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 .
Claim Status
This Office action is in response to the filing of 4/24/2025. Claims 1-6, 8, 12-16, 18-20, and 23-27 are currently pending. Claims 1-6, 8, 12-16, 18-20, and 23-27 have been amended in a preliminary amendment. Claims 7, 9-11, 17, and 21-22 have been canceled in the preliminary amendment.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
the “striking portion” of claims 1, 23, and 26 and corresponding to piston 28 and driver blade 29;
the “biasing portion” of claims 1, 23, and 26 and corresponding to pressure chamber 226;
the “rotating portion” of claims 1, 23, and 26 and corresponding to pin wheel 50;
the “rotating portion-side engagement portions” of claims 1, 23, and 26 and corresponding to pins 51-60;
the “striking portion-side engagement portions” of claims 1, 23, and 26 and corresponding to racks 61-70;
the “rotation position detection unit” of claim 3 and corresponding to the Hall sensor of paragraph 0163;
the “striking portion-position detection unit” of claim 3 and corresponding to detector switch 80a;
the “plurality of intermediate portions” of claims 16 and 23 and corresponding to indents 271; and
the “deformation intermediate portion” of claims 16 and 23 and corresponding to indent 271a.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-6, 8, 12-14, and 19-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 2, the limitation “wherein the control unit is able to determine whether the striking operation is a first striking operation in which all of the plurality of rotating portion-side engagement portions is engaged with the plurality of striking portion-side engagement portions or a second striking operation in which some of the plurality of rotating portion-side engagement portions is not engaged with the plurality of striking portion-side engagement portions” is indefinite because claim 1 expressly requires the striking operation to occur when the engagement of the striking portion is released from the rotating portion. If the striking portion is released from the rotating portion, then there can be no engagement between the striking portion-side engagement portions and the plurality of rotating portion-side engagement portions. In order to further prosecution, the striking operation has been interpreted to be the entire movement cycle of the striking portion, not just the movement of the striking portion to the one side, thereby allowing the engagement during the striking operation. Claims, 3-6, 8, and 12-14 are rejected based on their dependency from claim 2.
Regarding claim 19, the claim recites that the control unit determines engagement when the rotating portion moves the striking portion to the other side. Claim 1 expressly discloses that the determination occurs during the striking operation which is when the striking portion moves to the one side. In order to further prosecution, the striking operation has been interpreted to be the entire movement cycle of the striking portion, not just the movement of the striking portion to the one side, thereby allowing the engagement during the striking operation.
Regarding claim 20, the claim recites that the determination occurs before the engagement is released. However, claim 1 expressly recites that the determination occurs during the striking operation which is when the engagement has already been released. In order to further prosecution, the striking operation has been interpreted to be the entire movement cycle of the striking portion, not just the movement of the striking portion to the one side, thereby allowing the engagement during the striking operation.
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 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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pedicini (US 2006/0180631 A1).
Regarding claim 1, Pedicini discloses a working machine (100 – Fig. 1) comprising: a motor (1 – Fig. 1); a striking portion (8 – Fig. 3) capable of striking a fastener by moving to one side (the distal side of 100 – Fig. 1) in a first direction (to the right in Fig. 1); a rotating portion (31 – Fig. 3) that rotates by a driving force of the motor and is engageable with and disengageable from the striking portion (para. 0077, lines 29-34); and a control unit (3 – Fig. 3) that controls driving of the motor (para. 0077, lines 20-26), wherein the rotating portion includes a plurality of rotating portion-side engagement portions (the unlabeled teeth of 31 – Fig. 3) provided along a rotation direction of the rotating portion (see Fig. 3), wherein the striking portion includes a plurality of striking portion-side engagement portions (4 – Fig. 3) that is provided along the first direction and is engageable with the plurality of rotating portion-side engagement portions (para. 0077, lines 29-34), wherein the striking portion moves to another side (the proximal side of 100 – Fig. 1) in the first direction when the rotating portion rotates in a state where the plurality of striking portion-side engagement portions is engaged with the plurality of rotating portion-side engagement portions (para. 0077, lines 34-38), and when the engagement with the rotating portion is released, the striking portion executes a striking operation in which the striking portion moves to the one side in the first direction due to a biasing force of the biasing portion, thereby striking the fastener (para. 0077, lines 38-44), and wherein the control unit determines whether or not the plurality of striking portion-side engagement portions and the plurality of rotating portion-side engagement portions have a predetermined engagement relationship in the striking operation (when 8 and 31 have disengaged, para. 0083, lines 1-11).
