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 .
Status of Claims
This office action is in response to Applicant’s Request for Reconsideration filed on 18 May 2026.
Claims 1 – 21 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 18 May 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Examiner’s Note
Regarding claims 1 and 12 and the following limitations amended to the claims after the filing of the original disclosure:
“the controller is configured to control power delivered to the brushless motor with a first non-zero target rotational speed using closed loop control for a predetermined time period in response to the controller detecting the first impact or that the motor speed has dropped below the speed threshold value” (claim 1)
“controlling power delivered to the motor to have a first non-zero target rotational speed using closed loop control for a predetermined time period responsive to detecting the first impact or responsive to detecting the motor speed has dropped below the speed threshold value” (claim 12)
The examiner notes that the specification does not explicitly disclose the terms, “in response to” or “responsive to” in relation to these claims. Instead, the specification consistently uses the term, “after”:
The controller may be configured to control power delivered to the motor with a first target rotational speed for a predetermined time period after the controller detects the first impact or that the motor speed has dropped below the speed threshold value ([0029]) (emphasis added)
The method may further comprise controlling power delivered to the motor with a first target rotational speed for a predetermined time period after the controller detects the first impact or that the motor speed has dropped below the speed threshold value ([0032]) (emphasis added)
Referring to FIG. 23A, the controller 40 is then configured to control the motor 20 to have a first non-zero target rotational speed ω-1 using closed loop control for a predetermined time period Δt after the finite number of impacts is detected ([00176]) (emphasis added)
Please note, while the term, “after”, usually indicates a sequence in time, the term, “after”, can indicate a response or reaction, especially when it’s used to describe a reaction to something that happened earlier. This seems to be the case with the recitations of “after” in [0029], [0032], and [00176] indicating a “response to” or “responsive to” the controller detecting the first impact or a finite number of impacts. Due to these recitations of “after” in [0029], [0032], and [00176], the examiner finds support in the specification for the amended limitations.
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.
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 – 11 and 21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 – 11 and 21 of U.S. Patent No. 12,212,264. Although the claims at issue are not identical, they are not patentably distinct from each other because, as shown in the chart below, claims 1 – 11 and 21 of applicant’s invention read on or are anticipated by claims 1 – 11 and 21 of U.S. Patent No. 12,212,264.
Application 18/984,690
(Claim 1) An impact power tool comprising:
a housing;
a brushless motor received in the housing;
a controller configured to control power delivery to the brushless motor in response to actuation of a power switch;
an impact mechanism configured to be driven by the brushless motor; and
an output spindle configured to receive rotational impacts from the impact mechanism to rotate the output spindle,
the impact mechanism configured to selectively apply the rotational impacts to the output spindle when a torque on the output spindle exceeds a threshold,
wherein the controller is configured to detect a first impact of the rotational impacts or to detect when a motor speed drops below a speed threshold value,
wherein the controller is configured to control power delivered to the brushless motor with a first non-zero target rotational speed using closed loop control for a predetermined time period in response to the controller detecting the first impact or that the motor speed has dropped below the speed threshold value, and
wherein the controller is configured to control power delivered to the motor with a second non-zero target rotational speed using the closed loop control after the predetermined time period, and
wherein the first non-zero target rotational speed is less than the second non-zero target rotational speed.
(Claim 2) The controller is configured to control the brushless motor using open loop control for a first time period until the first impact of the rotational impacts is detected or until the motor speed dropping below the speed threshold value is detected, and wherein the first time period begins when the power switch is actuated and ends when the first impact of the rotational impacts is detected or when the motor speed dropping below the speed threshold value is detected.
(Claim 3) During the first time period, the controller is configured to control the motor using the open loop control and at a constant conduction band value and a constant angle advance value.
(Claim 4) The predetermined time period is factory set or adjustably set by a user.
(Claim 5) The controller is configured to control the brushless motor to have the first non-zero target rotational speed using a constant conduction band value and a constant angle advance value during the predetermined time period.
(Claim 6) After the predetermined time period, the controller is configured to control the motor at the second non-zero target rotational speed at one or more conduction band values and angle advance values for one or more subsequent time periods.
(Claim 7) The one or more subsequent time periods comprises a first subsequent time period that is predetermined and a second subsequent time period that ends when the power switch is released by the user.
(Claim 8) The one or more subsequent time periods comprises a plurality of subsequent time periods and the motor is controlled at successively increasing conduction band values or successively increasing angle advance values during each of successive subsequent time periods.
