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 .
Response to Amendment
The amendment filed 08/19/2026 has been entered. Claims 1-3 and 6-20 are pending in the application.
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 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of copending Application No. 18/643853. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an impact tool comprising: a housing including a first housing portion, a second housing portion/head housing portion. second housing portion/head housing portion having a drive assembly, gear case having gear assembly within the second housing portion/head housing portion (current claim 1 and patented claims 1 and 14) and the gear case is entirely disposed between the first housing and the second housing portion (current claim 2 and patented claim 1) since patented claims 1 and 14 recite “a gear support coupled to the first housing portion and the second housing portion, the gear support and the second housing portion collectively defining a gear case enclosing the gear assembly and the drive assembly”.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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) 1-8, 10-11, 13-18, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MAFFEY et al. (US 3369615 A).
Regarding claims 1 and 6, MAFFEY et al. discloses a power tool (impact wrench 10) comprising: a housing (11) including a first housing portion and a second housing portion (13 & 12/14), the first housing portion and the second housing portion collectively defining a head housing portion (12/14 attaches to 13, fig. 1); the housing further including a nose cap (47, col. 2, lines 47-72, col. 3, lines 1-75, figs. 1-2 and 7-8);
a motor (electric motor with shaft 27) supported within the head housing portion (“supported” in 12/14) and including an output shaft (27);
a gear case (12 and/or 13) completely enclosed by the head housing portion (12/14) and the nose cap (47 – 13 is enclosed between 12/14 gear case 47), the nose cap coupled to the gear case (13);
a gear assembly (planet gears 37/ring gear 19 - internal ring gear 39 of 19, col. 3, lines 60-62) engaged with the output shaft (27) and supported within the gear case (13); and
a drive assembly (camshaft 33/34, hammer 48, anvil 42, and spring 57, figs. 1 and 7) driven by the gear assembly (planet gears 37/ring gear 19) and supported within the head housing (“supported” within the head housing 14 since the motor is at least partially contained in 12/14 and the motor supports the drive assembly via shaft 27 supporting the drive assembly) portion, the drive assembly including an anvil (42) received in the gear case (13) and extending through the nose cap (also regarding housing 11 portions 12/13/14, “portion” can be any part of the housing 11 and is arbitrary – i.e. a first housing portion could be a small portion/part beside/abutting 47, col. 4, lines 1-62, figs. 1-8).
Regarding claim 10, MAFFEY et al. discloses a power tool (impact wrench 10) comprising: a housing (11) defining a head housing portion (14/12/13, fig. 1)
a motor (electric motor with shaft 27) supported within the head housing portion (“supported” in 12/14) and including an output shaft (27) defining an axis (fig. 1);
a gear case (12 and/or 13) aligned with the motor along the axis and supported within the head housing portion (figs. 15-17);
a gear assembly (planet gears 37/ring gear 19 - internal ring gear 39
of 19, col. 3, lines 60-62) engaged with the output shaft (27) and
supported within the gear case (13), the gear assembly including a pinion gear (38) coupled to the output shaft (27),
a plurality of planet gears (37) meshed with the pinion gear (figs. 1, 3,
and 7), and a ring gear (19/39) meshed with the planet gears (37);
a seal (21) positioned axially between the gear case and the ring gear
(fig. 1 and 7-8), the seal abutting the ring gear (19) and coupled to the gear case (annular groove 22, figs. 1 and 8) to inhibit lubricant from escaping the gear case (col. 2, lines 47-72, figs. 1 and 7-8); and
a drive assembly (camshaft 33/34, hammer 48, anvil 42, and spring
57, figs. 1 and 7) driven by the planet gears and supported within the head housing portion (col. 3, lines 1-62, col. 4, lines 1-62, figs. 1-8).
Regarding claim 16, MAFFEY et al. discloses a power tool (impact wrench 10) comprising: a housing (11) including a first housing portion and a second housing portion (13 & 12/14), the first housing portion and the second housing portion collectively defining a head housing portion (12/14 attaches to 13, fig. 1); a nose cap (47) coupled to the head housing portion (col. 2, lines 47-72, col. 3, lines 1-75, figs. 1-2 and 7-8);
a motor (electric motor with shaft 27) supported within the head housing portion (“supported” in 12/14) and including an output shaft (27);
a gear case (12 and/or 13) supported by the head housing portion; the nose cap (47) coupled to the gear case (13);
a gear assembly (planet gears 37/ring gear 19 - internal ring gear 39 of 19, col. 3, lines 60-62) engaged with the motor (electric motor with shaft 27) and supported within the gear case (13);
a bushing (53) supported by the gear case (figs. 1 and 7); and
a drive assembly (camshaft 33/34, hammer 48, anvil 42, and spring 57, figs. 1 and 7) driven by the gear assembly (37/19) and supported within the head housing portion, the drive assembly including an anvil (42) supported by the bushing for rotation (53, also regarding housing 11 portions 12/13/14, “portion” can be any part of the housing 11 and is arbitrary – i.e. a first housing portion could be a small portion/part beside/abutting 47, col. 4, lines 1-62, figs. 1-8).