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)(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 23-25 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Baba (US 2023/0364762 A1).
Regarding claim 23, Baba discloses a working machine (1 – Fig. 1) comprising: a motor (31 – Fig. 1); a striking portion (40 – Fig. 3) capable of striking a fastener by moving to one side (the distal side of 100 – Fig. 1) in a first direction (up-down in Fig. 1); a rotating portion (22 – Fig. 3) that rotates by a driving force of the motor and is engageable with and disengageable from the striking portion (para. 0074); and a control unit (5 – Fig. 1) that controls driving of the motor (para. 0056), wherein the rotating portion includes a plurality of rotating portion-side engagement portions (25 – Fig. 3) provided along a rotation direction of the rotating portion (see Fig. 3), wherein the striking portion includes a plurality of striking portion-side engagement portions (41 – Fig. 3) that is provided along the first direction and is engageable with the plurality of rotating portion-side engagement portions (para. 0052), wherein the striking portion moves to another side (the proximal side of 100 – Fig. 1) in the first direction when the rotating portion rotates in a state where the plurality of striking portion-side engagement portions is engaged with the plurality of rotating portion-side engagement portions (para. 0058, last two sentences), and when the engagement with the rotating portion is released, the striking portion executes a striking operation in which the striking portion moves to the one side in the first direction due to a biasing force of the biasing portion, thereby striking the fastener (para. 0074), wherein the striking portion includes a plurality of intermediate portions (42-47 – Fig. 3) provided between the plurality of striking portion-side engagement portions (see Fig. 3), and wherein any of the plurality of intermediate portions includes a deformation intermediate portion (42a, 45a) having a shape different from a shape of another intermediate portion (42a has a different depth than 43a and 44a and 45a has a different depth than 46a and 47a, hence the shapes of 42a and 45a are different from the others para. 0069).
Baba further discloses:
Claim 24, a distance between the plurality of striking portion-side engagement portions disposed with the deformation intermediate portion interposed therebetween among the plurality of striking portion-side engagement portions is different from a distance between the plurality of striking portion-side engagement portions that is not disposed with the deformation intermediate portion interposed therebetween (para. 0071).
Claim 25, among the plurality of striking portion-side engagement portions, the plurality of striking portion-side engagement portions disposed with the deformation intermediate portion interposed therebetween have different shapes (42a is between 42c and 44c, since the 42a is deeper than 43a, 44c has a longer incline than 43a, hence 44c has a different shape than 42c).
Allowable Subject Matter
Claims 26-27 are allowed.
Claims 15-16 and 18 are 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 2-6, 8, 12-14, and 19-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 2, Pedicini simply discloses determining if the plurality of rotating portion-side engagement portions are disengaged from the plurality of striking portion-side engagement portions. Pedicini does not disclose determining if all or some of the portions are engaged.
Regarding claim 15, Pedicini uses a sensor to determine that the portions are disengaged. Pedicini does not measure rotation speed or the current of the motor to make this determination.
Regarding claim 20, Pedicini discloses stopping the motor after the portions have been disengaged. Pedicini does not discloses stopping the motor before the portions are disengaged.
Regarding claim 26, Pedicini does not disclose a learned model. While learned models may be known, they are not known in the context of determining whether the two plurality of portions are engaged.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yasutomi (US 2021/0213595 A1) discloses a working machine wherein the rotation angle or the phase of a rotating portion is determined.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
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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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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
9/14/2026
