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 Preliminary Amendment
The preliminary amendment filed 06/10/2025 has been entered. Claims 1-13 are pending in the application.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the tool/tool performing screwing, drilling, riveting operations must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112 6th - 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.
Claims 8 and 13 have the limitation “means” for determining, for subtracting, for comparing, for issuing an alert, for controlling, and for measuring invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation 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.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 8 and 13 have been interpreted to cover the corresponding structure described in the specification that achieves 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.
The phrase “means” for determining, for subtracting, for comparing, for issuing an alert, for controlling, and for measuring is interpreted as any device capable of determining, subtracting, comparing, issuing an alert, controlling, and measuring since the specification does not recite any structural member or any device other than controller 50.
In the instant specification the phrase “All the means are controlled by the means for controlling/commanding the tool such as a controller 50 which may be in whole or in part external or internal to the tool. This controller especially comprises all the memories and processors necessary to control the tool and implement a method according to the invention” (page 15, lines 20-24) is vague and unclear what members are involved in the measure and what controller 50 is limited to. Is the controller the only device? Does the controller perform every step in the method as claimed? The drawings do not make up for this deficiency either.
Claim Rejections - 35 USC § 112 2ND
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 1-13 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 claims 1-7, the phrase “similar operations” is analogous to the phrases "such as" "for example" and/or "or the like" which renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d) and because the claim(s) include(s) elements not actually disclosed (those encompassed by "similar operations"), thereby rendering the scope of the claim(s) unascertainable. Also, the later phrase “the operations belonging to the group consisting of screwing, drilling, riveting” is contradictory and unclear if the operations are limited to screwing, drilling, riveting operations or not. Also, In the specification the phrase “All the means are controlled by the means for controlling/commanding the tool such as a controller 50 which may be in whole or in part external or internal to the tool. This controller especially comprises all the memories and processors necessary to control the tool and
implement a method according to the invention” (page 15, lines 20-24) is vague and unclear what members are involved in the measure and what controller 50 is limited to.
In claims 8-13 The term/phrase “means” for determining, for subtracting, for comparing, for issuing an alert, for controlling, and for measuring” in claims 8-13 is not clear what the “means” is limited to and is vague and indefinite. The phrase “means” for determining, for subtracting, for comparing, for issuing an alert, for controlling, and for measuring is interpreted as any device capable of determining, subtracting, comparing, issuing an alert, controlling, and measuring since the specification does not recite any structural member or any device.
In the instant specification the phrase “All the means are controlled by the means for controlling/commanding the tool such as a controller 50 which may be in whole or in part external or internal to the tool. This controller especially comprises all the memories and processors necessary to control the tool and implement a method according to the invention” (page 15, lines 20-24) is vague and unclear what members are involved in the measure and what controller 50 is limited to. Is the controller the only device? Does the controller perform every step in the method as claimed? The drawings do not make up for this deficiency either.
Since claims are rejected under 35 U.S.C § 112; it is improper to rely on speculative assumptions regarding the meaning of a claim and then base a rejection under 35 U.S.C. 103 on these assumptions. (In re Steele 305 F.2d 859,134 USPQ 292 (CCPA 1962)).
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 and 5-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by NISHINOMIYA et al. (JP 2019123027 A).
Regarding claims 1 and 7-8, NISHINOMIYA et al. discloses a method for performing, by using a tool (1), similar operations, said operations belonging to the group consisting of screwing, drilling, riveting ([1,31,98-103], 112) said method comprising at least: a step of measuring in real time at least one operating parameter of said tool during the performance of at least one prior operation (battery voltage [70-76]);
a step of determining a threshold for evaluating an ability of said tool (1) to perform at least one subsequent operation to an end of the at least one subsequent operation, said threshold being determined based on said at least one operating parameter of said tool measured in the previous step of measuring, said step of determining said threshold being implemented at an end of said at least one of said at least one prior operation ([70-76]);
a step of comparing, with said threshold, a limit data of operation of said tool (1, [70-76]); and a step of issuing an alert message and/or of inhibiting said tool (1), at an end of said step of comparing, when said threshold is incompatible with said limit data of operation of said tool ([59, 92-93]).
Regarding claims 5-6 and 12-13, NISHINOMIYA et al. discloses operating parameter is a remaining charge percentage of a battery supplying power to said tool, wherein said method comprises: determining the a charge percentage of said battery consumed during the performance of said at least one prior operation; determining in real time the remaining charge percentage of said battery; subtracting, from said battery remaining charge percentage, said charge percentage of the battery consumed during said prior operation, said threshold being equal to the a result of said subtraction; comparing said threshold with a predetermined minimum charge percentage of the battery to remain at the end of said subsequent operation, constituting said limit data of operation of said tool; issuing an alert message and/or of inhibiting said tool, at the anend of said comparison comparing said threshold with a predetermined minimum charge percentage, when said threshold is lower than said limit data of operation of said tool and determining a charge percentage of said battery consumed during the performance of said at least one prior operation; means for determining in real time the remaining charge percentage of said battery; means for subtracting, from said battery remaining charge percentage, said charge percentage of the battery consumed during said prior operation, said threshold being equal to the a result of said subtraction; means for comparing said threshold with a predetermined minimum charge percentage of the battery to remain at the end of said subsequent operation, constituting said limit data of operation of said tool; means for issuing an alert message and/or for inhibiting said tool, at an end of said comparing said threshold with a predetermined minimum charge percentage, when said threshold is lower than said limit data of operation of said tool ([14, 59, 70-76, 92-93]).
