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 Amendment/Request for Reconsideration filed on 19 February 2026.
Claims 1 – 20 are pending. Claims 15 – 20 are withdrawn due to a restriction requirement.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11 March 2026 was filed after the mailing date of the nonfinal office action on 19 November 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the Specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a retainer… configured to receive at least a portion of a tool bit of the power tool” in claims 1 and 8.
“a reciprocation drive assembly… configured to convert torque from the electric motor to reciprocating motion of a drive piston” in claims 1 and 8.
“retention member” in claims 6 and 8.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
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 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over Frauhammer (US 6 116 352 A) in view of Thorson (US 2022/0371172 A1), or Frauhammer (US 6 116 352 A), in view of Thorson (US 2022/0371172 A1), in further view of Takagi (US 5,346,023 A).
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Regarding claim 1, Frauhammer discloses a power tool comprising:
a housing (11, fig. 2);
a motor (Col. 2, ll. 3 – 6; “a…drive device”) supported in the housing;
a spindle (13, fig. 2) supported by the housing;
a retainer (29, fig. 2) at least partially received into the spindle and configured to receive at least a portion (17’, fig. 2) of a tool bit (19’, fig. 2) of the power tool;
a reciprocation drive assembly (piston rod 14 and col. 2, ll. 7 – 9; “a…eccentric”) coupled to the motor and configured to convert torque from the motor to reciprocating motion of a drive piston (12, fig. 2) that is at least partially received within the spindle for reciprocation therein along a reciprocation axis (axis A, annotated fig. 2);
a striker (15, fig. 2) received within the spindle for reciprocation in response to reciprocation of the drive piston; and
an anvil (anvil 16 and o-ring B, annotated fig. 2 ) configured as a unitary component (The plain meaning of the term, “unitary”, is, “having the character of a unit” – Merriam Webster dictionary, wherein fig. 2 shows the anvil 16 and the o-ring B axially reciprocating as a unit and acts together as a whole. Thus, the examiner interprets the anvil 16 and the o0ring B as a unitary component) that is at least partially received within the spindle and positioned between the striker and the tool bit, the anvil configured to transmit axial impacts from the striker to the tool bit, the anvil including a front anvil impact surface (27, fig. 2) and a rear anvil impact surface (a rear surface of o-ring B, annotated fig. 2) opposite the front anvil impact surface,
wherein the retainer defines a retainer impact surface (29, fig. 2) that contacts the front anvil impact surface of the anvil in response to the anvil moving in a first direction (a forward direction of an anvil 16, fig. 2) along the reciprocation axis,
wherein the spindle defines a spindle impact surface (a front surface of circumferential collar C, annotated fig. 2) that contacts the rear anvil impact surface of the anvil in response to the anvil moving in a second direction along the reciprocation axis, the second direction (a rearward direction of the anvil 16, fig. 2) being opposite the first direction, and
wherein the retainer impact surface and the spindle impact surface limit a travel distance DT (the distance between a supporting surface 27 on the anvil 16 and a ring collar 28 on a base body 29 in the upper half of figure 2 or the distance between the rear surface of the o-ring B and the front surface on the circumferential collar C in the lower half of figure 2) by which the anvil translates along the reciprocation axis (Figure 2 shows the ring collar 28 on the base body 29 and the front surface on the circumferential collar C limits or confines the travel distance of the anvil 16 as the anvil 16 translates along the axis A).
Frauhammer does not explicitly disclose an electric motor.
However, Thorson, in the same field of endeavor, teaches an electric motor (18, fig. 2; [0027] describes motor 18 as a DC motor) supported within a housing (14, fig. 2) of a power tool (10, fig. 2) (Please note, with the incorporation of the teachings of Thorson with the invention of Frauhammer, the electric motor of Thorson would replace the motor of Frauhammer such that the reciprocation drive assembly of Frauhammer would be coupled to the electric motor and configured to convert torque from the electric motor to reciprocating motion of a drive piston of Frauhammer ).
Thorson is evidence that having the electric motor supported within a housing of a power tool was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Please note, since both the motor of Frauhammer and the electric motor of Thorson drive the reciprocation drive assembly in a power tool, the motor of Frauhammer and the electric motor of Thorson are deemed functional equivalents. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success substituting the motor of Frauhammer for the electric motor of Thorson to achieve the predicable result of driving the reciprocation drive assembly in the power tool. Moreover, the one having ordinary skill in the art would have been motivated to substitute the motor of Frauhammer for the electric motor of Thorson so that, with a battery pack as described in paragraph [0027] of Thorson, users are allowed to work anywhere, including remote locations or areas without direct access to electrical outlets giving the power tool enhanced mobility.