(Claim 9) The one or more subsequent time periods comprises a single subsequent time period that ends when the power switch is released by a user.
(Claim 10) A sensor configured to sense the motor speed and/or motor current supplied to the brushless motor, and wherein the controller is configured to monitor changes or variations in the sensed motor speed and/or the sensed motor current to detect the first impact.
(Claim 11) The sensor includes a torque transducer, a torque sensor, an audio sensor, a vibration sensor, a motor current sensor, and/or a motor speed sensor.
(Claim 21) An impact power tool comprising:
a housing;
a brushless motor received in the housing;
a controller configured to control power delivery to the brushless motor in response to actuation of a power switch;
an impact mechanism configured to be driven by the brushless motor; and
an output spindle configured to receive rotational impacts from the impact mechanism to rotate the output spindle,
the impact mechanism configured to selectively apply the rotational impacts to the output spindle when a torque on the output spindle exceeds a threshold,
wherein the controller is configured to detect a first impact of the rotational impacts or to detect when a motor speed drops below a speed threshold value,
wherein the controller is configured to control power delivered to the brushless motor using open loop control upon actuation of the power switch and until the first impact is detected or the motor speed drops below the speed threshold value, and
wherein the controller is configured to, upon detecting the first impact or that the motor speed has dropped below the speed threshold value, control power delivered to the brushless motor with a first non-zero target rotational speed using closed loop control for a predetermined time period.
U.S. 12,212,264
(Claim 1) An impact power tool comprising:
a housing;
a brushless motor received in the housing;
a controller configured to control power delivery to the motor in response to actuation of a power switch;
an impact mechanism configured to be driven by the motor; and
an output spindle configured to receive rotational impacts from the impact mechanism to rotate the output spindle,
the impact mechanism configured to selectively apply the rotational impacts to the output spindle when a torque on the output spindle exceeds a threshold,
wherein the controller is configured to detect a first impact of the rotational impacts or to detect when [a] motor speed drops below a speed threshold value,
wherein the controller is configured to cause power to be delivered to the motor so that the motor runs at a first no load speed before the controller detects the first impact or that the motor speed has dropped below the speed threshold value;
wherein the controller is configured to control power delivered to the motor with a first non-zero target rotational speed using closed loop control for a predetermined time period after the controller detects the first impact or that the motor speed has dropped below the speed threshold value, and
wherein the controller is configured to control power delivered to the motor with a second non-zero target rotational speed using the closed loop control after the predetermined time period, and
wherein the first non-zero target rotational speed is less than the first no load speed and is less than the second non-zero target rotational speed.
(Claim 2) The controller is configured to control the motor using open loop control for a first time period until the first impact of the rotational impacts is detected or until the motor speed dropping below the speed threshold value is detected, and wherein the first time period begins when the power switch is actuated and ends when the first impact of the rotational impacts is detected or when the motor speed dropping below the speed threshold value is detected.
(Claim 3) During the first time period, the controller is configured to control the motor using the open loop control and at a constant conduction band value and a constant angle advance value.
(Claim 4) The predetermined time period is factory set or adjustably set by a user.
(Claim 5) The controller is configured to control the motor to have the first non-zero target rotational speed using a constant conduction band value and a constant angle advance value during the predetermined time period.
(Claim 6) after the predetermined time period, the controller is configured to control the motor at the second non-zero target rotational speed at one or more conduction band values and angle advance values for one or more subsequent time periods.
(Claim 7) the one or more subsequent time periods comprises a first subsequent time period that is predetermined and a second subsequent time period that ends when the power switch is released by the user.
(Claim 8) the one or more subsequent time periods comprises a plurality of subsequent time periods and the motor is controlled at successively increasing conduction band values or successively increasing angle advance values during each of the successive subsequent time periods.
(Claim 9) the one or more subsequent time periods comprises a single subsequent time period that ends when the power switch is released by a user.
(Claim 10) A sensor configured to sense at least one of the motor speed of the motor and/or or a motor current supplied to the motor, and wherein the controller is configured to monitor changes or variations in the at least one of the sensed motor speed and/or or the sensed motor current to detect the first impact.
(Claim 11) The sensor includes a torque transducer, a torque sensor, an audio sensor, a vibration sensor, a motor current sensor, and/or a motor speed sensor.