Claim Rejections - 35 USC § 103
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) 1-4 and 7-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Orrell et al. (US 4720897 A) or, in the alternative, under 35 U.S.C. 103 as obvious over Orrell et al. (US 4720897 A) in view of Feng et al. (US 20260045860 A1).
Regarding claims 1-4 and 7-11, Orrell et al. discloses a method for performing, by using a tool (10), similar operations, said operations (drilling and riveting) belonging to the group consisting of screwing, drilling, riveting (automatic drilling and riveting machine – capable of also screwing) said method comprising at least: a step of measuring with means (heat sensor 150, controller 142) in real time at least one operating parameter (temperature/heat) of said tool during the performance of at least one prior operation (drilling/riveting [70-76]) and controller means (142) for performing-
a step of determining a threshold (maximum temperature) for evaluating an ability of said tool to perform at least one subsequent operation to an end of the at least one subsequent operation (100 and 102 define the continuous operating range), said threshold being determined based on said at least one operating parameter (thermal limit) of said tool measured in the previous step of measuring, said step of determining said threshold being implemented at an end of said at least one of said at least one prior operation (switch from continuous to intermittent load operating rang and load amount);
a step of comparing, with said threshold, a limit data of operation of said tool (maximum temperature); and a step of issuing an alert message and/or of inhibiting said tool (visual display/ readout 156 alarm), at an end of said step of comparing, when said threshold is incompatible with said limit data of operation of said tool, wherein said operating parameter is the an operating temperature of said tool motor (temperature/heat of motor 70, col. 2, lines 25-67, col. 4, lines 32-67, col. 5, line 27-col. 7, line 8, figs. 1-8) and teaches controlling on/off with speed and torque control with set maximums (tachometer readout device 202), wherein said method comprises: determining a rise in temperature of said tool during the performance of said at least one prior operation; determining in real time a current temperature of said tool; determining a sum of said rise in temperature and said temperature measured in real time (fig. 7 curve with sections 100,102 and 104), said threshold being equal to said sum; comparing said threshold with a maximum permissible temperature of said tool constituting said limit data of operation of said tool; issuing an alert message and/or of inhibiting said tool, at an end of said comparing said threshold with the maximum permissible temperature, when said threshold is higher than the maximum permissible temperature of said tool, wherein said operating temperature of said tool is a temperature of a motor of said tool, of a battery of said tool or of a controller of said tool, (col. 5, lines 7-25, col. 7 lines 1-67, figs. 1-8).
Regarding claims 1-4 and 7-11, In the alternative, if it can be argued that Orrell et al. fails to disclose determining a threshold for evaluating an ability of said tool to perform at least one subsequent operation to an end of the at least one subsequent operation and determining a sum of said rise in temperature and said temperature measured in real time, said threshold being equal to said sum; comparing said threshold with a maximum permissible temperature of said tool constituting said limit data of operation of said tool –
Feng et al. teaches a power tool (100, handheld power tool, a table power tool, a manned mower, a smart mower, an all-terrain vehicle, and an electric motorcycle [0148], figs. 1-9) having a controller (21) for determining a threshold (temperature threshold) for evaluating an ability of the tool (100) to perform at least one subsequent operation (low-speed and high-load operating condition or a high-speed operating condition) to an end of the at least one subsequent operation and determining a sum of said rise in temperature and said temperature measured in real time, said threshold being equal to said sum; comparing said threshold with a maximum permissible temperature of said tool constituting said limit data of operation of said tool ([0092-0148], figs. 1-9).
Given the teachings of Orrell et al. to have a controller for determining temperature thresholds to avoid overheating, 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 controller with determining a threshold for evaluating an ability of said tool to perform at least one subsequent operation to an end of the at least one subsequent operation and determining a sum of said rise in temperature and said temperature measured in real time, said threshold being equal to said sum; comparing said threshold with a maximum permissible temperature of said tool constituting said limit data of operation of said tool to have precise adjustment of speed/torque for more precise operation of the tool and more precise action on a workpiece (avoid overshoot/damage to the workpiece) and/or for battery/tool preservation purposes and safety purposes as taught by Feng et al.
Conclusion
Additional prior art considered pertinent: US 20240246215 A1 – controller determines temperature, over-discharge, voltage thresholds and other motor parameters to operate power tool and see form 892.
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/ROBERT F LONG/Primary Examiner, Art Unit 3731
