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 Arguments/Remarks filed on 30 March 2026.
Claims 1 – 9, 11 – 14, 17, and 19 – 24 are pending. Claims 10, 15 – 16, and 18 are cancelled by applicant.
Since this Office action introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p), this Office action is non-final.
Claim Objections
Claim 13 is objected because of the following informalities:
Regarding claim 13, the limitation, “including,”, should read, “including”.
Appropriate correction is required.
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 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.
Claims 1 – 3, 5, 13, 17, 19, and 20 – 22 are rejected under 35 U.S.C. 103 as being unpatentable over Limberg (US 9,289,886 B2), in view of Kubale (US 2021/0260734 A1), in further view of Nino (US 7,762,164 B2).
Regarding claim 1, Limberg discloses an impact tool comprising:
a housing (34, fig. 2);
a drive assembly (138, fig. 2) supported within the housing, the drive assembly including a hammer (146, fig. 2) and an anvil (150, fig. 2) configured to receive periodic rotational impacts from the hammer;
an output shaft (22, fig. 2) extending from the housing (As shown in figure 1), the output shaft rotatable about an axis (46, fig. 2) in a second direction (tightening or clockwise direction); and
a clutch assembly (186, fig. 2) coupled between the drive assembly and the output shaft, wherein the clutch assembly includes a first clutch member (194, fig. 2) coupled for co-rotation with the anvil, the first clutch member including a first clutch lug (202, fig. 2), and a second clutch member (190, fig. 2) coupled for co-rotation with the output shaft.
Limberg does not explicitly disclose the output shaft rotatable about an axis in a second direction opposite the first direction.
However, Kubale, in the same field of endeavor, teaches the output shaft (200, fig. 3) rotatable about an axis (32, fig. 3) in a first direction (loosening or counterclockwise direction) opposite a second direction (tightening or clockwise direction) ([0059] describes a forward/reverse actuator 260 moveable between a first position, in which an anvil 200 rotates about a motor axis 32 in a first (e.g. tightening) direction, and a second position, in which the anvil 200 rotate about the motor axis 32 in a second (e.g. loosening) direction).
Kubale is evidence that having the output shaft rotatable about an axis in a second direction opposite the first direction was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill would have had a reasonable expectation of success modifying the impact tool of Limberg with the output shaft rotatable about an axis in a second direction opposite the first direction, as taught by Kubale. Additionally, the one having ordinary skill in the art would have been motivated to modify the impact tool of Limberg with the output shaft rotatable about an axis in a second direction opposite the first direction, as taught by Kubale, in order to provide the capability to loosen a fastener from a workpiece thus providing additional functionality to the impact tool.
The modified Limberg does not explicitly disclose the clutch assembly configured to couple the output shaft for co-rotation with the anvil in the first direction and configured to selectively limit torque transfer from the anvil to the output shaft greater than a torque setting of the clutch assembly in the second direction, wherein a second clutch member having a second clutch lug, wherein the first clutch lug and the second clutch lug each includes a ramped surface oriented at an oblique angle relative to the axis and a step surface extending parallel to the axis, and wherein the step surface of the first clutch member is engageable with the step surface of the second clutch member to couple the output shaft for co-rotation with the anvil in the first direction.
However, Nino, which is reasonably pertinent to the problem faced by the inventor, teaches the clutch assembly (700, 800, fig. 2) configured to couple the output shaft for co-rotation with an input in the first direction (loosening or counterclockwise direction) (Col. 5, ll. 6 – 15) and to selectively limit torque transfer from the input to the output shaft greater than a torque setting of the clutch assembly in the second direction (tightening or clockwise direction) (Col. 4, ll. 55 – 65), wherein the clutch assembly includes a first clutch member (700, fig. 2) coupled for co-rotation with the input, the first clutch member including a first clutch lug (teeth 82 of an upper shank 800, fig. 2), and a second clutch member (800, fig. 2) coupled for co-rotation with the output shaft (8, fig. 2), the second clutch member including a second clutch lug (teeth 82 of a lower shank 700, fig. 2), wherein the first clutch lug and the second clutch lug each includes a ramped surface (66, fig. 6) oriented at an oblique angle relative to the axis and a step surface (68, fig. 6) extending parallel to the axis, and wherein the step surface of the first clutch member is engageable with the step surface of the second clutch member to couple the output shaft for co-rotation with the input in the first direction (Col. 5, ll. 6 – 15).
