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 .
Status of Claims
This office action is in response to Applicant’s filing on 10 June 2025.
Claims 1 – 20 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 22 August 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
Claims 7 – 11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
PNG
media_image1.png
328
469
media_image1.png
Greyscale
Regarding claim 7, the limitation, “an area of the annular opening varies as the hammer translates away from the anvil”, is indefinite because the limitation differs from applicant’s invention as disclosed in the specification and since limitations are read in light of the specification, it is ambiguous what is meant by this limitation. The limitation requires the area of this annular opening to vary as the hammer translates away from the anvil. . Figure 6B shows an annular opening 172 having a first portion 94 and a second portion 102. However, as the hammer 30 translates away from the anvil 50 as shown in figure 6B through the width W2 of the second portion 102, the annular opening 172 does not vary. Additionally, as the hammer 30 translates away from the anvil 50 as shown in figure 6C through the width W3, the annular opening 172 does not vary. Instead, the area of the annular opening 172 only varies as the hammer 30 at one point as it transitions out of the second portion 102. Thus, an area of the annular opening does not always vary as the hammer translates away from the anvil – as required by the limitation. Please note, since claims 8 – 11 depends upon claim 7, claims 8 – 11 are likewise rejected under 35 USC §112(b) for indefiniteness.
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 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.
Claims 1 – 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seith (US 6,782,956 B1).
Regarding claim 1, Seith discloses a power tool comprising:
a housing (12, fig. 1);
a motor (22, fig. 1) positioned within the housing;
an impulse assembly coupled to the motor to receive torque therefrom, the impulse assembly (28, fig. 1) including
a chamber (67, fig. 1) containing a hydraulic fluid,
an anvil (100, fig. 1) positioned at least partially within the chamber, and
a hammer (114, fig. 1) configured to reciprocate within the chamber,
wherein the hammer is configured to displace the hydraulic fluid during reciprocation of the hammer such that the hydraulic fluid flows in a first direction when the hammer moves away from the anvil, and the hydraulic fluid flows in a second direction when the hammer moves toward the anvil (Col. 6, l. 66 – col. 7, l. 10 describes as a piston/hammer 114 moves forwardly, a valve stop 154 remains in an open position allowing lubricant to move from a forward chamber 134 to a rearward chamber 136. Col. 7, ll. 39 – 52 describes after an impact between the piston/hammer 114 and an output shaft/anvil 100, the piston/hammer 114 moves rearwardly. As the piston/hammer 114 moves rearwardly, the valve stop 154 does not move rearwardly at the same rate as the piston/hammer 114 so that the rearward end 118 of the piston/hammer 114 contacts the valve stop 154, moving a valve 142 into the closed orientation. Thus, after the impact and as the piston/hammer 114 moves rearwardly, the lubricant would move from the rearward chamber 136 to the forward chamber 134 until the valve 142 is moved into the closed position)
wherein flow resistance on the hydraulic fluid is different in the first direction and the second direction (Col. 6, l. 66 – col. 7, l. 10 describes as a piston/hammer 114 moves forwardly, the lubricant moves from a forward chamber 134 to a rearward chamber 136 wherein flow resistance of the lubricant depends on the geometry of channels 138. Col. 7, ll. 39 – 52 describes after the impact between the piston/hammer 114 and the output shaft/anvil 100, the piston/hammer 114 moves rearwardly and the lubricant moves from the rearward chamber 136 to the forward chamber 134 wherein the flow resistance of the lubricant depends on the geometry of the channels 138 and closing of the valve 142 which increases the flow resistance to maximum resistance when the valve 142 is closed).
Regarding claim 2, Seith discloses a valve (142, fig. 2B) configured to open in response to flow of the hydraulic fluid in the first direction and to close in response to flow of the hydraulic fluid in the second direction (Col. 6, l. 66 – col. 7, l. 10 describes as the piston/hammer 114 moves forwardly, the valve stop 154 remains in an open position allowing lubricant to move from a forward chamber 134 to a rearward chamber 136. Col. 7, ll. 39 – 52 describes after an impact between the piston/hammer 114 and an output shaft/anvil 100, the piston/hammer 114 moves rearwardly. As the piston/hammer 114 moves rearwardly, the valve stop 154 does not move rearwardly at the same rate as the piston/hammer 114 so that the rearward end 118 of the piston/hammer 114 contacts the valve stop 154, moving a valve 142 into the closed orientation).