(Claim 1) An impact power tool comprising:
a housing;
a brushless motor received in the housing;
a controller configured to control power delivery to the motor in response to actuation of a power switch;
an impact mechanism configured to be driven by the motor; and
an output spindle configured to receive rotational impacts from the impact mechanism to rotate the output spindle,
the impact mechanism configured to selectively apply the rotational impacts to the output spindle when a torque on the output spindle exceeds a threshold,
wherein the controller is configured to detect a first impact of the rotational impacts or to detect when the motor speed drops below a speed threshold value,
wherein the controller is configured to cause power to be delivered to the motor so that the motor runs at a first no load speed before the controller detects the first impact or that the motor speed has dropped below the speed threshold value;
wherein the controller is configured to control power delivered to the motor with a first non-zero target rotational speed using closed loop control for a predetermined time period after the controller detects the first impact or that the motor speed has dropped below the speed threshold value, and
wherein the controller is configured to control power delivered to the motor with a second non-zero target rotational speed using the closed loop control after the predetermined time period, and
wherein the first non-zero target rotational speed is less than the first no load speed and is less than the second non-zero target rotational speed.
Claim 1 of application 18/984,960 recites, “in response to”, wherein claim 1 of U.S. 12,212,264 recites, “after”. Please note, while the term, “after”, usually indicates a sequence in time, the term, “after”, can indicate a response or reaction, especially when it’s used to describe a reaction to something that happened earlier. The specification of U.S. 12,212,264 consistently uses the term, “after”:
The controller may be configured to control power delivered to the motor with a first target rotational speed for a predetermined time period after the controller detects the first impact or that the motor speed has dropped below the speed threshold value (Col. 6, l. 65 – col. 7, l. 2) (emphasis added)
The method may further comprise controlling power delivered to the motor with a first target rotational speed for a predetermined time period after the controller detects the first impact or that the motor speed has dropped below the speed threshold value (Col. 7, ll. 54 – 58) (emphasis added)
Referring to FIG. 23A, the controller 40 is then configured to control the motor 20 to have a first non-zero target rotational speed ω-1 using closed loop control for a predetermined time period Δt after the finite number of impacts is detected (Col. 37, ll. 38 – 42) (emphasis added)
The recitations of “after” in Col. 6, l. 65 – col. 7, l. 2; Col. 7, ll. 54 – 58; and Col. 37, ll. 38 – 42 seems to indicate a “response to” or “responsive to” the controller detecting the first impact or a finite number of impacts. Since terms in the claims are read in light of the Specification, the term, “after”, in claim 1 of U.S. 12,212,264, is interpreted as “response to” or “responsive to”. Therefore, the recitation of “response to” in claim 1 in application 18/984,690 is not patentably distinct from the recitations of “after” in claims 1 and 12 in U.S. 12,212,264.
Claims 1 – 3, 5, and 10 of application 18/984,690 recite, “the brushless motor”, wherein claims 1 – 3, 5, and 10 of U.S. 12,212,264 recite, “the motor”. However, claim 1 of U.S. 12,212,264 recites, “a brushless motor”, thus while subsequent iterations recite, “the motor”, their antecedent basis, “a brushless motor”, indicates these subsequent iterations refer to a brushless motor. Therefore, the recitations of “the brushless motor” in claims 1 – 3, 5, and 10 in application 18/984,690 are not patentably distinct from the recitations of “the motor” in claims 1 – 3, 5, and 10 in U.S. 12,212,264.
Application 18/984,690
(Claim 21)
wherein the controller is configured to, upon detecting the first impact or that the motor speed has dropped below the speed threshold value, control power delivered to the brushless motor with a first non-zero target rotational speed using closed loop control for a predetermined time period.
