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 Continuation filed 7/22/2025. Claims 1-6 are currently pending.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-7 respectively of U.S. Patent No. 12,384,008 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application is recited nearly identically in U.S. Patent No. 12,384,008 B2.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Po (US 2013/0255447 A1) in view of Rajzer (US 2022/0305603 A1) and Tsai (US 2020/0391367 A1).
Regarding claim 1, Po discloses a fastening tool (Fig. 2) comprising: a bit holding portion (see annotated Fig. 2) which detachably holds a driver bit and is configured to rotate in a circumferential direction of the driver bit and move in an axial direction of the driver bit (although not expressly discussed, it is clear from Fig. 2 and the description of the invention that it rotates and moves in an axial direction since it must translate forward and rotate with the bit); a motor (32, 62 – Fig. 2) configured to perform movement of the bit holding portion along the axial direction (para. 0033, lines 1-21); a contact member (71 – Fig. 2) which contacts a fastening target (para. 0033, lines 1-8) and is configured to move in the axial direction (para. 0032, Po); a control unit (the control circuit, para. 0019, last line) configured to actuate the motor based on a movement amount of the contact member in the axial direction when the contact member contacts the fastening target (para. 0032); a contact arm (the arm of 71 extending rearward from 711 – Fig. 7, Po) which is movable in the axial direction in conjunction with the contact member (para. 0032, Po); and a position detection unit (72 – Fig. 7, Po) configured to detect a position of the contact arm (para. 0032, Po); and the control unit configured to determine, based on the position of the contact arm detected by the position detection unit, whether the contact arm is ON or OFF (para. 0032, Po).
However, Po does not disclose that the control unit controls a timing at which the driving of the motor is stopped based on actuation of the motor.
Rajzer teaches a fastening tool comprising a motor (114 – Fig. 2) and a control unit (116 – Fig. 2), wherein the control unit controls a timing at which the driving of the motor is stopped based on actuation of the motor (para. 0020) in order to reduce the chance that the tool is unintentionally actuated and causes damage (para. 0025).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the control unit of Po such that it controls a timing at which the driving of the motor is stopped based on actuation of the motor as taught by Rajzer in order to reduce the chance that the tool is unintentionally actuated and causes damage. Note that the combination of Po and Rajzer teach the limitation “a control unit configured to control a timing at which driving of the motor is stopped based on a movement amount of the contact member in the axial direction when the contact member contacts the fastening target” since Po discloses actuating a motor when the contact member contacts the fastening target and Rajzer teaches controlling a timing when a motor is actuated.
Further note that the combination of Po and Rajzer would result in the control unit being configured to control a timing at which driving of the motor is stopped based on an ON or OFF state of the contact arm (para. 0032, Po, in view of para. 0020 of Rajzer).
However, Po, as modified by Rajzer does not teach that the control unit is configured to, when a condition of both ON of a trigger and ON of the contact arm is satisfied, drive the motor.
Tsai teaches fastening tool comprising a control unit configured to when a condition of both ON of a trigger and ON of a contact arm is satisfied, drive a motor (para. 0024-0026). One of ordinary skill in the art, upon reading the teaching of Tsai, would have recognized that this provides enhances safety from accidently actuating a motor as compared to the invention of Po which actuates the motor if the condition of ON of the contact arm is satisfied.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the fastening tool of Po, as already modified by Rajzer, such that when a condition of both ON of a trigger and ON of the contact arm is satisfied, drive the motor as taught by Tsai in order to provide enhanced safety.
Annotated Fig. 2, taken from Po
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Regarding claims 2-5, Po, as modified by Rajzer and Tsai teaches essentially all of the elements of the claimed invention in claim 1.
However, Po, as modified by Rajzer and Tsai does not expressly teach the implementation of the position detection unit and the contact arm.
In this case, it is noted that the contact arm and position detection unit of Po is simple a switch unit that activates when a first member approaches a sensor. In the Office action dated 12/17/2024 for the parent application 17/942754, the examiner took Official Notice that was unchallenged by applicant in the response dated 3/10/2025. Therefore, it has become applicant admitted prior art that switch units of various kinds are old and well-known in the art including switch units that determine if a switch is activated by comparing a detected position of a first member to a threshold value, switch units comprised of a magnet on the first member and a sensor that outputs a voltage based on a magnetic field generated by the magnet with a control unit that compares the voltage to a threshold value set in advance to determine the switch state, and switch units that are implemented by a distance sensor measuring the distance to a first member with a control unit that determines the switch state by comparing the distance outputted from the distance sensor and a threshold value set in advance. In the event that applicant argues that the above is not applicant admitted prior art, then the examiner takes Official Notice that the above is old and well-known.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have implemented the contact arm and position detection unit using any of the switch units noted above, along with the relevant changes to the control unit, since each of those switch units are known alternatives to the switch unit of Po and it is within the skill of one of ordinary skill in the art to substitute one known alternative with another.
Regarding claim 6, Po, as modified by Rajzer and Tsai, further teaches the motor (32, 62 – Fig. 2, Po) includes a first motor (62 – Fig. 2, Po) configured to rotate the bit holding portion (para. 0026, Po), and a second motor (32 – Fig. 2, Po) configured to move the bit holding portion along the axial direction (para. 0024, Po), and the control unit is configured to control a position of the bit holding portion along the axial direction by the number of rotations of the second motor (para. 0024, Po).
Conclusion
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
6/9/2026
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