Regarding claim 3, Seith discloses the valve (142, fig. 2B) is a reed valve.
Examiner’s Note
Claims 7 – 11 will not be analyzed as to whether it is patentable over the prior art. That is, the claims fail to comply with 35 USC §112(b) such that to analyze the claims as to whether they are patentable over prior art would of necessity require considerable speculation with regard to the meets and bounds of the claimed subject matter. In re Steele, 308 F .2d 859, 862-63, 134 USPQ 292, (CCPA 1962) and In re Wilson, 424 F .2d 1382, 1385, 496 USPQ 494, 496 (CCPA 1970). Claim 7 states “an area of the annular opening varies as the hammer translates away from the anvil” but this limitation differs from applicant’s invention as disclosed in the specification and since limitations are read in light of the specification, it is ambiguous what is meant by this limitation. Therefore, due to this issues, to analyze the claims as to whether they are patentable over the prior art would require considerable speculation by the examiner as to the scope of the claims.
Allowable Subject Matter
Claims 12 – 20 are allowed.
Claims 4 – 6 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding independent claim 12: the subject matter of the power tool is allowable over the prior art because of the arrangement of the combination of structural limitations set forth in the claim and their functional relationship to one another. Dependent claims 13 – 20 are also allowable over the prior art as they depend from allowable claim 12.
Claim 12 includes the following limitations which, in combination with the other limitations of claim 12, are what make the subject matter allowable over the prior art, as the subject matter of claim 12 is neither taught or suggested by the prior art:
“a one-way valve configured to control flow of the hydraulic fluid through the second through hole”
The closest prior art is Ogura (JP 2015 188953 A). Ogura discloses applicant’s invention having a housing, a motor, an impulse assembly with a chamber containing a hydraulic fluid, an anvil, and a hammer with a first through hole and a second through hole. However, Ogura is silent regarding “a one-way valve configured to control flow of the hydraulic fluid through the second through hole”. The prior art of record does not make obvious this limitation. Thus, it is examiner’s opinion that it would not have been obvious to one having ordinary skill in the art at the time of the invention to combine or modify the prior art in order to arrive at applicant's invention as claimed.
Regarding dependent claim 4: the subject matter of the power tool would be allowable over the prior art if rewritten in independent form to include all of the limitations of the base claim and any intervening claims because of the arrangement of the combination of structural limitations set forth in the claim and their functional relationship to one another. Dependent claims 5 – 6 are also allowable over the prior art as they depend from allowable claim 4.
Claim 4 includes the following limitations which, in combination with the other limitations of claim 4, are what make the subject matter allowable over the prior art, as the subject matter of claim 4 is neither taught or suggested by the prior art:
“the inner portion including a resilient arm movable relative to the outer portion to selectively cover and uncover the through hole”
The closest prior art is Seith (US 6,782,956 B1). Seith discloses a valve having an outer portion and an inner portion. However, Seith uses a resilient circular valve stop – not a resilient arm movable relative to the outer portion to selectively cover and uncover the through hole as required by the claim. Additionally, the prior art of record does not make obvious this limitation.
While various features of the claimed subject matter are found individually in the prior art, a skilled artisan would have to include knowledge gleaned only from the applicant's disclosure to combine or modify the teachings of the prior art to produce the claimed subject matter, and thus obviousness would not be proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). There is no teaching, suggestion, or motivation found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art to combine or modify the teachings of the prior art to produce the claimed invention, and thus obviousness would not be proper. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Thus, it is examiner’s opinion that it would not have been obvious to one having ordinary skill in the art at the time of the invention to combine or modify the prior art in order to arrive at applicant's invention as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID G SHUTTY whose telephone number is 571-272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday.
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 on 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID G SHUTTY/Examiner, Art Unit 3731
4 April 2026