DETAILED ACTION
The Office acknowledges receipt of the Applicant’s response and amendments filed 26 June 2026.
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 .
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 13-15 and 18-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fischer et al. (US 2008/0202785 A1) hereinafter referred to as Fischer in view of Schadow et al. (US 2012/0111595 A1) hereinafter referred to as Schadow.
Regarding claim 13, Fischer discloses a machine tool (2; fig. 1) comprising:
a housing (18, 24 and 30) having a grip region (24 and/or 30);
an assembly (at least 4, 6, 8 and 10) including an impact mechanism (8) and a drive device (10), the assembly being arranged within the housing (18, 24) movably relative to the housing (paragraphs 0037-0042), a center of gravity (SP; paragraph 0036 – While ‘SP’ is noted as being the center of gravity of the “entire hand-held power tool”, the Office deems the disclosed location of SP to be a reasonable approximation of the center of gravity of the assembly since the vast majority of the mass of the power tool will be a result of the impact device, transmission, motor and base house which make up the claimed assembly) of the assembly being arranged at a distance from an impact axis (‘A’ – fig. 1; paragraph 0036); and
a decoupling device (21; paragraphs 0039-0041) between the assembly and the housing, wherein the decoupling device is connected to the assembly at a circumferential position along a vertically facing wall of the assembly (fig. 1).
Fischer discloses a decoupling device (21; paragraphs 0039-0041) between the assembly and the housing, but fails to disclose wherein the decoupling device comprises a seal device to restrict an air flow between the assembly and the housing, wherein the seal device is connected to the assembly and to the housing and encompasses the assembly circumferentially relative to a vertical direction of the machine tool.
However, Schadow teaches a hand held power tool (1; Abstract) comprising a decoupling device (at least fig. 12; also figs. 1, 7 and 10) which comprises a seal device (8, or 8 and 9; paragraphs 0048, 0079) to restrict an air flow between the assembly (2) and the housing (5), wherein the seal device is connected to the assembly and to the housing and encompasses the assembly circumferentially (paragraphs 0047-0048, 0050, 0068-0070 – “damping ring”; paragraph 0079 – “the gas-tight closure is achieved by means of an annular damping element 8”) relative to a vertical direction (right to left as seen in figs. 1, 7, 10 and 12 are deemed a vertical comparable to the cited vertical direction of Fischer) of the machine tool.
Given the teachings of Schadow, it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify the decoupling device of Fischer with the decoupling device comprising the circumferential seal device of Schadow. Fischer suggests (paragraph 0039) using alternative decoupling (i.e. spring) devices. Both Fischer and Schadow are concerned with the same problem of isolating the vibration of the internal moving elements from the user of the hand tool. Schadow teaches an alternative decoupling means in the form of an elastic circumferential seal device connected to both the assembly and the housing and which circumferentially encompasses the assembly. The benefits of this are that the elastic connection is present in all circumferential directions thus helping to isolate the vibrations regardless of their direction in that plane of the seal. Furthermore the trapped gas helps to provide additional spring isolation for the user.
Regarding claim 14, Fischer as modified by Schadow above discloses wherein the seal device (8, or 8 and 9; paragraphs 0048, 0079) is connected fixedly (Schadow – fig. 12; also figs. 1, 7 and 10; paragraphs 0048-0049, 0069-0070, 0079) to the housing (Fischer - 18, 24 and 30; Schadow - 5) with a first region and is connected fixedly to the assembly (Fischer - at least 4, 6, 8 and 10; Schadow - 2) with a second region.
Regarding claim 15, Fischer as modified by Schadow above discloses wherein the seal device (Schadow - 8 and 9; paragraphs 0048, 0051, 0079) has a flexible element (Schadow - 8) and a dimensionally stable element (Schadow – 9).
Regarding claim 18, Fischer as modified by Schadow above discloses wherein the seal device (Schadow - 8; paragraphs 0048, 0079) is connected (Schadow - via 9) to the assembly (Fischer - at least 4, 6, 8 and 10; Schadow - 2) or the housing via a form-fit (Schadow – paragraphs 0048) or material-fit (Schadow – paragraphs 0048).
Regarding claim 19, Fischer as modified by Schadow above discloses wherein the seal device (Schadow - 8; paragraphs 0048, 0079) engages with the first region or second region in a recess (Schadow - 9) of the housing or the assembly (Schadow – 2; paragraph 0048).
Regarding claim 20, Fischer as modified by Schadow above discloses wherein the flexible element (Schadow - 8) surrounds the dimensionally stable element (Schadow – 9) in the circumferential direction of the vertical direction (Schadow – paragraph 0048).