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In arguendo, Frauhammer does not explicitly disclose an anvil configured as a unitary component having a rear anvil impact surface opposite the front anvil impact surface wherein the spindle defines a spindle impact surface that contacts the rear anvil impact surface of the anvil in response to the anvil moving in a second direction along the reciprocation axis.
However, Takagi, in the same field of endeavor, teaches an anvil (15, fig. 1) configured as a unitary component having a rear anvil impact surface (surface A, annotated fig. 1) opposite a front anvil impact surface (surface B, annotated fig. 1) wherein the spindle defines a spindle impact surface (surface C, annotated fig. 1) that contacts the rear anvil impact surface of the anvil in response to the anvil moving in a second direction along the reciprocation axis.
Takagi is evidence that having an anvil configured as the unitary component having the rear anvil impact surface opposite the front anvil impact surface wherein the spindle defines the spindle impact surface that contacts the rear anvil impact surface of the anvil in response to the anvil moving in the second direction along the reciprocation axis 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 anvil and the spindle impact surface of Frauhammer such that the anvil is configured as the unitary component having the rear anvil impact surface opposite the front anvil impact surface wherein the spindle defines the spindle impact surface that contacts the rear anvil impact surface of the anvil in response to the anvil moving in a second direction along the reciprocation axis, as taught by Takagi. Moreover, the one having ordinary skill in the art would have been motivated to modify the anvil and the spindle impact surface of Frauhammer such that the anvil is configured as the unitary component having the rear anvil impact surface opposite the front anvil impact surface wherein the spindle defines the spindle impact surface that contacts the rear anvil impact surface of the anvil in response to the anvil moving in a second direction along the reciprocation axis, as taught by Takagi, in order maximize mechanical simplicity by removing the o-ring B from Frauhammer creating a more robust system that lacks o-ring that may need replacement. Moreover, removing the o-ring B in Frauhammer reduces maintenance such as periodic lubrication of the o-ring and/or replacement when the o-ring wears or fails.
Regarding claim 2, Frauhammer, as modified by Thorson, or alternatively, Frauhammer, as modified by Thorson, as further modified by Takagi, discloses the invention as recited in claim 1.
Frauhammer discloses the retainer impact surface (29, fig. 2) is spaced from the spindle impact surface (a front surface of circumferential collar C, annotated fig. 2) by a stop surface distance Ds (the distance between the ring collar 28 on the base body 29 and the front surface the circumferential collar C, fig. 2).
Frauhammer does not explicitly disclose the travel distance DT is less than or equal to 50 percent of the stop surface distance Ds.
However, in impact energy transmission systems, a key principle is to provide maximum energy transfer to a workpiece. If the anvil moves upon impact, a portion of the impact energy is transferred into the anvil's kinetic energy and is dissipated as vibration, sound, and potentially heat. However, if the distance the anvil moves upon impact is reduced, less impact energy is transferred into the anvil’s kinetic energy and more impact energy is transferred to a workpiece (This analysis is based on the principles of conservation of energy and momentum and the calculation of impact energy transfer efficiency). Thus, the distance the anvil moves upon impact is a result-effective variable having a recognized and predicable result of affecting the amount of impact energy transferred to the workpiece.
Therefore, it would have been obvious to one having ordinary skill in the art to have modified the travel distance DT of Frauhammer to be less than or equal to 50 percent of the stop surface distance Ds because, where the general conditions of a claim are disclosed (in the instant case, the retainer impact surface being spaced from the spindle impact surface by a stop surface distance Ds), it is not inventive to discover a workable and/or optimal range by routine experimentation (that is, to discover the workable and/or optimal range of impact energies transferred to the workpiece by the routine experimentation of adjusting the travel distance DT of Frauhammer with the motivation to maximize the impact energy transferred to the workpiece). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 3, Frauhammer, as modified by Thorson, or alternatively, Frauhammer, as modified by Thorson, as further modified by Takagi, discloses the invention as recited in claim 2.
Frauhammer discloses the retainer impact surface (29, fig. 2) is spaced from the spindle impact surface (a front surface of circumferential collar C, annotated fig. 2) by a stop surface distance Ds (the distance between the ring collar 28 on the base body 29 and the front surface the circumferential collar C, fig. 2).