U.S. 12,212,264
(Rearranged Claim 1)
wherein the controller is configured to, after the controller detects the first impact or that the motor speed has dropped below the speed threshold value, control power delivered to the motor with a first non-zero target rotational speed using closed loop control for a predetermined time period,
Claim 21 of application 18/984,690 recites, “upon detecting the first impact or that the motor speed has dropped below the speed threshold value, control power delivered to the brushless motor with a first non-zero target rotational speed using closed loop control for a predetermined time period”, wherein claim 1 of U.S. 12,212,264 recites, “wherein the controller is configured to control power delivered to the motor with a first non-zero target rotational speed using closed loop control for a predetermined time period after the controller detects the first impact or that the motor speed has dropped below the speed threshold value”. Please note, by rearranging claim 1 of U.S. 12,212,264 to read, “after the controller detects the first impact or that the motor speed has dropped below the speed threshold value”, “the controller is configured to control power delivered to the motor with a first non-zero target rotational speed using closed loop control for a predetermined time period”, the rearranged claim follows the same format as claim 21 of application 18/984,690 having an identical independent clause with claim 21 of application 18/984,690 except for the terms, “the brushless motor”, in claim 21 of application 18/984,690 and the term, “the motor” (see above). However, using the same reasoning as paragraph 10 of this Office action, the recitation of “the brushless motor” in claim 21 in application 18/984,690 is not patentably distinct from the recitations of “the motor” in claims 1 in U.S. 12,212,264. As for the two prepositional phrases, “upon detecting the first impact or that the motor speed has dropped below the speed threshold value” in claim 21 in application 18/984,690 and “after the controller detects the first impact or that the motor speed has dropped below the speed threshold value” in claim 1 of U.S. 12,212,264, using the reasoning as paragraph 9 of this Office action that the term, “after” in claims 1 of U.S. 12,212,264 is interpreted as “response to” or “responsive to”, the recitation of “upon detecting the first impact or that the motor speed has dropped below the speed threshold” in claim 21 in application 18/984,690 is not patentably distinct from the recitation of “after the controller detects the first impact or that the motor speed has dropped below the speed threshold’ in claim 1 in U.S. 12,212,264.
Claims 12 – 20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 12 – 20 of U.S. Patent No. 12,212,264 in view of U.S. Pre-Grant Publication No. 2016/0250738 A1 (“Leh”). Although the claims at issue are not identical, they are not patentably distinct from each other because, as shown in the chart below, claims 12 – 20 of applicant’s invention read on or are made obvious by claims 12 – 20 of U.S. Patent No. 12,212,264 in view of U.S. Pre-Grant Publication No. 2016/0250738 A1 (“Leh”).
Application 18/984,690
(Claim 12) A method for controlling power delivery to a motor in an impact power tool, the method comprising:
receiving an input from a user-actuatable power switch corresponding to a power to be delivered to the motor;
detecting a first impact of an impact mechanism of the impact power tool or when the motor speed drops below a speed threshold value;
controlling power delivered to the motor to have a first non-zero target rotational speed using closed loop control for a predetermined time period responsive to detecting the first impact or responsive to detecting the motor speed has dropped below the speed threshold value; and
controlling power delivered to the motor with a second non-zero target rotational speed using closed loop control after the predetermined time period,
wherein the first non-zero target rotational speed is less than the second non-zero target rotational speed.
(Claim 13) Controlling the motor using open loop control for a first time period until the first impact is detected or until the motor speed dropping below the speed threshold value is detected, and wherein the first time period begins when the user-actuatable power switch is actuated and ends when the first impact is detected or when the motor speed dropping below the speed threshold value is detected.
(Claim 14) During the first time period, controlling the motor using the open loop control and at a constant conduction band value and a constant angle advance value.
(Claim 15) The predetermined time period is factory set or adjustably set by a user.
(Claim 16) During the predetermined time period, controlling the motor to have the first non-zero target rotational speed using a constant conduction band value and a constant angle advance value.
(Claim 17) After the predetermined time period, controlling the motor at the second non-zero target rotational speed at one or more conduction band values and angle advance values for one or more subsequent time periods.
(Claim 18) The one or more subsequent time periods comprises a first subsequent time period that is predetermined and a second subsequent time period that ends when the use-actuatable power switch is released by the user.
(Claim 19) The one or more subsequent time periods comprises a plurality of subsequent time periods, wherein controlling the motor at successively increasing conduction band values or successively increasing angle advance values during each of successive subsequent time periods.
(Claim 20) Sensing the motor speed and/or motor current supplied to the motor, and monitoring changes or variations in the sensed motor speed and/or the sensed motor current to detect the first impact.
U.S. 12,212,264
(Claim 12) A method for controlling power delivery to a motor in an impact power tool, the method comprising:
receiving an input from a user-actuatable power switch corresponding to a power to be delivered to the motor;
delivering power to the motor so that the motor runs at a first no load speed;
subsequently detecting a first impact of rotational impacts or when a motor speed drops below a speed threshold value;
controlling power delivered to the motor to have a first non-zero target rotational speed using closed loop control for a predetermined time period after detecting the first impact or after detecting the motor speed has dropped below the speed threshold value; and
controlling power delivered to the motor with a second non-zero target rotational speed using closed loop control after the predetermined time period,
wherein the first non-zero target rotational speed is less than the first no load speed and less than the second non-zero target rotational speed.