Regarding claim 21, Fischer as modified by Schadow above discloses wherein the flexible element (Schadow - 8) is made with an elastomer (Schadow – paragraphs 0017, 0049).
Regarding claims 22 and 23, Fischer as modified by Schadow above discloses wherein the dimensionally stable element a contoured seating (paragraph 0048), but does not disclose that it is made of plastic.
However, the Office previously took official notice in the Office action of 6 April 2026 that it would have been obvious to one of ordinary skill before the time of effective filing to have the dimensionally stable element made with a plastic. Plastic was a notoriously well-known material often used in contoured internal components of hand tools and would have been an obvious choice to one of ordinary skill in the art. Plastic provides the benefits of being inexpensive, readily available and easy to mold into desired shapes as might be required. The common knowledge or well-known in the art statement is taken to be admitted prior art because applicant failed to traverse the examiner’s assertion of official notice (MPEP 2144.03 C).
Regarding claim 24, Fischer as modified by Schadow above is deemed to disclose wherein the seal device is designed to allow a movement (Fischer – ‘as’, fig. 1; paragraph 0038) of the assembly (Fischer - at least 4, 6, 8 and 10) relative to the housing (Fischer – 18, 24 and 30) in the longitudinal direction (Fischer – fig. 1, ‘z’) greater than 0.8 mm (While not explicitly cited as allowing for relative movement of 0.8 mm, paragraph 0038 of Fischer notes that the longitudinal movement (as) of the assembly can be up to 0.4 times an axial distance (ar) of the pivotal means SP from a rear side 34 of the base housing 4. This is deemed to result in a relative movement greater than 0.8 mm).
Wherein the Applicant may argue that the value of a movement of the assembly relative to the housing in the longitudinal direction greater than 0.8 mm is not disclosed or inferred by Fischer, the Office alternatively notes that it would have been obvious to one having ordinary skill in the art at the time the invention was made to have the movement of the assembly relative to the housing in the longitudinal direction greater than 0.8 mm. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 233; MPEP 2144.05 I, II). Fischer already discloses some amount of movement in that direction, and impact devices of this nature would generally desire to have more than 0.8 mm available movement so as to help dampen the vibration imparted to the user as more space can allow for more vibration dampening.
Regarding claim 25, Fischer as modified by Schadow above is deemed to disclose wherein the seal device is designed to allow a movement (Fischer – ‘as’, fig. 1; paragraph 0038) of the assembly (Fischer - at least 4, 6, 8 and 10) relative to the housing (Fischer – 18, 24 and 30) in the longitudinal direction (Fischer – fig. 1, ‘z’) greater than 1.0 mm (While not explicitly cited as allowing for relative movement of 1.0 mm, paragraph 0038 of Fischer notes that the longitudinal movement (as) of the assembly can be up to 0.4 times an axial distance (ar) of the pivotal means SP from a rear side 34 of the base housing 4. This is deemed to result in a relative movement greater than 1.0 mm).
Wherein the Applicant may argue that the value of a movement of the assembly relative to the housing in the longitudinal direction greater than 1.0 mm is not disclosed or inferred by Fischer, the Office alternatively notes that it would have been obvious to one having ordinary skill in the art at the time the invention was made to have the movement of the assembly relative to the housing in the longitudinal direction greater than 0.8 mm. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 233; MPEP 2144.05 I, II). Fischer already discloses some amount of movement in that direction, and impact devices of this nature would generally desire to have more than 1.0 mm available movement so as to help dampen the vibration imparted to the user as more space can allow for more vibration dampening.
Regarding claim 26, Fischer as modified by Schadow above is deemed to disclose wherein the seal device (Schadow - 8, or 8 and 9; paragraphs 0048, 0079) is in a neutral position when the assembly (Fischer - at least 4, 6, 8 and 10; Schadow - 2) is in an approximately central position between two end positions with respect to the housing relative to the longitudinal direction (Schadow – paragraphs 0015, 0070, 0079; Seal 8 circumferentially acts on the assembly 2 and works to “correct seating position in the radial direction” and thus have a default neutral position when the seals radial forces are all acting equally on the assembly when it sits in the center of the seal in contrast to stressed positions when the assembly is pushed longitudinally forward or backward via vibration forces).
Regarding claim 27, Fischer as modified by Schadow above discloses wherein the machine tool is a drill hammer (Fischer – paragraphs 0006, 0008, 0034) or chisel hammer.
Regarding claim 28, Fischer as modified by Schadow above discloses wherein the seal device (Schadow - 8, or 8 and 9; paragraphs 0048, 0079) compensates for a movement of the assembly relative to the housing (Schadow - paragraphs 0047, 0049-0051, 0079).