Nino is evidence that having the clutch assembly configured to couple the output shaft for co-rotation with the input in the first direction and to selectively limit torque transfer from the input to the output shaft greater than a torque setting of the clutch assembly in the second direction, wherein the clutch assembly includes a first clutch member coupled for co-rotation with the input, the first clutch member including a first clutch lug, and a second clutch member coupled for co-rotation with the output shaft, the second clutch member including a second clutch lug, wherein the first clutch lug and the second clutch lug each includes a ramped surface oriented at an oblique angle relative to the axis and a step surface extending parallel to the axis, and wherein the step surface of the first clutch member is engageable with the step surface of the second clutch member to couple the output shaft for co-rotation with the anvil in the first direction was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the clutch assembly of the modified Limberg with the structures and function of the clutch assembly of Nino. Moreover, the one having ordinary skill in the art would have been motivated to modify the clutch assembly of the modified Limberg with the structures and function of the clutch assembly of Nino in order to provide a substantial increase in torque to a fastener (Col. 4, ll. 4 – 10) and, when the impact tool is set in the first direction (loosening or counterclockwise direction), to ensure that any fastener seated by a tool can be unseated by having no torque-limiting feature.
Regarding claim 2, Limberg, as modified by Kubale, as further modified by Nino, discloses the invention as recited in claim 1.
Limberg discloses the clutch assembly (186, fig. 2) including a spring (242, fig. 2) configured to bias the second clutch member into engagement with the first clutch member.
Regarding claim 3, Limberg, as modified by Kubale, as further modified by Nino, discloses the invention as recited in claim 2.
Limberg discloses the torque setting (250, fig. 2) is adjustable by varying a preload on the spring.
Regarding claim 5, Limberg, as modified by Kubale, as further modified by Nino, discloses the invention as recited in claim 1.
The modified Limberg discloses the impact tool is operable to rotate a fastener in a tightening direction and a loosening direction, wherein the first direction corresponds to the loosening direction, and wherein the second direction corresponds to the tightening direction (Kubale – [0059] describes a forward/reverse actuator 260 moveable between a first position, in which an anvil 200 rotates about a motor axis 32 in a first (e.g. tightening) direction, and a second position, in which the anvil 200 rotate about the motor axis 32 in a second (e.g. loosening) direction).
Regarding claim 13, Limberg discloses n impact tool comprising:
a housing (34, fig. 2);
a drive assembly (138, fig. 2) supported within the housing, the drive assembly including a hammer (146, fig. 2) and an anvil (150, fig. 2) configured to receive periodic rotational impacts from the hammer;
an output shaft (22, fig. 2) extending from the housing (As shown in figure 1), the output shaft rotatable about an axis (46, fig. 2) in a second direction (tightening or clockwise direction); and
a clutch assembly (186, fig. 2) coupled between the drive assembly and the output shaft, the clutch assembly including a first clutch member (194, fig. 2) coupled for co-rotation with the anvil, the first clutch member including a plurality of first clutch lugs (202, fig. 2), and a second clutch member (190, fig. 2) coupled for co-rotation with the output shaft.
Limberg does not explicitly disclose the output shaft rotatable about an axis in a second direction opposite the first direction.
However, Kubale, in the same field of endeavor, teaches the output shaft (200, fig. 3) rotatable about an axis (32, fig. 3) in a first direction (loosening or counterclockwise direction) opposite a second direction (tightening or clockwise direction) ([0059] describes a forward/reverse actuator 260 moveable between a first position, in which an anvil 200 rotates about a motor axis 32 in a first (e.g. tightening) direction, and a second position, in which the anvil 200 rotate about the motor axis 32 in a second (e.g. loosening) direction).
