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 .
Examiner’s Comments
This office action is in response to the application filed on 2/5/2025.
Claims 1-20 have been canceled by applicant.
Claims 21-40 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/14/2025 and
9/18/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
The specification needs to updated to include US 12194610
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created
doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or
1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21, 25, 31 and 40 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1, 6 and 11 of U.S. Patent No. 12,194,610. Although the claims at issue are not identical, they are not patentably distinct from each other because a person having ordinary skill in the art would have found the claims of the instant application to have been obvious variations of the claims of the patent. The claims of the patent and the claims of the present application are both directed to a power tool including an input, a gear train, a motor, an output member and a controller. While the claims of the present application and the claims of the patent may have variations and differences in their scope and terminology, the variations and differences would have been obvious to one having ordinary skill in the art.
Patented claims 1, 6 and 11 disclose all of the structure, including inherent output member found in all power tools, defined in application claims 21, 25, 31 and 40. Therefore, patented claims 1, 6 and 11, and are in essence a “species” of the generic invention of application claims 21, 25, 31 and 40. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claims 21, 25, 31 and 40 are anticipated by patented claims 1, 6 and 11, application claims 21, 25, 31 and 40 are not patentably distinct from patented claims 1, 6 and 11.
The application claims and patented claims match-up as follows:
Application Claims Patent Claims US 12194610
21, 40 1
25 6
31 11
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to
AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21-29 and 31-40 are rejected under 35 U.S.C. 102(a)(1) as being
anticipated by Eshleman et al. (US 9266178) hereinafter (Eshleman).
With regard to claims 21 and 40, Eshleman discloses a power tool (10) comprising: an input (col. 9, line 20); a gear train (90); a motor (26) coupled to the gear train (90); an output member (11) coupled to the gear train (90); and a controller (24) including a processor (col. 9, line 29) and a memory (col. 9, line 32), the controller (24) connected to the input and the motor, the controller configured to: receive an input signal from the input, determine an operating direction based on the input signal, control the motor to rotate the gear train in a direction opposite the operating direction until a backlash is taken up in the direction opposite to the operating direction, and control the motor to rotate the gear train in the operating direction to exhaust the backlash in the operating direction (see Abstract; col. 6 and col.9).
With regard to claim 22, Eshleman discloses the power tool (10), wherein the controller (24) is further configured to: control the motor (26) to rotate the gear train (90) in the operating direction to exhaust the backlash in the operating direction repeatedly for a predetermined amount of time (… and the reaming tool rotates in a clockwise direction for a short time period, reverses direction for a short time period, repeating until operation is terminated col.20, lines 1-3).
With regard to claim 23, Eshleman discloses the power tool (10), wherein the controller (24) is further configured to: control the motor (26) to rotate the gear train (90) in the operating direction to exhaust the backlash in the operating direction repeatedly until a predetermined number of impacts occurs (col. 17, lines 14-16).
With regard to claim 24, Eshleman discloses the power tool (10), wherein the controller (24) is further configured to: control the motor (26) to rotate the gear train (90) in the operating direction to exhaust the backlash in the operating direction repeatedly until a stall condition is cleared (col.17, lines 14-16).
With regard to claim 25, Eshleman discloses the power tool (10), further comprising: a spindle lock (col. 16, line 66) configured to rotate a permitted amount to prevent some back driving through the gear train but allow torque to be transferred from the motor (26) to the output member (11) through the gear train (The tool may be further equipped with a spindle lock. In this scenario, the operator may actuate the spindle lock, thereby locking the spindle in fixed relation to the tool housing. This causes the tool to function like a manual screwdriver. col. 14, lines 45-48).
With regard to claim 26, Eshleman discloses the power tool (10), wherein the permitted amount is greater than the backlash in the gear train (If there is a great amount of backlash, the motor speed will increase rapidly until the backlash is taken up, col 17, lines 14-16 this action is inherent).
With regard to claim 27, Eshleman discloses the power tool (10), wherein the permitted amount is (reasonably considered) between 10 and 30 degrees (visually see fig.19B).