Regarding claim 29, Fischer discloses a front decoupler (52, 54, 56; figs. 4-5), the assembly (4, 6, 8 and 10) being mounted (via 58 and 62) to the housing (@ 18) via the front decoupler (paragraph 0045).
Regarding claim 30, Fischer discloses a rear decoupler (20), the assembly (4, 6, 8 and 10) further being mounted to the housing (@ 18 and 24) via the rear decoupler (paragraph 0039; claim 2), the machine tool having a tool holder (14), the front decoupler (52, 54, 56; figs. 4-5; This is a substitute for #19 per paragraph 0044) having a first distance (distance from 14 to 19 along z-axis in fig. 1) to the tool holder, the rear decoupler (20) having a second distance (distance from 14 to 20 along z-axis in fig. 1) to the tool holder, the first distance being less than the second distance (fig. 1).
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fischer (US 2008/0202785 A1) in view of Schadow (US 2012/0111595 A1) in view of Muller (US Patent 4,236,310).
Regarding claim 16, Fischer as modified by Schadow discloses a flexible element (Schadow - 8 and 9; paragraphs 0048, 0051, 0079), but fails to disclose wherein the flexible element has at least two regions extending substantially in the vertical direction and connected to one another in the longitudinal direction.
However, Muller (fig. 5; or fig. 6; or fig. 8) teaches a seal device with a flexible element (3b; 3c; 3e; col. 4 lines 51-53; col. 8 lines 32-46) wherein the flexible element has at least two regions (25, 25; or near 5c and 6c; 3e near 2e, 3e near 1e) extending substantially in the vertical direction (figs. 5, 6 and 8 – right to left is the comparable vertical direction to that in Fischer and Schadow) and connected to one another (near 22b; near 21c; near 29 or 29’) in the longitudinal direction (figs. 5, 6 and 8 – top to bottom is the comparable longitudinal direction to that in Fischer and Schadow).
Given the teachings of Muller (col. 8 lines 32-49), it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify the seal device and flexible element of Fischer as modified by Schadow above, to have the arrangement as taught by Muller. Both Schadow and Muller are concerned with the problem of vibrationally isolating internal moving elements by using elastic rings which also serve to create a seal that leads to better isolation of vibration from the user. This arrangement allows for a user to adjust the amount of vibration isolation and thrust length provided while making use of gas spring properties.
Regarding claim 17, Fischer as modified by Schadow above discloses a flexible element (Schadow - 8 and 9; paragraphs 0048, 0051, 0079), but fails to disclose wherein the seal device has a U-shaped region in cross section.
However, Muller teaches a seal device (fig. 5 or fig. 8) with a flexible element (3b; 3e; col. 4 lines 51-53; col. 8 lines 32-46) wherein the seal device has a U-shaped region in cross section (fig. 5; fig. 8).
Given the teachings of Muller (col. 8 lines 32-49), it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify the seal device and flexible element of Fischer as modified by Schadow above, to have the arrangement as taught by Muller. Both Schadow and Muller are concerned with the problem of vibrationally isolating internal moving elements by using elastic rings which also serve to create a seal that leads to better isolation of vibration from the user. This arrangement allows for a user to adjust the amount of vibration isolation and thrust length provided while making use of gas spring properties.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fischer (US 2008/0202785 A1) in view of Schadow (US 2012/0111595 A1) in view of Furusawa et al. (US Patent 9,505,118 B2) hereinafter referred to as Furusawa.
Regarding claim 31, Fischer discloses wherein the rear decoupler comprises at least one spring (20), but fails to disclose two springs.
However, Furusawa teaches a similar machine tool (101; fig. 2) wherein a similar rear decoupler (123) comprises two springs (123; fig. 10; col. 9 lines 4-16).
Given the teachings of Furusawa it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify Fischer such that it made use of two springs. Doing so would allow for increased spring force as may be needed for higher powered tools and would provide for a balanced vibration isolation as they could be placed on both sides of the axis of the hammer.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fischer (US 2008/0202785 A1) in view of Schadow (US 2012/0111595 A1) in view of Furusawa (US Patent 9,505,118 B2) in view of Radle et al. (US Patent 5,697,456) hereinafter referred to as Radle.
Regarding claim 32, Fischer fails to disclose wherein the front decoupler comprises a first slider, the rear decoupler comprising a second slider, the first slider having a first sliding element fixed to the housing, the first slider having a second sliding element interactable with the assembly, the second slider having a third sliding element connected to the housing via a screw connection, the second slider having a fourth sliding element.