Kubale is evidence that having the output shaft rotatable about an axis in a second direction opposite the first direction was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill would have had a reasonable expectation of success modifying the impact tool of Limberg with the output shaft rotatable about an axis in a second direction opposite the first direction, as taught by Kubale. Additionally, the one having ordinary skill in the art would have been motivated to modify the impact tool of Limberg with the output shaft rotatable about an axis in a second direction opposite the first direction, as taught by Kubale, in order to provide the capability to loosen a fastener from a workpiece thus providing additional functionality to the impact tool.
The modified Limberg does not explicitly disclose each first clutch lug including a ramped surface oriented at an oblique angle relative to the axis and a step surface extending parallel to the axis, and a plurality of second clutch lugs, wherein each second clutch lug includes a ramped surface oriented at an oblique angle relative to the axis and a step surface extending parallel to the axis, and wherein the plurality of first clutch lugs and the plurality of second clutch lugs oppose and engage one another when the output shaft rotates in the first direction, and wherein the ramped surfaces of the plurality of first clutch lugs are engageable with the ramped surfaces of the plurality of second clutch lugs to transfer torque from the first clutch member to the second clutch member in the second direction up to a torque setting of the clutch assembly.
However, Nino, which is reasonably pertinent to the problem faced by the inventor, teaches a clutch assembly (700, 800, fig. 2) that includes a first clutch member (700, fig. 2), the first clutch member includes a plurality of first clutch lugs (teeth 82 of an upper shank 800, fig. 2), each first clutch lug including a ramped surface (66, fig. 6) oriented at an oblique angle relative to the axis and a step surface (68, fig. 6) extending parallel to the axis, and a second clutch member (800, fig. 2) including a plurality of second clutch lugs (teeth 82 of a lower shank 700, fig. 2), wherein each second clutch lug including a ramped surface (66, fig. 6) oriented at an oblique angle relative to the axis and a step surface (68, fig. 6) extending parallel to the axis, and wherein the plurality of first clutch lugs and the plurality of second clutch lugs oppose and engage one another when the output shaft rotates in the first direction (loosening or counterclockwise direction) (Col. 5, ll. 6 – 15), and wherein the ramped surfaces of the plurality of first clutch lugs are engageable with the ramped surfaces of the plurality of second clutch lugs to transfer torque from the first clutch member to the second clutch member in the second direction (tightening or clockwise direction) up to a torque setting of the clutch assembly (Col. 4, ll. 55 – 65).
Nino is evidence that having each first clutch lug including a ramped surface oriented at an oblique angle relative to the axis and a step surface extending parallel to the axis, and a second clutch member including a plurality of second clutch lugs, wherein each second clutch lug including a ramped surface oriented at an oblique angle relative to the axis and a step surface extending parallel to the axis, and wherein the plurality of first clutch lugs and the plurality of second clutch lugs oppose and engage one another when the output shaft rotates in the first direction, and wherein the ramped surfaces of the plurality of first clutch lugs are engageable with the ramped surfaces of the plurality of second clutch lugs to transfer torque from the first clutch member to the second clutch member in the second direction up to a torque setting of the clutch assembly was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the clutch assembly of the modified Limberg with the structures and functions of the clutch assembly of Nino. Moreover, the one having ordinary skill in the art would have been motivated to modify the clutch assembly of the modified Limberg with the structures and functions of the clutch assembly of Nino in order to provide a substantial increase in torque to a fastener (Col. 4, ll. 4 – 10) and, when the impact tool is set in the first direction (loosening or counterclockwise direction), to ensure that any fastener seated by a tool can be unseated by having no torque-limiting feature.
Regarding claim 17, Limberg, as modified by Kubale, as further modified by Nino, discloses the invention as recited in claim 13.
