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 15 May 2026.
Claims 1 – 20 are pending.
Claim Objections
Claim 13 is objected because of the following informalities:
Regarding claim 13, line 13, the limitation, “a speed selector mechanism”, should read, “the speed selector mechanism”, referring to its antecedent basis, “a speed selector mechanism”, in claim 13, line 7.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 8 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
Regarding claim 8, the limitation, “the locking member includes an equal number of fixing projections and locking projections”, fails to comply with the written description requirement because the limitation, amended to claims after the filing of the original disclosure, constitutes new matter. The limitation is not explicitly or implicitly disclosed in the specification. Figure 13 of the detailed drawings shows the locking member of the embodiment of figures 12 – 13 having nine locking projections and nine fixing projections. Thus, the limitation is supported only in the specific case when there is nine locking projections and nine fixing projections. However, the limitation is not amended in the claims to be dependent upon the locking member having nine locking projections and nine fixing projections. Instead, the limitation is open-endedly amended in the claims to mean that whatever the number of locking projections, this is an equal number of fixing projections – which is not supported in the specification.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 9 is rejected on the ground of non-statutory double patenting as being unpatentable over claim 10 of U.S. Patent No. U.S. 9,481,080 B2 in view of Hecht (U.S. 8,485,935 B2).
The following chart shows a comparison of claim 9 of application 19/028,882 and claim 10 of U.S. 9,481,080 B2.
Application 19/028,882
Claim 9: A multi-speed power tool comprising:
a housing assembly;
a motor assembly;
an output spindle configured to receive rotary power from the motor assembly;
a gear case;
a reduction gearset, wherein the reduction gearset is selectively operable in a first overall gear ratio and a second overall gear ratio;
a locking member including a locking member body and a plurality of locking projections that extend in an axially-outward direction from the locking member body;
a movable member including a movable member body and a plurality of locking teeth that extend from the movable member body;
wherein the movable member selectively non-rotatably engages the locking member through engagement of the plurality of locking teeth with the plurality of locking projections;
wherein the locking member further includes a plurality of fixing projections; and
wherein the plurality of fixing projections engage the gear case such that relative rotation and axial movement of the locking member with respect to the gear case is restricted
US 12,220,804 B2
Claim 10: A tool comprising:
a housing assembly defining a handle;
a motor housed in the housing;
a transmission assembly received in the housing assembly, the transmission assembly having a reduction gearset and … wherein the reduction gearset has a first ring gear and is selectively operable in a first overall gear ratio and a second overall gear ratio;
a thrust washer; wherein the thrust washer includes a washer body and teeth which extend in an axial direction away from the thrust washer body;
wherein the transmission assembly further includes a movable member, the movable member including locking teeth (in order for the moveable member to have locking teeth, it must inherently have a movable member body from which the locking teeth extend); and
wherein the movable member in the transmission assembly non-rotatably engages the thrust washer when the transmission assembly is operated in the first overall gear ratio through engagement of the movable member locking teeth with the thrust washer teeth.
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Claim 10 of U.S. Patent No. U.S. 9,481,080 B2 does not state an output spindle configured to receive rotary power from the motor assembly; a gear case; and the locking member further includes a plurality of fixing projections wherein the plurality of fixing projections engage the gear case such that relative rotation and axial movement of the locking member with respect to the gear case is restricted.
However, Hecht, in the same field of endeavor, teaches an output spindle (4, fig. 2) configured to receive rotary power from the motor assembly; a gear case (5 and gear case portion A, annotated fig. 3); and the locking member further (7, fig. 4) includes a plurality of fixing projections (14, fig. 4) wherein the plurality of fixing projections engage the gear case such that relative rotation and axial movement of the locking member with respect to the gear case is restricted (As shown in figure 4).