(Claim 13) Controlling the motor using open loop control for a first time period until the first impact of the rotational impacts is detected or until the motor speed dropping below the speed threshold value is detected, and wherein the first time period begins when the power switch is actuated and ends when the first impact of the rotational impacts is detected or when the motor speed dropping below the speed threshold value is detected.
(Claim 14) During the first time period, controlling the motor using the open loop control and at a constant conduction band value and a constant angle advance value.
(Claim 15) The predetermined time period is factory set or adjustably set by a user.
(Claim 16) Controlling the motor to have the first non-zero target rotational speed using a constant conduction band value and a constant angle advance value during the predetermined time period.
(Claim 17) After the predetermined time period, controlling the motor at the second non-zero target rotational speed at one or more conduction band values and angle advance values for one or more subsequent time periods.
(Claim 18) The one or more subsequent time periods comprises a first subsequent time period that is predetermined and a second subsequent time period that ends when the power switch is released by the user.
(Claim 19) The one or more subsequent time periods comprises a plurality of subsequent time periods, wherein controlling the motor at successively increasing conduction band values or successively increasing angle advance values during each of the successive subsequent time periods.
(Claim 20) At least one of the motor speed of the motor or a motor current supplied to the motor, and wherein monitoring changes or variations in the at least one of the sensed motor speed or the sensed motor current to detect the first impact.
Claim 12 of application 18/984,690 recites, “a first impact of an impact mechanism of the impact power tool”. Claim 12 of U.S. 12,212,264 recites, “a first impact of rotational impacts” wherein the preamble of claim 12 of U.S. 12,212,264 further recites that this is a method for “an impact power tool”. Thus, claim 12 of U.S. 12,212,264 does not recite an impact mechanism providing at least a first impact of the impact power tool. However, Leh (US 2016/0250738 A1) teaches an impact tool (10, fig. 2) having an impact mechanism (24, fig. 2) that functions to provide at least a first impact ([0048]; “a rotational impact”) of the impact power tool (10, fig. 2) ([0048]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified impact power tool of application 18/984,690 with the impact mechanism that functions to provide at least the first impact of the impact tool, as taught by Leh, with the motivation to provide an impact mechanism in an impact power tool that can generate high torque output with increased speed and efficiency. Additionally, it would have been obvious to one having ordinary skill in the art upon reading the claim, “detecting a first impact of rotational impacts [of the impact power tool]” that there is a mechanism within the impact power tool to provide at least the rotational impacts and would look to Leh for the structure of such a mechanism.
Claim 12 of application 18/984,960 recites, “responsive to”, wherein claim 12 of U.S. 12,212,264 recites, “after”. Please note, while the term, “after”, usually indicates a sequence in time, the term, “after”, can indicate a response or reaction, especially when it’s used to describe a reaction to something that happened earlier. The specification of U.S. 12,212,264 consistently uses the term, “after”:
The controller may be configured to control power delivered to the motor with a first target rotational speed for a predetermined time period after the controller detects the first impact or that the motor speed has dropped below the speed threshold value (Col. 6, l. 65 – col. 7, l. 2) (emphasis added)
The method may further comprise controlling power delivered to the motor with a first target rotational speed for a predetermined time period after the controller detects the first impact or that the motor speed has dropped below the speed threshold value (Col. 7, ll. 54 – 58) (emphasis added)
Referring to FIG. 23A, the controller 40 is then configured to control the motor 20 to have a first non-zero target rotational speed ω-1 using closed loop control for a predetermined time period Δt after the finite number of impacts is detected (Col. 37, ll. 38 – 42) (emphasis added)
The recitations of “after” in Col. 6, l. 65 – col. 7, l. 2; Col. 7, ll. 54 – 58; and Col. 37, ll. 38 – 42 seems to indicate a “response to” or “responsive to” the controller detecting the first impact or a finite number of impacts. Since terms in the claims are read in light of the Specification, when the term, “after”, in claim 12 of U.S. 12,212,264, is interpreted as “response to” or “responsive to”. Therefore, the recitation of “responsive to” in claim 12 in application 18/984,690 is not patentably distinct from the recitations of “after” in claim 12 in U.S. 12,212,264.