The modified Limberg discloses the step surfaces (Nino – 68, fig. 6) of the plurality of first clutch lugs (Nino – teeth 82 of an upper shank 800, fig. 2) are engageable with the step surfaces (Nino – 68, fig. 6) of the plurality of second clutch lugs (Nino – teeth 82 of a lower shank 700, fig. 2) to couple the output shaft for co-rotation with the anvil in the first direction (loosening or counterclockwise direction) (Col. 5, ll. 6 – 15).
Regarding claim 19, Limberg, as modified by Kubale, as further modified by Nino, discloses the invention as recited in claim 13.
The modified Limberg discloses the ramped surfaces (Nino – 66, fig. 6) of the plurality of first clutch lugs (Nino – teeth 82 of an upper shank 800, fig. 2) are configured to slide along the ramped surfaces (Nino – 66, fig. 6) of the plurality of second clutch lugs (Nino – teeth 82 of a lower shank 700, fig. 2) if resistance on the output shaft exceeds the torque setting of the clutch assembly (Col. 4, ll. 55 – 65).
Regarding claim 20, Limberg, as modified by Kubale, as further modified by Nino, discloses the invention as recited in claim 13.
Limberg discloses the second clutch member (190, fig. 2) is configured to translate along the axis away from the first clutch member (194, fig. 2) in response to the first clutch member rotating relative to the second clutch member (Col. 7, ll. 8 – 30).
Regarding claim 21, Limberg, as modified by Kubale, as further modified by Nino, discloses the invention as recited in claim 13.
Limberg discloses the clutch assembly (186, fig. 2) includes a spring (242, fig. 2) configured to bias the second clutch member into engagement with the first clutch member.
Regarding claim 22, Limberg, as modified by Kubale, as further modified by Nino, discloses the invention as recited in claim 13.
Limberg discloses the torque setting (250, fig. 2) is adjustable by varying a preload on the spring.
Claims 4 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Limberg (US 9,289,886 B2), in view of Kubale (US 2021/0260734 A1), in further view of Nino (US 7,762,164 B2), in further view of Kelleher (US 9,494,200 B2).
Regarding claims 4 and 23, Limberg, as modified by Kubale, as further modified by Nino, discloses the invention as recited in claims 2 and 13, respectively.
Limberg discloses the spring (242, fig. 2) is a compression spring.
The modified Limberg does not disclose the spring is a wave spring.
However, Kelleher, in the same field of endeavor, teaches two embodiments of a clutch assembly (first embodiment of clutch mechanism 18; figs 3 – 16, and second embodiment of clutch mechanism 18; figs 17 – 20) wherein in the first embodiment, the spring is a compression spring (308, fig. 3) to vary a preload of the clutch assembly and in the second embodiment, the spring is a wave spring (508, fig. 3) to vary a preload of the clutch assembly.
Kelleher is evidence that having the spring as the wave spring was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Additionally, Kelleher is evidence that the compression spring and the wave spring were functional equivalents to vary the preload of the clutch apparatus. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success substituting the compression spring of Limberg for the wave spring of Kelleher to achieve the predicable result of varying the preload of the clutch apparatus. Moreover, the one having ordinary skill in the art would have been motivated substituting the compression spring of Limberg for the wave spring of Kelleher to have a more compact impact tool. That is, wave springs are more compact (using up to 50% less axial height for the same force) and offer axial space savings to the impact tool.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Limberg (US 9,289,886 B2), in view of Kubale (US 2021/0260734 A1), in further view of Nino ‘164 (US 7,762,164 B2), in further view of Nino ‘854 (US 10,219,854 B2).
Regarding claim 14, Limberg, as modified by Kubale, as further modified by Nino ‘164, discloses the invention as recited in claim 13.
The modified Limberg does not explicitly disclose the plurality of first clutch lugs are spaced apart in 90-degree increments, and wherein the plurality of second clutch lugs are spaced apart in 90-degree increments.