Regarding claims 2 and 20, MAFFEY et al. discloses the gear case (12) is entirely disposed between the first housing portion (13) and the second housing portion (14), completely enclosed by the head housing portion (13). Also, as discussed regarding housing 11 portions 12/13/14, “portion” can be any part of the housing 11 and is arbitrary – i.e. a first housing portion could be a small portion/part beside/abutting 47, (col. 4, lines 1-62, figs. 1-8).
Regarding claims 3 and 13, MAFFEY et al. discloses the output shaft defines an axis (fig. 1), and wherein the gear case (13) includes a tab (24 of retaining plate 23) extending radially outward in a direction perpendicular to the axis towards the housing (fig. 8), the tab received within a recess of the housing (ledge forms large diameter opening 24 is received in) to inhibit rotation of the gear case relative to the housing (keyed within slots 25 “thereby preventing the retaining plate 23 from rotating”, col. 3, lines 1-20, figs. 1 and 7-8).
Regarding claims 4-6, MAFFEY et al. discloses the housing includes a nose cap (47) coupled to the gear case and the drive assembly includes an anvil (42) received in the gear case and extending through the nose cap the gear case includes a front gear case portion, wherein a ring gear of the gear assembly defines a rear end of the gear case, and wherein the power tool further comprises a seal between the front gear case portion and the ring gear (figs. 1 and 7).
Regarding claim 7, MAFFEY et al. discloses the output shaft (27) defines an axis (fig. 1), the gear case (13) aligned with the motor along the axis (figs. 1, 3, and 7).
Regarding claim 8, MAFFEY et al. discloses the housing defines a handle housing portion (16/17), wherein the power tool further comprises a battery receptacle (46) in the handle housing portion configured to removably receive a battery and provide power to the motor ([0027] figs. 1-2 and 7).
Regarding claim 11, MAFFEY et al. discloses the seal (21) interfaces with a flange (annular groove 22, figs. 1 and 8) of the gear case (col. 2, lines 47-72, figs. 1 and 7-8);
Regarding claim 14, MAFFEY et al. discloses the ring gear (19) includes a protrusion (plurality of pockets 19b for protrusions, figs. 7-8) extending from a rearward face of the ring gear in a direction along the axis (figs. 1 and 7-8), the protrusion is seated within an aperture (larger diameter portion, figs. 1 and 8) of the housing (figs. 1 and 8).
Regarding claim 15, MAFFEY et al. discloses having an aperture (hole of retaining plate 23) that extends through a dividing wall (retaining plate 23) in the housing that separates the motor from the ring gear (19, (figs. 1 and 8).
Regarding claims 17-18, MAFFEY et al. discloses the motor defines an axis (27, fig. 1), and wherein the gear case (12/13) includes a tab/projection (24) extending radially outward in a direction perpendicular to the axis towards the housing, the tab (24) is received within a recess of the housing to inhibit rotation of the gear case relative to the housing, the tab is a first of a plurality of tabs extending radially outward in a direction perpendicular to the axis towards the housing, the recess in the housing is a first of a plurality of recesses in the housing, and each tab is received within one of the plurality of recesses in the housing to inhibit rotation of the gear case relative to the housing (keyed within slots 25 “thereby preventing the retaining plate 23 from rotating”, col. 3, lines 1-20, figs. 1 and 7-8).
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 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.
Claim(s) 9, 10, and 19 is/are rejected under 35 U.S.C. 103 as obvious over MAFFEY et al. (US 3369615 A) in view of Samstag et al. (US 20220193877 A1) and further in view of Kriaski et al. (US 20030000347 A1).
Regarding claims 9, 10, and 19, MAFFEY et al. discloses a bushing (53) coupled to the gear case and that supports the anvil (42) of the drive assembly for rotation and discloses the invention as substantially claimed. See above.
