through the main housing (12), the yoke housing (14), and the front bearing retainer (19); an output assembly (24) configured to receive torque from the motor (Col. 3, lines 17-24), the output assembly (24) including an output member (102); and a drive assembly (22,22’) configured to transfer torque from the motor (18) to the output assembly (24).
Regarding claim 14, in the power tool of (Elger) according to claim 13, the drive assembly includes at least one planetary gear stage.
Regarding the claim 15, in the power tool of (Elger) according to claim 13, the drive assembly (22,22’) includes a ring gear (44), a sun gear (38) that receives torque from the motor (18), a plurality of planet gears (three planet gears 42) rotatable within the ring gear (44) in response to rotation of the sun gear (38), and a planet carrier (40) rotatable in response to rotation of the planet gears (Col. 2, lines 65-67 and Col. 3, lines 1-5; Fig. 6; Col. 3, lines 52-65).
Regarding claim 19, in the power tool of (Elger) according to claim 13, the output member (102) is configured to engage a socket, and wherein the output assembly includes an anvil (56) having the output member, and a pawl (58) that is moveable between a first position in which the pawl is operatively coupled to drive the anvil (56) in a first direction and a second position in which the pawl is operatively coupled to drive the anvil in a second direction opposite the first direction (Col. 5, lines 53-Col. 6, line 3).
Regarding claim 20, in the power tool of (Elger) according to claim 13, the output member (102)is a square drive socket (Col. 4, lines 11-13).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,179,318. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 of U.S. Patent No. 12,179,318 disclose all of the features recited in pending claim 1-20.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David B. Thomas whose telephone number is (571) 272-4497. The examiner’s e-mail address is: dave.thomas@uspto.gov. The examiner can normally be reached on Mon-Fri 11:30-7:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached on (. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/David B. Thomas/
Primary Examiner, Art Unit 3723
/DBT/
Prosecution Insights