Frauhammer does not explicitly disclose the travel distance DT is less than or equal to 20 percent of the stop surface distance Ds.
However, in impact energy transmission systems, a key principle is to provide maximum energy transfer to a workpiece. If the anvil moves upon impact, a portion of the impact energy is transferred into the anvil's kinetic energy and is dissipated as vibration, sound, and potentially heat. However, if the distance the anvil moves upon impact is reduced, less impact energy is transferred into the anvil’s kinetic energy and more impact energy is transferred to a workpiece (This analysis is based on the principles of conservation of energy and momentum and the calculation of impact energy transfer efficiency). Thus, the distance the anvil moves upon impact is a result-effective variable having a recognized and predicable result of affecting the amount of impact energy transferred to the workpiece.
Therefore, it would have been obvious to one having ordinary skill in the art to have modified the travel distance DT of Frauhammer to be less than or equal to 20 percent of the stop surface distance Ds because, where the general conditions of a claim are disclosed (in the instant case, the retainer impact surface being spaced from the spindle impact surface by a stop surface distance Ds), it is not inventive to discover a workable and/or optimal range by routine experimentation (that is, to discover the workable and/or optimal range of impact energies transferred to the workpiece by the routine experimentation of adjusting the travel distance DT of Frauhammer with the motivation to maximize the impact energy transferred to the workpiece). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 4, Frauhammer, as modified by Thorson, or alternatively, Frauhammer, as modified by Thorson, as further modified by Takagi, discloses the invention as recited in claim 1.
The modified Frauhammer does not disclose the anvil defining an opening and an inner bore, the inner bore at least partially receiving a shank of the tool bit.
However, Thorson, in the same field of endeavor, teaches the anvil (86, fig. 6) defining an opening (154, fig. 6) and an inner bore (158, fig. 6), the inner bore at least partially receiving a shank of the tool bit (As shown in figure 6).
Thorson is evidence that having the anvil that defines the opening and the inner bore wherein the inner bore at least partially receiving the shank of the tool bit 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 anvil of Frauhammer with the anvil defining the opening and the inner bore wherein the inner bore at least partially receiving the shank of the tool bit as described by Thorson. Moreover, the one having ordinary skill in the art would have been motivated to modify the anvil of Frauhammer with the anvil defining the opening and the inner bore wherein the inner bore at least partially receiving the shank of the tool bit as described by Thorson to center the tool such that the anvil distributes its impact energy evenly in the tool as compared to striking the tool off-center. Also, by ensuring the tool is not hit off-center, the tool and anvil undergoes less wear wherein repeatedly striking of the tool off-center can lead to premature wear, chipping, or breakage of the tool's edges or face and can also cause damage to the edges or face of the anvil over time.
Regarding claim 5, Frauhammer, as modified by Thorson, or alternatively, Frauhammer, as modified by Thorson, as further modified by Takagi, discloses the invention as recited in claim 1.
Frauhammer discloses the spindle (13, fig. 2) includes a spindle wall (wall of guiding tube 13, fig. 2) that defines a bore (interior of guiding tubing 13, fig. 2), the spindle including a rib (circumferential collar C, annotated fig. 2) that protrudes inward from the spindle wall and into the bore, the rib defining the spindle impact surface (a forward surface of circumferential collar C, annotated fig. 2).
Regarding claim 6, Frauhammer, as modified by Thorson, or alternatively, Frauhammer, as modified by Thorson, as further modified by Takagi, discloses the invention as recited in claim 1.
Frauhammer discloses the retainer (29, fig. 2) is connected to the spindle (13, fig. 2) via retention member (Shown as 31, fig. 2 – however, described in col. 2, ll. 16 – 18 as “[t]wo pins 30 connect[ing] the base body 29 with the guiding tube 13 in a form-locking manner both in the axial direction and the peripheral direction”).
Regarding claim 7, Frauhammer, as modified by Thorson, or alternatively, Frauhammer, as modified by Thorson, as further modified by Takagi, discloses the invention as recited in claim 6.
Frauhammer discloses the retention member as a pin (Col. 2, ll. 16 – 18). Frauhammer does not explicitly discloses the retention member is cylindrical in shape.
However, paragraph [0059] in applicant’s specification describes the retention member may include different shapes other than cylindrical such as ovoid, spherical, frustoconical, prismatic, or arc-shaped indicating that the cylindrical shape of the retention member provides no benefit beyond what a person of ordinary skill would expect.