MAFFEY et al. fails to disclose the bushing includes a groove on an inner periphery that receives a lubricant to minimize friction as the anvil rotates and the projection of the gear case is received within a recess of the nose cap to inhibit rotation of the gear case relative to the nose cap and the gear case is supported within the head housing portion.
Samstag et al. teaches a power tool (10, figs. 1 and 15-17 [0045]) comprising: a housing defining a head housing portion (38/outer housing 187 [0046-0047], figs. 1-3, 7, 10, and 13-17); a motor (18) supported within the head housing portion and including an output shaft defining an axis (130, [0026-0027], figs. 1-2 and 15); a gear case (192) aligned with the motor along the axis and supported within the head housing portion (figs. 15-17); a seal (O-rings/sealing members in first and second grooves 162, 166 with engagement members 174, 178 [0038-0040], figs. 3-10) positioned axially between the gear case and the ring gear (fig. 5-6 and 11-12 shows where the gasket/O-ring is in the nose case 30 at 166 AND a gasket is in 162/174 figs. 7-10 which is between the gear case and the ring gear [0038-0041], figs. 1-15); and a drive assembly (rotary impact mechanism 22 - camshaft 50, hammer 54, anvil 90, and spring 82, fig. 4) driven by the planet gears and supported within the head housing portion (38/outer housing 187 [0046-0047], figs. 1-3, 7-10, and 13-17) AND -
Samstag et al. further teaches a bushing (198) coupled to the gear case and supports an anvil of the drive assembly for rotation, wherein the bushing includes a groove (188) on an inner periphery that receives a lubricant to minimize friction as the anvil rotates ([0041], figs. 3 and 17) and wherein the seal (O-rings/sealing members in first and second grooves 162, 166) interfaces with a flange (engagement members 174, 178) of the gear case ([0038-0040, 0045-0051], figs. 3-10) and the motor defines an axis (62, 62′), and wherein the gear case (190) includes a tab (194 with 188/186- “openings and slots may be located in the outer housing 187 such that the gear case includes flanges, ribs, stops, etc. that can extend into the openings and slots in the housing 187”) extending radially outward in a direction perpendicular to the axis towards the housing, the tab (194) is received within a recess of the housing to inhibit rotation of the gear case relative to the housing, the tab is a first of a plurality of tabs extending radially outward in a direction perpendicular to the axis towards the housing, the recess in the housing is a first of a plurality of recesses in the housing, and each tab is received within one of the plurality of recesses in the housing to inhibit rotation of the gear case relative to the housing, wherein the gear case (190) includes a projection (194 with 188/186) extending radially outward in a direction perpendicular to the axis towards the housing, the projection is received within a recess of the nose cap (187/30) to inhibit rotation of the gear case relative to the nose cap ([0046-0051], figs. 3-4 and 15-16). Samstag et al. also teaches having groove (166) in the nose (30) that engages engagement member 178 [0038-0040], figs. 6-14).
Kriaski et al. also teaches having screw gun (fig. 1) having a housing (100) with a front housing case (depth adjusting assembly A -200/300/400) that includes a projection (locking tabs 220) extending radially outward in a direction perpendicular to the axis towards the inner sides of the housing (figs. 3-4), the projection is received within a recess (slots/gaps between detents 140) of the depth adjusting nose cap (depth adjusting assembly A -200/300/400) to inhibit rotation of the front housing case relative to the nose cap [0030-0031] and Kriaski et al. also teaches (depth adjusting assembly A -200/300/400) includes another projection (tab 211 and “indexing tabs 270 radially formed on an exterior surface” [0035], figs. 4-8) extending radially outward in a direction perpendicular to the axis towards the housing (figs. 2-8), the projection is received within a recess (groove 130, figs. 4-8) of the depth adjusting nose cap (depth adjusting assembly A -200/300/400) to inhibit rotation of the front housing case relative to the nose cap ([0027-0030, 0035], figs. 1-8).
Given the teachings of MAFFEY et al. to have a bushing, aretaining plate and different housing portions with cap on end, it 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 to modify the bushing to include a groove on an inner periphery that receives a lubricant to minimize friction as the anvil rotates and a projection of the gear case that is received within a recess of the nose cap to inhibit rotation of the gear case relative to the nose cap and the gear case supported within the head housing portion to have a protective wear surface nose cap attached, have a depth adjusting cap attached to the front and/or alignment features for easier attaching the nose cap purposes and gear case within a housing for improved sealing or easier assembly (fitting other parts within the housing) as taught by Kriaski et al. and Samstag et al.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as obvious over MAFFEY et al. (US 3369615 A) in view of Soika et al. (US 20040211575 A1).