With regard to claim 28, Eshleman discloses the power tool (10), further comprising: a feedback module configured to monitor a rotation of the motor and output motor information (haptic feedback to indicate a particular state. col.15, lines 26-27).
With regard to claim 29, Eshleman discloses the power tool (10), further comprising: a commutation module configured to control the motor based on the motor information output by the feedback module (fig.17 shows module, and col.13, lines 4-22 suggests motor is controlled based on the motor information).
With regard to claim 31, Eshleman discloses a method of operating a power tool, the method comprising: receiving an input signal; determining an operating direction based on the input signal; controlling a motor to rotate a gear train in a direction opposite the operating direction until a backlash is taken up in the direction opposite to the operating direction; and controlling the motor to rotate the gear train in the operating direction to exhaust the backlash in the operating direction (see Summary). Further, the terminology and variations of the method are similar, and the operation yields expected results.
With regard to claim 32, Eshleman discloses a method, wherein controlling the motor to rotate the gear train in the operating direction to exhaust the backlash in the operating direction repeats for a predetermined amount of time (… and the reaming tool rotates in a clockwise direction for a short time period, reverses direction for a short time period, repeating until operation is terminated col.20, lines 1-3). Further, the terminology and variations of the method are similar, and the operation yields expected results.
With regard to claim 33, Eshleman discloses a method, wherein controlling the motor to rotate the gear train in the operating direction to exhaust the backlash in the operating direction repeats until a predetermined number of impacts occurs (col. 17, lines 14-16). Further, the terminology and variations of the method are similar, and the operation yields expected results.
With regard to claim 34, Eshleman discloses a method, wherein the controlling the motor (26) to rotate the gear train (90) in the operating direction to exhaust the backlash in the operating direction repeats until a stall condition is cleared (col.17. lines 14-16). Further, the terminology and variations of the method are similar, and the operation yields expected results.
With regard to claim 35, Eshleman discloses a method, further comprising: preventing, using a spindle lock with a permitted rotation, some back driving through the gear train but allow torque to be transferred from the motor to an output member through the gear train (The tool may be further equipped with a spindle lock. In this scenario, the operator may actuate the spindle lock, thereby locking the spindle in fixed relation to the tool housing. This causes the tool to function like a manual screwdriver. col. 14, lines 45-48). Further, the terminology and variations of the method are similar, and the operation yields expected results.
With regard to claim 36, Eshleman discloses a method, wherein the permitted rotation is greater than the backlash in the gear train (If there is a great amount of backlash, the motor speed will increase rapidly until the backlash is taken up, col 17, lines 14-16 this action is inherent). Further, the terminology and variations of the method are similar, and the operation yields expected results.
With regard to claim 37, Eshleman discloses a method, wherein the permitted rotation (reasonably considered) is between 10 and 30 degrees (see fig.19B). Further, the terminology and variations of the method are similar, and the operation yields expected results.
With regard to claim 38, Eshleman discloses a method, further comprising: monitoring, using a feedback module, a rotation of the motor; and outputting, from the feedback module, motor information (haptic feedback to indicate a particular state. col.15, lines 26-27). Further, the terminology and variations of the method are similar, and the operation yields expected results.
With regard to claim 39, Eshleman discloses a method, further comprising: controlling, using a commutation module, the motor based on the motor information output by the feedback module (fig.17 shows module, and col.13, lines 4-22 suggests motor is controlled based on the motor information). Further, the terminology and variations of the method are similar, and the operation yields expected results.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to
AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable
over Eshleman.
With regard to claim 30, Eshleman discloses the power tool (10), but does not expressly disclose, wherein the gear train is configured to rotate between one and two degrees per stage of the gear train.
However, Eshleman disclosure in column 10, lines 53-65 suggests that,
it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the rotation of the gear between 1˚ and 2˚ per stage of the gear train in order to control the motor speed.
Conclusion
Refer to attachment for notice of references cited and recommended for
consideration based on their disclosure of limitations of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANIEL C. CHUKWURAH whose telephone number is (571)272-4457. The examiner can normally be reached M-F & T-F 7-4:30 IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at 571-260-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHANIEL C CHUKWURAH/Primary Examiner, Art Unit 3731
11/6/2025