However, Nino ‘854, which is reasonably pertinent to the problem faced by the inventor, teaches the plurality of first clutch lugs (360, fig. 3) are spaced apart in 90-degree increments, and wherein the plurality of second clutch lugs (310, fig. 3) are spaced apart in 90-degree increments (Figures 5A-C shows a variety of gear configuration wherein each gear configuration shows a number of clutch lugs equally spaced about a clutch member 510, 610, 710. Please note, col. 13, ll. 3 – 7 describes the figures 5A-C showing both the first clutch members and the second clutch members. Claim 7 of Nino ‘854 describes the four clutch lugs on a clutch member wherein the clutch member having four clutch lugs would have the clutch lugs equally spaced apart in 90-degree increments).
Nino ‘854 is evidence that having the plurality of first clutch lugs spaced apart in 90-degree increments, and having the plurality of second clutch lugs spaced apart in 90-degree increments was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the number and spacing of the clutch lugs on the first and second clutch members of the modified Limberg to be four clutch lugs equally spaced apart in 90-degree increments on the first and second clutch members, as taught by Nino ‘854. Moreover, the one having ordinary skill in the art would have been motivated to modify the number and spacing of the clutch lugs on the first and second clutch members of the modified Limberg to be four clutch lugs equally spaced apart in 90-degree increments on the first and second clutch members, as taught by Nino ‘854, because the resulting backlash accommodates thermal expansion when clutch component heat up during operation, preventing the surfaces from being forced together and reducing the risk of overheating and damage, and facilitates assembly and maintenance wherein the clearance between clutch lugs can make assembly easier and allow for minor adjustments during maintenance, ensuring the clutch operates within design tolerances.
Allowable Subject Matter
Claims 6 – 9 and 11 – 12 are allowed.
Claim 24 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding independent claim 6 and dependent claim 24: the subject matter of the impact 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 7 – 9 and 10 – 12 are also allowable over the prior art as they depend from allowable claim 6.
Claims 6 and 24 include the following limitations which, in combination with the other limitations of claims 6 and 24, are what make the subject matter allowable over the prior art, as the subject matter of claims 6 and 24 is neither taught or suggested by the prior art:
“the second clutch member is slidable along the output shaft when the clutch assembly slips due to a torque exceeding the first set torque limit of the clutch assembly”
The closest prior art Limberg (US 9,289,886 B2), in view of Kubale (US 2021/0260734 A1), in further view of Puzio (US 7,806,636 B2). Limberg discloses the second output member fixed to the output shaft (via using an interference or press-fit, fasteners, adhesives, or by welding) thus the second clutch member is not slidable along the output shaft when the clutch assembly slips due to a torque exceeding the first set torque limit of the clutch assembly as required by the claim. The prior art of record does not anticipate or make obvious this limitation. 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 30 March 2026, with respect to the claim objections of claims 2, 10 – 13, 15 – 16, and 19 – 20 have been fully considered and are persuasive. The claim objections of claims 2, 10 – 13, 15 – 16, and 19 – 20 has been withdrawn.
Applicant’s amendments and arguments, filed 30 March 2026, with respect to the rejection of claim 17 under 35 USC 112(b) have been fully considered and are persuasive. The rejection of claim 17 under 35 USC 112(b) has been withdrawn.
Applicant’s amendments and arguments, filed 30 March 2026, with respect to the rejection of claim 1 – 6 and 13 – 16 under 35 USC 112(b) have been fully considered. However, upon an updated search and further consideration, a new ground(s) of rejection is made in view of Limberg (US 9,289,886 B2), in view of Kubale (US 2021/0260734 A1), in further view of Nino (US 7,762,164 B2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Puzio (US 7,806,636 B2) discloses a clutch assembly coupled between the drive assembly and the output shaft. The clutch assembly includes a first clutch member with first clutch lugs and a second clutch member with second clutch lugs. The clutch assembly operates to limit a torque transfer from the drive assembly to the output shaft to a first set torque limit in the first direction, and to limit the torque transfer from the drive assembly to the output shaft to a second set torque limit in the second direction, wherein the second set torque limit is different than the first set torque limit.
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.
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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.
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/DAVID G SHUTTY/Examiner, Art Unit 3731
28 July 2026
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