However, Furusawa teaches a similar machine tool (101; fig. 2) comprising a front decoupler (131, 133; col. 8 lines 38-53), the assembly (at least 106, 107) being mounted to the housing (at least 102 and 109) via the front decoupler (col. 8 lines 38-53); wherein the front decoupler comprises a first slider (131, 133; col. 8 lines 38-53; “… the outer housing 102 is allowed to move with respect to the barrel 106”. First slider 131, 133 allows for this sliding movement and is therefore deemed to constitute a slider as it must at least slide either relative to 102 or 106), the first slider having a first sliding element (131) fixed to the housing, the first slider having a second sliding element (133) interactable with the assembly (col. 8 lines 38-53).
Given the teachings of Furusawa, it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify the invention of Fischer in view of Schadow to have a front decoupler comprised of a first slider and first and second slider elements as in Furusawa. Doing so would allow the assembly to effectively translate in the axial direction while still keeping it elastically connected to the housing. Thus allowing the tool to run and impact the work element, but not put unnecessary stress on the housing or user.
Radle further teaches a similar machine tool (10; fig. 1) comprising a rear decoupler (88, 96, 104; figs. 3, 5 and 7-9), the assembly (21) further being mounted to the housing (28, 62, 72, 78) via the rear decoupler (88, 96, 104), the rear decoupler comprising a second slider (88, 104), the second slider having a third sliding element (88; col. 5 lines 53-59) connected to the housing (28, 62, 72, 78) via a screw connection (86, 94), the second slider having a fourth sliding element (104; col. 6 line 36 – col. 7 line 2; 104 slides relative to the handle due to vibration).
Given the teachings of Radle, it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify the rear decoupler of Fischer in view of Schadow to include the rear decoupler arrangement of Radle. Doing so would better protect the rear decoupler spring from being bent out of position and would provide guide rails to keep the handle positioned in a desired range of positions.
Response to Arguments
Applicant's arguments filed 26 June 2026 have been fully considered but they are not persuasive.
The Applicant argues, “One of ordinary skill in the art would not have been motivated to replace the decoupling device 21 with the seal 8 of Schadow "to restrict an air flow between the assembly and the housing" as claimed. The asserted benefits of "an elastic connection" and "to isolate vibrations regardless of their direction" are not needed as Fischer discloses a motor 10 that is already housed, and the vibrations wanted to be damped of Fischer are between the housing 4 and the further housing 8”.
The Office is not persuaded by this argument for the following reasons. The primary reference of Fischer already suggests (paragraph 0039) using an alternative decoupling (i.e. spring) device. Both Fischer and Schadow are concerned with the same problem of isolating the vibration of the internal moving elements from the user of the hand tool. Schadow teaches an alternative decoupling means in the form of an elastic circumferential seal device connected to both the assembly and the housing and which circumferentially encompasses the assembly. The elastic connection depicted in Schadow would be able to be applied to the configuration of Fischer (see figures below).
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The Applicant argues that this modification would not provide sufficient damping support, however Schadow is concerned with the problem of damping a power tool and thus it is deemed to be of the same related field of art and concerned with the same type of problem as Fischer and would therefore been of consideration to one of ordinary skill in the art before the time of effective filing as a potential alterative solution. The alternative solution of Schadow is primarily concerned with reducing vibration and doing so along the entire circumference of the assembly. It is for this reason that Schadow is being incorporated into Fischer. Schadow also happens to create a seal that restricts airflow between the assembly and the housing. It does this to further increase the damping effects. This is a feature what would be desired in the modification of Fischer.
Regarding the Applicant’s arguments regarding “fastening component 6”, the Office is not required to incorporate each feature of the teaching reference into the combination. The Office does not make use of Schadow’s element 6 in the rejection and it is not part of the elastomeric circumferential seal device (8; 8,9) which is cited. The teachings of the elastomeric circumferential seal device of Schadow are still germane to the primary reference of Fischer as a substitute for Fischer’s decoupling device.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the Office deems Fischer to suggest alternative decoupling mechanisms (paragraph 0039). Schadow is in the same field of art (i.e. hand power tools) and teaches an alternative decoupling mechanism in the form of an elastomeric circumferential seal device. The Office deems that one of ordinary skill in the art before the time of effective filing would consider using such an alternative decoupling device when suggested by the primary reference and taught by the related filed of art for the reasons provided in the rejection above.
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 ANDREW M TECCO whose telephone number is (571)270-3694. The examiner can normally be reached M-F 11a-7p.
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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) 270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW M TECCO/ Primary Examiner, Art Unit 3731
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