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 .
Status of Claims
Claims 1-20 are currently pending for examination.
Information Disclosure Statement
Receipt is acknowledged of an Information Disclosure Statement, filed 12/12/2025, 03/30/2026, 04/24/2026, which has been placed of record in the file. An initialed, signed and dated copy of the PTO-1449 or PTO-SB-08 form is attached to this Office action.
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiller et al. (US 20210229257 A1).
Attention is directed to Applicants use of alternative language, “or” which means that only one of the requirements (A or B) is needed to meet the claim, In this instance case, the office is only required to meet the requirement of option A – First magnet.
Regarding claim 1, Hiller discloses a power tool (32a) comprising:
a housing (34a) including a motor housing portion (58a, 36a), a handle portion (42a) extending from the motor housing portion (58a, 36a), and a battery receptacle (40a) configured to receive a battery pack (44a);
an electric motor (54a) supported in the motor housing portion (58a, 36a) and defining a motor axis (26a);
a trigger (52a) extending from the handle portion (42a);
an actuator (16a/18a) located on a top surface of the housing (34a) opposite the battery receptacle (40a; Fig. 1), the actuator (16a/18a) moveable between a first position (first switching position-[0050]) and a second position (second switching position-[0050]…see also [0050] and [0060]-[0062]), the actuator (16a/18a) including a first magnet (22a);
a sensor (20a) positioned adjacent the actuator (16a/18a), the sensor (20a) configured to detect a position of the first magnet relative to the sensor and to output an actuator signal representative of a position of the actuator based on the detected position of the first magnet ([0057]); and
a controller (76a) in electrical communication with the electric motor (54a) and the sensor (20a),
wherein the controller (76a) is configured to control the electric motor (54a) based on the actuator signal received from the sensor (20a) such that
the electric motor (54a) rotates in a first direction in response to actuation of the trigger (52a) when the actuator (16a/18a) is in the first position ([0050]-[0062]), and
the electric motor (54a) rotates in a second direction opposite the first direction in response to actuation of the trigger (52a) when the actuator (16a/18a) is in the second position ([0050]-[0062]).
Hiller doesn’t teach a second magnet, and the second magnet spaced from the first magnet.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the actuator of Hiller that already has a first magnet to include a second magnet spaced from the first magnet, since it has been held that the mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Further, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Using two spaced magnets would have been an obvious design choice to provide stronger, more distinct magnetic signal which improves stronger detection reliability.
Hiller further discloses:
Regarding claim 2, wherein the actuator (16a/18a) is moveable to a third position ([0027]-“neutral switching position”), and wherein the controller is configured to control the electric motor based on the actuator signal received from the sensor such that rotation of the electric motor in response to actuation of the trigger is prevented when the actuator is in the third position ([0027]).
Regarding claim 3, Hiller teaches the actuator (16a/18a) is moveable to a third position ([0027]-“neutral switching position”) but does not disclose wherein the third position is between the first position and the second position.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the Hiller reference to have the third position be between the first position and the second position, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Such modification is an obvious matter of design choice since applicant has not disclosed that such a configuration solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well.
Regarding claim 4, wherein the actuator is movable between the first position and the second position in a direction parallel to the motor axis ([0018] “the displacement element is mounted in a movable manner, in particular movable at least substantially parallel to the output axis”).
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiller et al. (US 20210229257 A1) in view of Dey, IV et al. (US 20180091145 A1).
Regarding claim 5, Hiller teaches the power tool according to claim 1, including the sensor (20a) but does not disclose wherein the sensor is an inductive sensor, wherein movement of the actuator causes a change in inductance measured by the sensor, and wherein the actuator signal is representative of the inductance measured by the sensor.