Regarding claim 12, MAFFEY et al. fails to teach the seal is U-shaped in cross section and couples to and receives the flange of the gear case.
Soika et al. teaches a gear casing (30) having sealing ring (32) with a sealing motor plate (16) to provide sealing between the gear casing (30) and the motor (4) teaches having seals (38 and 46) in the through hole (42) of the plate (16) with a U-shaped in cross section (“V-shaped portion (39)”, [0028], fig. 4) and also teaches having seal (138) that is U-shaped in cross section (U-shaped cross-sectioned fixing portion (137)” [0037]) and couples to and receives the flange (149) of the motor plate (149, [0025-0032], figs. 4-5).
Given the teachings of MAFFEY et al. to have O-rings/sealing members in grooves and a bushing, it 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 to modify the ring gear to the seal is U-shaped in cross section and couples to and receives the flange of the gear case to have the seal cover the motor and gear drive compartment better, more secure fitting/locking the seal on the flange and/or for better vibration dampening purposes as taught by Soika et al.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as obvious over MAFFEY et al. (US 3369615 A) in view of Saur et al. (US 20230008797 A1) and further in view of Ullrich et al. (US 20020121384 A1).
Regarding claims 14-15, If argued MAFFEY et al. fails to explicitly discloses the ring gear includes a protrusion extending from a rearward face of the ring gear in a direction along the axis, the protrusion is seated within an aperture of the housing and the aperture extends through a dividing wall in the housing that separates the motor from the ring gear -
Saur et al. teaches an impact tool (100) having a ring gear (210) that includes a protrusion (216) extending from a rearward face of the ring gear in a direction along a motor/drive (180/125) axis (209), the protrusion is seated within an aperture (receptacle of the transmission housing 205 [0044]) of the housing (205, figs. 1-2) and the aperture extends through a dividing wall (wall of 205, figs. 2-4) in the housing that separates the motor (180) from the ring gear ([0043-0049], figs. 1-4).
Ullrich et al. also teaches a drywall screwdriver (fig. 1) having a ring gear (46) includes a protrusion (48) extending from a rearward face of the ring gear (fig. 3) in a direction along a motor/drive (18) axis (38), the protrusion is seated within an aperture (52/54) of the housing (44/56, figs. 1-2) and the aperture extends through a dividing wall (collar 50) in the housing (44/56) that separates a motor (18) from the ring gear (46, [0029-0030], figs. 1-3).
Given the teachings of MAFFEY et al. to have a ring gear that includes a protrusion and partition walls with engagement members to hold the ring gear, it 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 to modify the ring gear to have the protrusion extending from a rearward face of the ring gear in a direction along the axis, the protrusion is seated within an aperture of the housing and the aperture extends through a dividing wall in the housing that separates the motor from the ring gear to have a sealed motor and gear drive compartment, locking the ring gear from rotation and/or for vibration dampening purposes as taught by Saur et al. and Ullrich et al.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3 and 6-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The amendments to the independent claims regarding "gear case completely enclosed by the head housing portion and the nose cap” (claim 1) amongst other new features that are new to prosecution which required further consideration and/or search and necessitated the new ground(s) of rejection.
Conclusion
Additional prior art considered pertinent:
US 5044233 A - (sleeve 10) includes a projection (23) received within a recess (43/63) of housing (40)
US 20020121384 A1 - ring gear (6a) includes a protrusion (6b) extending from a rearward face of the ring gear (fig. 2) in a direction along a motor/drive axis (figs. 1-2), the protrusion is seated within an aperture (holes 7b with damping members 5a and 5b, fig. 2) of the housing (1, figs. 1-2) and the aperture extends through a dividing wall (gear support jig 7a with inner wall with holes 7b extend through the inner wall of jig 7a, figs. 1-2) in the housing (1) that separates a motor (2) from the ring gear (6a) and figs. 3-4 show ring gear (6c) with protrusions (6d) that are seated within apertures (7d) that extend through a dividing wall (rim of jig 7c [0017-0022], figs. 1-4)
US 5692574 A- power tool (fig. 1) housing seals with different cross sections including U-shaped in cross section (opening groove 31) to couple to housing flanges (17, figs. 2-4) and see form 892.
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 ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST).
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 at (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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/ROBERT F LONG/Primary Examiner, Art Unit 3731
