DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to file provisions. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Application Status
This office action is in response to the claims filed 4/8/2026.
Claims 17 and 19-26 are currently pending and being examined.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The submitted IDS has been considered. See the attached PTO 1449 forms.
Claim Rejections - 35 USC § 102
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.
Claims 17 and 24-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hideki et al. JP 2008000835.
Regarding claim 17:
Hideki teaches an electric power tool (1) comprising: a motor including a rotor configured to rotate about a motor rotational axis extending in a front-rear direction (page 4, lines 24-26); an output part (page 4, lines 26-28: “spindle”) disposed forward of the motor and configured to be rotated in response to rotation of the rotor; a housing including: a motor-housing part (2), which houses the motor; a grip part (3), which extends downward from the motor-housing part; and a battery-holding part (4), which is connected to a lower-end portion of the grip part; a battery-mounting part (4f) disposed at a lower portion of the battery-holding part; and a battery pack (9) mounted on the battery-mounting part and being mountable from forward of the battery-holding part; wherein: in a direction parallel to the front-rear direction, a first distance (see annotated D1 below) between a frontmost end of a lowermost end of the grip part on a front side of the grip part and a frontmost end of the battery-holding part is shorter than or equal to a second distance (see annotated D2) between a rear end part rearmost end of a lowermost end of the grip part on a rear side of the grip part and a rearmost end of the battery pack (D1 is shorter than D2).
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Regarding claim 24:
Hideki teaches the electric power tool according to claim 17, as discussed above, further comprising: a hammer disposed forward of the motor and configured to be rotated in response to energization of the motor (page 4, lines 27-28); and an anvil disposed forward of the hammer and configured to be impacted by the hammer, the anvil driving the output part (page 4, lines 28-31).
Regarding claim 25:
Hideki teaches the electric power tool according to claim 24, as discussed above, further comprising: a speed reducing mechanism operably coupled between the rotor and the hammer (page 4, lines 26-28).
Claim Rejections - 35 USC § 103
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 19-23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Hideki, as applied above.
Regarding claims 19-21:
Hideki teaches an impact tool comprising: a motor having a rotor that rotates around a rotational axis (page 4, lines 24-26); a hammer disposed forward of the motor and configured to be rotated in response to energization of the motor (page 4, lines 27-28); an anvil disposed forward of the hammer and configured to be impacted by the hammer (page 4, lines 28-31); a motor housing (2), which houses the motor; a grip housing (3) extending downward from the motor housing; a battery-holding housing (4a) disposed downward of the grip housing; a battery-mounting part (4F), which is disposed at a lower portion of the battery-holding housing and a battery pack (9), which is mountable on the battery-mounting part by being moved in a front-rear direction relative to the battery-holding housing and has a rated voltage of 18 V or higher (page 5, line 29); wherein: a frontmost end of the battery pack is disposed more rearward than of the frontmost end of the anvil in the front-rear direction (see annotated D4 below); and in a direction parallel to the front-rear direction, a first distance (see annotated D1 above) between a frontmost end of a lowermost end of the grip part on a front side of the grip part and a frontmost end of the battery-holding part is shorter than or equal to a second distance (see annotated D2 above) between a rearmost end of a lowermost end of the grip part on a rear side of the grip part and a rearmost end of the battery pack (D1 is shorter than D2).
Hideki does not explicitly disclose a distance (annotated D3 below) in a direction parallel to the rotational axis from a rearmost end of the motor housing to a frontmost end of the anvil is 120 mm or less; nor a distance (annotated D4 below) in a direction parallel to the rotational axis from the frontmost end of the anvil to the frontmost end of the battery pack is 10 mm or more (or 50 mm/30 mm or less). Hideki does not provide any measurements or dimensions but states “the present invention is not limited to the above embodiment, and various modifications can be made without departing from the scope of the invention” (page 7, lines 7-8).