Hecht is evidence that having the output spindle configured to receive rotary power from the motor assembly; the gear case; the movable member body of the movable member; and the locking member further includes the plurality of fixing projections wherein the plurality of fixing projections engage the gear case such that relative rotation and axial movement of the locking member with respect to the gear case is restricted was well 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 multi-speed power tool of claim 9 of application 19/028,882. Additionally, the one having ordinary skill in the art would have been motivated to modify the multi-speed power tool of claim 9 of application 19/028,882 to provide the output spindle in order to attach different tools to the multi-speed power tool to perform different operation according to the needs of a user; to provide the gear case to protect the enclosed gears, bearings, and shafts, from dust, moisture, and debris preventing premature wear and to give a rigid framework that keeps gears precisely aligned; and lastly, to provide the plurality of fixing projections to hold the locking ring against the gear case in a positive fit on the gear case in the circumferential direction so that when the movable member engages the locking member, the overall first gear ratio is provided by preventing the ring gear portion of the movable member from rotation. This mechanism allows the power tool to be a two-stage multi-speed power tool giving a user the option to adjust the torque of the power tool.
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 pre-AIA 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.
Claims 1 – 2 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Sakai (U.S. 4,791,833 B2).
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Regarding claim 1, Sakai discloses a multi-speed power tool comprising:
a housing assembly (6, fig. 1);
a motor (3, fig. 1);
an output spindle (5, fig. 1);
a gear case (1, fig. 5); and
a reduction gearset (11, 12, 13, 14, 21, 22, 23, 24, 35, fig. 5) wherein the reduction gearset is selectively operable in a first overall gear ratio and a second overall gear ratio via actuation of a user-operable speed selector (25, fig. 5) (Col. 5, ll. 6 – 33);
wherein the reduction gearset comprises a locking member (13, figs. 4, 5) and a movable member (35, fig. 5);
wherein the locking member comprises a plurality of locking projections (projections A between through-holes 13a, annotated fig. 4);
wherein the movable member includes a movable member body (the body of ring board 35, fig. 5) and comprises a plurality of locking teeth (35b, fig. 5) that extend axially outward from the movable member body;
wherein the movable member selectively non-rotatably engages the locking member through engagement of the plurality of locking teeth with the plurality of locking projections (Col. 5, ll. 6 – 19);
wherein the reduction gearset operates in one of the first overall gear ratio and the second overall gear ratio when the movable member is non-rotatably engaged with the locking member (Col. 5, ll. 6 – 19) and
wherein the reduction gearset operates in an other of the first overall gear ratio and the second overall gear ratio when the movable member is not non-rotatably engaged with the locking member (Col. 5, ll. 19 – 33); and
wherein the locking member is configured to engage with the gear case (via engaging teeth 1a) to restrict relative rotation and axial movement of the locking member with respect to the gear case.
Regarding claim 2, Sakai discloses the locking member (13, figs. 4, 5) has a closed shape (As shown in figure 4).
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sakai (U.S. 4,791,833 B2).
Regarding claim 3, Sakai discloses the invention as recited in claim 1.
Sakai discloses the plurality of locking projections comprise three locking projections (projections A between through-holes 13a, annotated fig. 4).
Sakai does not disclose the plurality of locking projections comprise nine locking projections.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have duplicated the plurality of locking projections to comprise nine locking projections since it has been held that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.)
Claims 4 – 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Sakai (U.S. 4,791,833 B2) in view of Hecht (US 8,485,935 B2).
Regarding claim 4, Sakai discloses the invention as recited in claim 1.
Sakai discloses the locking member (13, figs. 4, 5) is mounted in the gear case (13, fig. 5) (Col. 3, ll. 5 – 10).
Sakai does not disclose the locking member further comprises a plurality of fixing projections configured to engage with a non-circular circumferentially extending groove formed in the gear case.
However, Hecht, in the same field of endeavor, teaches the locking member (7, figs. 4, 5) further comprises a plurality of fixing projections (14, figs. 4, 5) configured to engage with a non-circular circumferentially extending groove formed in the gear case (5, fig. 4).
Hecht is evidence that having the locking member further comprises a plurality of fixing projections configured to engage with a non-circular circumferentially extending groove formed in the gear case was well 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 locking member and gear case of Sakai with the locking member further comprises a plurality of fixing projections configured to engage with a non-circular circumferentially extending groove formed in the gear case, as taught by Hecht. Moreover, the one having ordinary skill in the art would have been motivated to modify the locking member and gear case of Sakai with the locking member further comprises a plurality of fixing projections configured to engage with a non-circular circumferentially extending groove formed in the gear case, as taught by Hecht, in order to removably mount the locking member in the gear case so that the locking member can be easily removed and replaced if worn or broken.