Therefore, it would have been obvious to one having ordinary skill in the art to have modified the shape of the retention member of Frauhammer to be cylindrical in shape because it has been held that a change in form or shape is recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey, 357 F.2d 669, 149 USPQ 47. Please note, in re Dailey, the court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. Similarly, in the instant case, the configuration of the claimed retention member would also be a matter of choice which a person of ordinary skill in the art would have found obvious since there is no evidence in the applicant’s specification that the cylindrical shape of the claimed retention member is significant.
Allowable Subject Matter
Claims 8 – 14 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding independent claim 8: the subject matter of the 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 9 – 14 are also allowable over the prior art as they depend from allowable claim 8.
Claim 8 includes the following limitations which, in combination with the other limitations of claim 8, are what make the subject matter allowable over the prior art, as the subject matter of claim 8 is neither taught or suggested by the prior art:
“the gear case includes a spindle case surrounding the spindle”
The closest prior art is Frauhammer (US 6 116 352 A) in view of Thorson (US 2022/0371172 A1). The modified Frauhammer does not disclose the claimed limitation. While various features of the claimed subject matter are found individually in the prior art, a skilled artisan would have to include knowledge gleaned only from the applicant's disclosure to combine or modify the teachings of the prior art to produce the claimed subject matter, and thus obviousness would not be proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). There is no teaching, suggestion, or motivation found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art to combine or modify the teachings of the prior art to produce the claimed invention, and thus obviousness would not be proper. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). 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, filed 19 February 2026, with respect to the claim objections of claims 1, 6, and 8 have been fully considered and are persuasive. The claim objections of claims 1, 6, and 8 has been withdrawn.
Applicant’s arguments, filed 19 February 2026, with respect to the claim interpretation under 35 USC 112(f) have been fully considered but are not persuasive.
Applicant argues:
The Office alleges that the limitations: (1) "a retainer... configured to receive at least a portion of a tool bit of the power tool" recited in claims 1 and 8, (2) "a reciprocation drive assembly...configured to convert torque from the electric motor to reciprocating motion of a drive piston" recited in claims 1 and 8, and (3) "a retention member" recited in claims 6 and 8 should be interpreted under 35 U.S.C. § 112(f) to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. See Office action, p. 8. Applicant respectfully submits that the interpretation under § 112(f) is improper.
The asserted interpretation under § 112(f) is in error because (1) the Office has not met the burden required to apply such an interpretation and (2) the burden cannot be met. MPEP § 2181 states that "[a] claim limitation is presumed to invoke 35 USC112(f) when it explicitly uses the term 'means' or 'step' and includes functional language." MPEP § 2181(I). By contrast, MPEP § 2181 further explains that "a claim limitation that does not use the term 'means' or 'step' will trigger the rebuttable presumption that 35 U.S.C. 112(f) does not apply." Id. (emphasis added) Here, the claims do not include "means" or "step" elements, and so, there is a rebuttable presumption that § 112(f) does not apply.
The Office attempts to overcome this presumption by alleging that the claim limitations use a generic placeholder that is "coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier." See Office action, p. 8. However, this ignores "[t]he standard [inquiry of] whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015; accord MPEP § 2181.
To that end, "claim terms 'need not connote a single, specific structure,' and may instead 'describe a class of structures' and still recite 'sufficiently definite structure' to not invoke § 112(f)”. Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1366 (Fed. Cir. 2022) (quoting Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1300 (Fed. Cir. 2014)). For example, in Dyfan, the Federal Circuit further explained that terms of art, when coupled with language describing their operation, can connote structure. See Id. at 12. Some examples of generic place holders that are preceded by structural modifiers and have been held not to invoke 35 U.S.C. § 112(f) include: "circuit, detent mechanism, digital detector, reciprocating member, connector assembly, perforation, sealingly connected joints, and eyeglass hanger member." MPEP § 2181(I)(A) (internal quotes removed); see also Inventio AG v. Thyssenkrupp Elevator Americas Corp., 649 F.3d 1350, 99 USPQ2d 1112 (Fed. Cir. 2011) (holding that the claim terms "modernizing device" and "computing unit" when read in light of the specification connoted sufficient, definite structure to one of skill in the art to preclude application of 35 U.S.C. 112, sixth paragraph).