Dey, IV in a related invention teaches a sensor (46, 50) is an inductive sensor ([0021]), wherein movement of the actuator (22) causes a change in inductance measured by the sensor (46, 50), and wherein the actuator signal is representative of the inductance measured by the sensor ([0021]-[0022]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the power tool of Hiller to substitute the sensor for an inductive sensor as taught by Dey, IV in order to make use of a known alternative sensor for detecting position of an actuator. In this instance, a skilled artisan would have recognized that the substitution of the sensor from the Hiller reference for the inductive sensor of the Dey, IV reference involves no more than the predictable use of prior art elements according to their established functions as both are widely used for non-contact position sensing in power tools, and that one of ordinary skill in the art could have substituted one known element for another and the results of the substitution would have been predictable.
Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiller et al. (US 20210229257 A1) in view of Sakai et al. (US 20030159843 A1).
Regarding claim 7, Hiller teaches the power tool according to claim 1 including a drive train (12a) but is silent regarding a drive assembly configured to convert a continuous rotational input from the electric motor to consecutive rotational impacts upon a workpiece, the drive assembly including an anvil extending from a front end of the housing and a hammer for imparting the consecutive rotational impacts upon the anvil.
Sakai in a related invention teaches a power tool having a drive assembly (Fig. 2) configured to convert a continuous rotational input from the electric motor to consecutive rotational impacts upon a workpiece ([0044]), the drive assembly including an anvil (12) extending from a front end of the housing (Fig. 2) and a hammer (11) for imparting the consecutive rotational impacts upon the anvil ([0043]-[0047]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the power tool of Hiller to incorporate a drive assembly having a hammer and an anvil as taught by Sakai in order to make use of a known impact mechanism for achieving the known function of delivering repeated torque impacts.
Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiller et al. (US 20210229257 A1) in view of Wyler (US 20130199810 A1).
Regarding claim 8, Hiller teaches power tool according to claim 1 including the handle portion (58a, 36a), but is silent regarding the handle portion is disposed rearward of the motor housing portion.
Wyler in a related invention teaches a power tool (260) having a handle portion (282) is disposed rearward of the motor housing portion (262).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Hiller power tool by having substituted a handle portion is disposed rearward of the motor housing portion, as suggested by Wyler, in order to make use of a known alternative structure to provide increased operator comfort.
Claims 9-11, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiller et al. (US 20210229257 A1) in view of Kiyohara et al. (US 20160121466 A1).
Attention is directed to Applicants use of alternative language, “or” which means that only one of the requirements (A or B) is needed to meet the claim, In this instance case, the office is only required to meet the requirement of option A – First magnet.
Regarding claim 9, Hiller discloses a power tool (32a, 32b) comprising:
a housing (34a) including a motor housing portion (58a, 36a), a handle portion (42a), a front housing portion (46a) coupled to the motor housing portion (58a, 36a) opposite the handle portion(42a) and includes a grip (Fig. 1- where user grasps), and
a battery receptacle (40a) configured to receive a battery pack (44a);
an electric motor (54a) supported in the motor housing portion (58a, 36a) and defining a motor axis (26a);
a trigger (52a) extending from the handle portion (42a);
an actuator (16a/18a) located on a top surface of the housing (34a) opposite the battery receptacle (40a; Fig. 1), the actuator (16a/18a) moveable between a first position (first switching position-[0050]) and a second position (second switching position-[0050]), the actuator (16a/18a) including a first magnet (22a);
a sensor (20a) positioned adjacent the actuator (16a/18a), the sensor (20a) configured to detect a position of the first magnet relative to the sensor and to output an actuator signal representative of a position of the actuator based on the detected position of the first magnet ([0057]); and
a controller (76a) in electrical communication with the electric motor (54a) and the sensor (20a),
wherein the controller (76a) is configured to control the electric motor (54a) based on the actuator signal received from the sensor (20a) such that
the electric motor (54a) rotates in a first direction in response to actuation of the trigger (52a) when the actuator (16a/18a) is in the first position ([0050]-[0061]), and
the electric motor (54a) rotates in a second direction opposite the first direction in response to actuation of the trigger (52a) when the actuator (16a/18a) is in the second position ([0050]-[0061]).