Claims 13 and 18 of application 18/984,690 recite, “the user-actuatable power switch”, wherein claims 13 and 18 of U.S. 12,212,264 recite, “the power switch”. However, claim 1 of U.S. 12,212,264 recites, “a user-actuatable power switch”, thus while subsequent iterations recite, “the power switch”, their antecedent basis, “a user actuatable power switch”, indicates these subsequent iterations refer to a user actuatable power switch. Therefore, the recitations of “the user actuatable power switch” in claims 1 – 3, 5, and 10 in application 18/984,690 are not patentably distinct from the recitations of “the motor” in claims 1 – 3, 5, and 10 in U.S. 12,212,264.
Allowable Subject Matter
Claims 1 – 21 would be allowable if a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome the non-statutory double patenting and a reply requesting reconsideration of this Office action is filed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding independent claim 1, 12, and 21: the subject matter of the impact power tool and the method for controlling power delivery to a motor in an impact power tool is allowable over the prior art because of the arrangement of the combination of structural limitations set forth in the claim and their functional relationship to one another. Dependent claims 2 – 11 and dependent claims 13 – 20 are also allowable over the prior art as they depend from allowable claims 1 and 12, respectively.
Claims 1, 12, and 21 includes the following limitations which, in combination with the other limitations of claims 1, 12, and 24, respectively, are what make the subject matter allowable over the prior art, as the subject matter of claim 1, 12, and 21 is neither taught or suggested by the prior art:
“the controller is configured to control power delivered to the brushless motor with a first non-zero target rotational speed using closed loop control for a predetermined time period in response to the controller detecting the first impact or that the motor speed has dropped below the speed threshold value” (claim 1)
“controlling power delivered to the motor to have a first non-zero target rotational speed using closed loop control for a predetermined time period responsive to detecting the first impact or responsive to detecting the motor speed has dropped below the speed threshold value” (claim 12)
“the controller is configured to, upon detecting the first impact or that the motor speed has dropped below the speed threshold value, control power delivered to the brushless motor with a first non-zero target rotational speed using closed loop control for a predetermined time period” (Claim 21)
The closest prior art is Ishikawa (US 2016/0107297 B2). Ishikawa discloses a low-speed mode wherein the controller is configured to control power delivered to the brushless motor with a first non-zero target rotational speed using closed loop control for a predetermined time period in response to the controller detecting a load to the motor prior to a first impact of an impact mechanism – not in response to the controller detecting the first impact of the impact mechanism or that the motor speed has dropped below the speed threshold value as required by the claims. The prior art of record does not make obvious these limitations. Thus, it is examiner' s opinion that it would not have been obvious to one having ordinary skill in the art at the time of the invention to combine or modify the prior art in order to arrive at applicant's invention as claimed.
Response to Arguments
Applicant’s amendments and arguments, filed 18 May 2026, with respect to the claim objection of claims 2, 10, 13, and 20 have been fully considered and are persuasive. The claim objection of claims 2, 10, 13, and 20 has been withdrawn.
Applicant’s arguments, filed 18 May 2026, with respect to the rejection claims 1 – 20 for non-statutory double patenting have been fully considered. The examiner acknowledges the applicant’s request for the non-statutory double patenting rejection claims 1 – 20 to be held in abeyance until allowable subject matter is identified.
Applicant’s amendments and arguments, filed 18 May 2026, with respect to the rejection of claims 1 – 20 under 35 U.S.C. §112(b) have been fully considered and are persuasive. The rejection of claims 1 – 20 under 35 U.S.C. §112(b) has been withdrawn.
Applicant’s amendments and arguments, filed 18 May 2026, with respect to the rejection of claims 1, 4 – 12, and 15 – 20 under 35 U.S.C. §102(a)(1) and 35 U.S.C. §102(a)(2) and the rejection of claims 2 – 3 and 13 – 14 under 35 U.S.C. §103 have been fully considered and are persuasive. The rejection of claims 1, 4 – 12, and 15 – 20 under 35 U.S.C. §102(a)(1) and 35 U.S.C. §102(a)(2) and the rejection of claims 2 – 3 and 13 – 14 under 35 U.S.C. §103 have been withdrawn.
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 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 DAVID G SHUTTY whose telephone number is (571)272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday.
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, SHELLEY SELF can be reached on 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID G SHUTTY/Examiner, Art Unit 3731
31 July 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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