Much in the same way that "reciprocating member" and "detent mechanism" have been held to convey sufficient structure to those skilled in the art, so do to the terms "retainer," "reciprocation drive assembly," and "retention member." See e.g., U.S. Pat. No. 8,746,702, at Col. 2, lines 39 and 40 ("the present invention is an improved retainer for holding a tool bit on an impact hammer"); U.S. Pat. No. 9,700,949, at Col. 2, lines 10 and 11 ("the invention provides reciprocating drive mechanism for a power tool"); U.S. Pat. App. Pub. No. 2012/0321380, at [0001] ("the present technology relates to a retention member"). Thus, the interpretation of claims 1, 6, and 8 under 35 U.S.C. §112(f) is improper and must be withdrawn.
In response to applicant’s argument that the asserted interpretation under §112(f) is in error because (1) the Office has not met the burden required to apply such an interpretation and (2) the burden cannot be met, the rebuttable presumption that 35 USC §112(f) does not apply is overcome since each claim limitation meets the following 3-prong analysis:
A) the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
First, when the claim limitation does not use the term "means," the presumption that 35 U.S.C. 112(f) does not apply may be overcome if the claim limitation uses a generic placeholder (a term that is simply a substitute for the term "means"). The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f): "mechanism for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for." Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096, 89 USPQ2d 1289, 1293-94 (Fed. Cir. 2008); Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354, 80 USPQ2d 1225, 1228 (Fed. Cir. 2006); Personalized Media, 161 F.3d at 704, 48 USPQ2d at 1886–87; Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214-1215, 48 USPQ2d 1010, 1017 (Fed. Cir. 1998). In the instant case, the terms used are “a retainer”, "a reciprocation drive assembly”, and "a retention member" (emphasis added). Please note, each of these terms are non-structural placeholders similar to those used above.
Second, the non-structural placeholders are each modified by functional language. In the instant case, the term, “retainer”, is modified by the functional language, “configured to receive at least a portion of a tool bit of the power tool”; the term, “a reciprocation drive assembly”, is modified by the functional language, “configured to convert torque from the motor to reciprocating motion of a drive piston that is at least partially received within the spindle for reciprocation therein along a reciprocation axis”; and the term, “retention member”, is modified by the functional language, “retention”.
Third, the non-structural placeholders are not modified by sufficient structure, material, or acts for achieving the specified function. In the instant case, the claims that introduce these terms do not provide any structure for “a retainer”, "a reciprocation drive assembly”, and "a retention member" to indicate how these claim elements achieve their specified function.
Applicant argues that one having ordinary skill in the art would know the structure of these claim limitations; however, this is mere speculation. Moreover, these claim limitations are not defined by a few different structures but a great many and without applicant’s specification to disclose the corresponding structures, materials, or acts that perform these function, it would be ambiguous as to what structures are meant by these functional limitations. Thus, 35 USC 112(f) acts as a compromise between broad functional claiming and the requirement for definiteness, preventing overly broad claims while protecting against infringers who use equivalent structures.
Applicant further argues that the non-structural placeholders of “a retainer”, "a reciprocation drive assembly”, and "a retention member" are equivalent to structural modifiers that have not been held to invoke 35 USC 112(f); however, there is no fixed list of placeholders that always result in 35 U.S.C. 112(f) interpretation, and likewise there is no fixed list of words that always avoid 35 U.S.C. 112(f) interpretation. Every case will turn on its own unique set of facts. See MPEP 2181 I.A. Applicant’s argument regarding this equivalency is again mere speculation.
Applicant’s amendments and arguments, filed 19 February 2026, with respect to the claim rejection of claim 1 under 35 USC 103 have been fully considered but are not persuasive.
Applicant argues:
The Office alleges that Frauhammer teaches an anvil (e.g., combination of anvil 16 and o- ring B, annotated Fig. 2) and a rear anvil impact surface (e.g., a rear surface of o-ring B, annotated Fig. 2) that contacts a spindle impact surface (e.g., a front surface of circumferential collar C, annotated Fig. 2). See Office action, p. 11. But the alleged anvil is a multi-piece anvil formed from two distinct components- the anvil 16 and O-ring B-and is not a unitary component like the claim requires.
In response to applicant’s argument that the anvil of Frauhammer having the anvil 16 and the o-ring B is not a unitary component, the plain meaning of the term, “unitary”, is, “having the character of a unit” – Merriam Webster dictionary, wherein fig. 2 shows the anvil 16 and the o-ring B axially reciprocating as a unit and acts together as a whole. Thus, the examiner interprets the anvil 16 and the o-ring B as a unitary component.
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 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
4 April 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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