Hiller doesn’t teach a second magnet, and the second magnet spaced from the first magnet.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the actuator of Hiller that has a first magnet to include a second magnet spaced from the first, since it has been held that the mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Further, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Using two spaced magnets would have been an obvious design choice to provide stronger, more distinct magnetic signal which improves detection reliability.
Hiller as modified does not disclose wherein the handle portion includes a grip spaced from the motor housing portion to define an aperture therebetween and a connecting portion extending between the grip and the motor housing portion; actuator located on the connecting portion.
Kiyohara in a related invention teaches a power tool (1) having a handle portion (7) includes a grip (Fig. 1; the handle has a grip 7) spaced from the motor housing portion (4) to define an aperture (aperture between 7 and 3; Fig. 1) therebetween and a connecting portion (2 and/or 5; Fig. 2) extending between the grip (7) and the motor housing portion (4); actuator (10) located on the connecting portion (2 and/or 5).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Hiller power tool by incorporating a handle portion includes a grip spaced from the motor housing portion to define an aperture therebetween and a connecting portion extending between the grip and the motor housing portion; having an actuator located on the connecting portion, as suggested by Kiyohara, in order to make use of a known alternative structure to provide increased operator comfort. In this instance, a skilled artisan would have recognized that the combination of Hiller with the teachings of Kiyohara involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Regarding claim 10, wherein the actuator (16a/18a of Hiller) is positioned on a top surface of the connecting portion (2 and/or 5 of Kiyohara as modified) opposite the battery receptacle (Fig. 1 of Hiller and/or Fig. 1 of Kiyohara).
Regarding claim 11, wherein the actuator is movable between the first position and the second position in a direction parallel to the motor axis ([0018] “the displacement element is mounted in a movable manner, in particular movable at least substantially parallel to the output axis”).
Regarding claim 15, wherein the actuator (16a/18a) is moveable to a third position ([0027]-“neutral switching position”), and wherein the controller is configured to control the electric motor based on the actuator signal received from the sensor such that rotation of the electric motor in response to actuation of the trigger is prevented when the actuator is in the third position ([0027]).
Claim 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiller et al. (US 20210229257 A1) in view of Kiyohara et al. (US 20160121466 A1), and in further view of Dey, IV et al. (US 20180091145 A1).
Regarding claim 12, Hiller as modified teaches the power tool according to claim 9, including the sensor (20a of Hiller) but does not disclose wherein the sensor is an inductive sensor, wherein movement of the actuator causes a change in inductance measured by the sensor, and wherein the actuator signal is representative of the inductance measured by the sensor.
Dey, IV in a related invention teaches a sensor (46, 50) is an inductive sensor ([0021]), wherein movement of the actuator (22) causes a change in inductance measured by the sensor (46, 50), and wherein the actuator signal is representative of the inductance measured by the sensor ([0021]-[0022]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the power tool of Hiller as modified to substitute the sensor for an inductive sensor as taught by Dey, IV in order to make use of a known alternative sensor for detecting position of an actuator. In this instance, a skilled artisan would have recognized that the substitution of the sensor from the Hiller reference for the inductive sensor of the Dey, IV reference involves no more than the predictable use of prior art elements according to their established functions as both are widely used for non-contact position sensing in power tools, and that one of ordinary skill in the art could have substituted one known element for another and the results of the substitution would have been predictable.
Claim 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiller et al. (US 20210229257 A1) in view of Kiyohara et al. (US 20160121466 A1), and in further view of Sakai et al. (US 20030159843 A1).
Regarding claim 14, Hiller as modified teaches the power tool according to claim 9 including a drive train (12a) but is silent regarding a drive assembly configured to convert a continuous rotational input from the electric motor to consecutive rotational impacts upon a workpiece, the drive assembly including an anvil extending from a front end of the front housing portion and a hammer for imparting the consecutive rotational impacts upon the anvil.
