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 received on 9/8/2025.
Claims 1-20 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/8/2025 is 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 be updated to include US 12,263,563.
Appropriate correction is required.
Claim Objections
Claims 1 and 7 are objected to because of the following informalities:
IN claim 1, line 16, “125mm” needs to be spaced such as --125 mm--.
In claim 7, double occurrence of “that that” needs to be --such that--. 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 1, 4 and 15 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1 and 14-16 of U.S. Patent No. 12,263,563. 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 patents. The claims of the patent and the claims of the present application are both directed to a power tool including a housing, a motor, a gear assembly and a drive assembly. 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 and 14-16 disclose all of the structure defined in application claims 1, 4 and 15. Therefore, patented claims 1 and 14-16 are in essence a “species” of the generic invention of application claims 1, 4 and 15.
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 1, 4 and 15 are anticipated by patented claims 1 and 14-16, application claims 1, 4 and 15 are not patentably distinct from patented claims 1 and 14-16.
The application claims and patented claims match-up as follows:
Application Claims Patent Claims US 12,263,563
1 1+14
4 14
15 15+16
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.
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, 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
2/13/2026