Examiner notes that it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (see MPEP 2144.04 IV. A.). Therefore, it would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the dimensions of the tool of Hideki such that D3 is 120 mm or less and D4 is 10 mm or more (or 50 mm/30 mm or less), since changing these dimensions, to the extent such changes are even applicable, would not lead to any change in performance, and represent minor design alterations. A person having ordinary skill in the art might make these changes to move the overall center of gravity of the tool or for general ergonomic purposes.
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Regarding claim 22:
Hideki teaches an impact tool (1) comprising: a motor (page 4, lines 24-26); a hammer disposed forward of the motor and configured to be rotated in response to energization of the motor (page 4, lines 27-28); an anvil disposed forward of the hammer and configured to be impacted by the hammer (page 4, lines 28-31); a motor housing (2), which houses the motor; a grip housing (3) extending downward from the motor housing; a battery-holding housing (4) disposed downward of the grip housing; a battery-mounting part, which is disposed at a lower portion of the battery-holding housing; and a battery pack (9), which is mountable on the battery-mounting part by being moved in a front-rear direction relative to the battery-holding housing and has a rated voltage of 18 V or higher (page 5, line 29); in a direction parallel to the front-rear direction, a first distance (see annotated D1 above) between a frontmost end of a lowermost end of the grip part on a front side of the grip part and a frontmost end of the battery-holding part is shorter than or equal to a second distance (see annotated D2 above) between a rearmost end of a lowermost end of the grip part on a rear side of the grip part and a rearmost end of the battery pack (D1 is shorter than D2).
Hideki does not explicitly teach the shortest distance from a longitudinal center line of the grip housing to the center of gravity of the battery pack is 20 mm or less. Hideki does not provide any measurements or dimensions but states “the present invention is not limited to the above embodiment, and various modifications can be made without departing from the scope of the invention” (page 7, lines 7-8).
Below is an Examiner annotated FIG. 5 from Hideki, crudely estimating the distance (D6) between a longitudinal center line of the grip housing (CL) to the center of gravity of the battery pack (black square). The figure shows that D6 can be estimated to be relatively small. Examiner notes, however, that it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (see MPEP 2144.04 IV. A.). Therefore, it would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the dimensions of the tool such that D6 is 20 mm or less, since changing this dimension, to the extent such a change is even applicable, would not lead to any change in performance, and represents a minor design alteration. A person having ordinary skill in the art might make this change to move the overall center of gravity of the tool or for general ergonomic purposes.
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Regarding claim 23:
Hideki teaches the impact tool according to claim 22, as discussed above, wherein the center of gravity of the battery pack is located forward of the longitudinal center line (see annotated FIG. 5 above).
Regarding claim 26:
Hideki teaches the impact tool according to claim 17, but does not teach wherein a distance from the frontmost end of the battery-holding part to the frontmost end of the battery pack is 30 mm or less.
However, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (see MPEP 2144.04 IV. A.). Therefore, it would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the dimensions of the tool such that a distance from the frontmost end of the battery-holding part to the frontmost end of the battery pack is 30 mm or less, in order to keep the tool as ergonomically compact as possible.
Response to Arguments
Applicant’s remarks have been carefully considered but are moot due to the new grounds of rejection made in this action, necessitated by amendment. Regarding the new limitation that “a first distance between a frontmost end of a lowermost end of the grip part on a front side of the grip part and a frontmost end of the battery-holding part is shorter than or equal to a second distance between a rearmost end of a lowermost end of the grip part on a rear side of the grip part and a rearmost end of the battery pack”, Examiner takes the position that this limitation is satisfied by Hideki because the inserted end of the battery (e.g., see FIG. 7) would be understood by a person having ordinary skill in the art to be the front end of the battery pack, while the exposed, free end would be considered the rearmost end of the battery pack.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARIUSH SEIF whose telephone number is (408) 918-7542. The examiner can normally be reached on Monday-Friday 9:30 AM-6:00 PM PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANNA KINSAUL can be reached on 571-270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARIUSH SEIF/Primary Examiner, Art Unit 3731
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