Sakai in a related invention teaches a power tool having a drive assembly (Fig. 2) configured to convert a continuous rotational input from the electric motor to consecutive rotational impacts upon a workpiece ([0044]), the drive assembly including an anvil (12) extending from a front end of the front housing portion (Fig. 2) and a hammer (11) for imparting the consecutive rotational impacts upon the anvil ([0043]-[0047]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the power tool of Hiller as modified to incorporate a drive assembly having a hammer and an anvil as taught by Sakai in order to make use of a known impact mechanism for achieving the known function of delivering repeated torque impacts.
Alternative rejection:
Claim 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kokinelis et al. (US 20140015383 A1).
Attention is directed to Applicants use of alternative language, “or” which means that only one of the requirements (A or B) is needed to meet the claim, In this instance case, the office is only required to meet the requirement of option A – First magnet.
Regarding claim 1, Kokinelis discloses a power tool (10) comprising:
a housing (12) including a motor housing portion (12 sub2), a handle portion (Fig. 1) extending from the motor housing portion (14, 16), and a battery receptacle (receptacle of 60) configured to receive a battery pack (60; [0029]);
an electric motor (14) supported in the motor housing portion (Fig. 2) and defining a motor axis (axis of 18);
a trigger (11) extending from the handle portion (Fig. 1);
an actuator (72) located on a top surface of the housing (12) opposite the battery receptacle (60), the actuator (72) moveable between a first position ([0031]) and a second position ([0030]-[0031]), the actuator (72) including a first magnet (78);
a sensor (92) positioned adjacent the actuator (72), the sensor (92) configured to detect a position of the first magnet relative to the sensor and to output an actuator signal representative of a position of the actuator based on the detected position of the first magnet ([0040]-[0041]); and
a controller (90) in electrical communication with the electric motor (14) and the sensor (92),
wherein the controller (90) is configured to control the electric motor (14) based on the actuator signal received from the sensor (92) such that
the electric motor (14) rotates in a first direction in response to actuation of the trigger (11) when the actuator (72) is in the first position ([0031]-[0032] and [0040]-[0041]), and
the electric motor (14) rotates in a second direction opposite the first direction in response to actuation of the trigger (11) when the actuator (72) is in the second position ([0031]-[0032] and [0040]-[0041]).
Kokinelis doesn’t teach a second magnet, and the second magnet spaced from the first magnet.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the actuator of Hiller that has a first magnet to include a second magnet spaced from the first, since it has been held that the mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Further, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Using two spaced magnets would have been an obvious design choice to provide stronger, more distinct magnetic signal which improves detection reliability.
Allowable Subject Matter
Claims 6, and 13 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.
With regards to Claim 16 would be allowable for reciting “wherein a first pole of the first magnet is arranged proximate the sensor when the actuator is in the first position, wherein a second pole of the second magnet is arranged proximate the sensor when the actuator is in the second position, and wherein the first pole and the second pole have opposite magnetic polarities.” The combination of the claimed limitations and its arrangement with respect to other structural elements of the claims are novel and found to be allowable over the prior art. The cited references taken singly or in combination do not anticipate or make obvious the Applicant's claimed invention.
Response to Arguments
Rejection under 35 USC 102:
Applicant's arguments, with respect to the amendment, filed on 04/27/2026, with respect to the rejection of claims 1 and 9 under 35 USC 102 have been fully considered but they are not persuasive.
(a) Applicants’ amendments add a second magnet.
This is not found persuasive because one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the actuator of Hiller that has a first magnet to include a second magnet spaced from the first, since it has been held that the mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Further, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Using two spaced magnets would have been an obvious design choice to provide stronger, more distinct magnetic signal which improves detection reliability. And because the prior art already solves the same problem (electronic forward/reverse control via magnet and sensor).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS E IGBOKWE whose telephone number is (571)272-1124. The examiner can normally be reached M-F 8 a.m. - 5 p.m..
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/NICHOLAS IGBOKWE/
Examiner, Art Unit 3731
/ANDREW M TECCO/Primary Examiner, Art Unit 3731
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