Regarding claim 5, Sakai, as modified by Hecht, discloses the invention as recited in claim 4.
The modified Sakai discloses the plurality of fixing projections (Hecht – 14, figs. 4, 5) project in a circumferentially outward direction (Hecht – shown in figures 4, 5).
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Regarding claim 7, Sakai, as modified by Hecht, discloses the invention as recited in claim 5.
The modified Sakai discloses each of the plurality of fixing projections (Hecht – 14, figs. 4, 5) is disposed between a pair of the plurality of locking projections (Hecht – 13, figs. 4, 5) (Hecht - Annotated fig. 5 shows a first latching elements/fixing projections 14 between disposed between pair A, B of positive-fit elements/locking projections 13 and a second latching elements/fixing projections 14 between disposed between pair B, C of positive-fit elements/locking projections 13).
Allowable Subject Matter
Claims 13 – 20 are allowed.
Claim 6 and 10 – 12 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.
Claims 9 would be allowable if a terminal disclaimer is filed in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome the rejection based on non-statutory double patenting and a reply requesting reconsideration of this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding dependent claims 6, the subject matter of the multi-speed 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.
Claim 6 includes the following limitation which, in combination with the other limitations of claims 6 is what make the subject matter allowable over the prior art, as the subject matter of claim 6 is neither taught or suggested by the prior art:
“each of the plurality of locking projections is disposed between a pair of the plurality of fixing projections.”
The closest prior art is Hecht ‘935 (US 8,485,935 B2). Hecht ‘935 discloses a locking member/retaining ring 7 having nine positive-fit elements/locking projections 13 and two first latching elements/fixing projections 14 wherein only one of the plurality of locking projections is disposed between the pair of the plurality of fixing projections – contrary to the limitation, “each of the plurality of locking projections is disposed between a pair of the plurality of fixing projections.” 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.
Regarding independent claims 9 and 13, the subject matter of the multi-speed 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 10 – 12 and dependent claims 14 – 20 are also allowable over the prior art as they depend from allowable claim 9 and 13, respectively.
Claims 9 and 13 include the following limitation which, in combination with the other limitations of claims 9 and 13 is what make the subject matter allowable over the prior art, as the subject matter of claims 9 and 13 is neither taught or suggested by the prior art:
“a plurality of locking projections that extend in an axially-outward direction from the locking member body”
The closest prior art is Hecht (US 8,485,935 B2). Hecht ‘935 discloses a locking member/retaining ring 7 having positive-fit elements/locking projections 13 extending in a radial direction from a locking member body – contrary to the limitation, “a plurality of locking projections that extend in an axially-outward direction from the locking member body.” 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
The drawings were received on 15 May 2026. These drawings are acceptable.
Applicant’s amendments and arguments, filed 15 May 2026, with respect to the objections to the Specification have been fully considered and are persuasive. The objections to the Specification have been withdrawn.
Applicant’s amendments and arguments, filed 15 May 2026, with respect to the objections to the Specification have been fully considered and are persuasive. The objections to the Specification have been withdrawn.
Applicant’s amendments and arguments, filed 15 May 2026, with respect to the claim objections claims 1, 9, and 13 have been fully considered and are persuasive. The claim objections claims 1, 9, and 13 have been withdrawn.
Applicant’s amendments and arguments, filed 15 May 2026, with respect to the rejection of claim 8 under 35 U.S.C. 112(a) have been fully considered but are not persuasive. The limitation is not explicitly or implicitly disclosed in the specification. Figure 13 of the detailed drawings shows the locking member of the embodiment of figures 12 – 13 having nine locking projections and nine fixing projections. Thus, the limitation is supported only in the specific case when there is nine locking projections and nine fixing projections. However, the limitation is not amended in the claims to be dependent upon the locking member having nine locking projections and nine fixing projections. Instead, the limitation is open-endedly amended in the claims to mean that whatever the number of locking projections, this is an equal number of fixing projections – which is not supported in the specification.
Applicant’s amendments and arguments, filed 15 May 2026, with respect to the rejections of claims 1 – 8 and 15 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejections of claims 1 – 8 and 15 under 35 U.S.C. 112(b) have been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID G SHUTTY whose telephone number is (571)272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday.
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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
8 January 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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