DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to file provisions. 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.
Application Status
This office action is in response to the claims filed 10/28/2025.
Claims 21-40 are currently pending and being examined.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 21-40 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,415,259. Although the conflicting claims are not identical, they are not patentably distinct from each other. To illustrate, instant claim 40 is compared to patent claim 20 below.
Instant claim 40
Claim 20 of US 12,415,259
A powered rotary impact tool comprising:
A powered rotary impact tool comprising:
a housing;
a housing;
a motor disposed in the housing;
a motor disposed in the housing;
an output shaft;
an output shaft;
a tool holder coupled to the output shaft for rotation with the output shaft; and
a tool holder coupled to the output shaft for rotation with the output shaft;
a transmission configured to be driven by the motor; and
an impact mechanism configured to be driven upon rotation of the motor to transmit torque to the output shaft, the impact mechanism including a first cam member extending along an axis and configured to be rotatably driven upon rotation of the motor, the first cam member including a first cam groove;
an impact mechanism configured to be driven by the transmission and to transmit torque from the transmission to the output tool holder, the impact mechanism including a cam shaft extending along an axis and configured to be rotatably driven by an output member of the transmission, the cam shaft defining a first V-shaped cam groove on an outer surface of the cam shaft;
a second cam member coupled to the first cam member for rotational and axial movement relative to the first cam member, the second cam member including a second cam groove, and a third cam groove;
a cam ring received over the cam shaft and defining a second V-shaped cam groove on an inner surface of the cam ring facing an opposite direction from the first V-shaped cam groove, and a third V-shaped cam groove on an outer surface of the cam ring offset angularly from the first V-shaped cam groove;
a hammer coupled to the second cam member for rotational and axial movement relative to the second cam member, the hammer including a fourth cam groove;
a hammer received over the cam ring and defining a fourth V-shaped cam groove on an inner surface of the hammer facing an opposite direction from the third V-shaped cam groove and offset angularly from the second V-shaped cam groove, the hammer including a hammer projection on a front portion of the hammer;
an anvil coupled to the output shaft for rotation with the output shaft, the anvil configured to be selectively engaged by the hammer;
an anvil coupled to the output shaft for rotation with the output shaft, the anvil having an anvil projection configured to be selectively engaged by the hammer projection;
a spring configured to bias the hammer toward the anvil;
a spring between the transmission and the hammer to bias the hammer toward the anvil;
a first coupler received in the first cam groove and the second cam groove and configured to couple the second cam member to the first cam member for rotational and axial movement relative to the first cam member; and
a first ball received in the first cam groove and the second cam groove and configured to couple the cam ring to the cam shaft for rotational and axial movement relative to the cam shaft; and
a second coupler received in the third cam groove and the fourth cam groove and configured to couple the hammer to the second cam member for rotational and axial movement relative to the second cam member, wherein
a second ball received in the third cam groove and the fourth cam groove and configured to couple the hammer to the cam ring for rotational and axial movement relative to the cam ring, wherein
when torque on the output shaft is less than or equal to a threshold amount, the spring maintains the hammer in a forward position relative to the first cam member so the hammer engages the anvil, and the first cam member, the second cam member, the hammer, and the anvil rotate in unison about the axis, and wherein
when torque on the output shaft is less than or equal to a threshold amount, the spring maintains the hammer in its forwardmost position relative to the cam shaft so that the hammer projection engages the anvil projection, and the cam shaft, the cam ring, the hammer, and the anvil rotate together as a unit about the axis, and wherein
when torque on the output shaft exceeds the threshold amount, the first coupler moves along the first cam groove and the second cam groove so that the second cam member moves rotatably and axially rearward relative to the first cam member, and the second coupler moves along the third cam groove and the fourth cam groove, so that the hammer moves rotatably and axially rearward relative to the second cam member, which decouples the hammer from the anvil, and, subsequently, the spring causes the second cam member to move rotationally and axially forward relative to the first cam member and the hammer to move rotationally and axially forward relative to the second cam member, such that the hammer imparts a rotational impact to the anvil.
when torque on the output shaft increases to exceed the threshold amount, the first ball moves along the first and second cam grooves so that the cam ring moves rotatably and axially rearward relative to the cam shaft, and the second ball moves along the third and fourth cam grooves, so that the hammer moves rotatably and axially rearward relative to the cam ring, which decouples the hammer projection from the anvil projection, and, when the spring force and the torque of the motor overcomes the inertia of the hammer, the spring drives the cam ring rotationally and axially forward relative to the cam shaft and the hammer rotationally and axially forward relative to the cam ring, such that the hammer projection rotationally strikes the anvil projection to impart a rotational impact to the anvil.
Claim 20 of the patent "anticipates" application claim 40. It is apparent that the application claim differs from the patent claim in that the patent claim is more specific. Here, patent claim 20 requires a transmission, the grooves being V-shaped, and “balls” instead of “couplers”, and other minor variations, application claim 40 is not patentably distinct from patent claim 20 because the more specific patent claim anticipates the broader application claim. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. A similar rationale applies to instant independent claims 21 and 31 and the claims of the patent.
Allowable Subject Matter
Claims 21-40 would be allowable with a timely filed terminal disclaimer.
The following is an Examiner’s statement of reasons for allowance of independent claims 21, 31, and 40: the prior art has been found to disclose related powered rotary impact tools (e.g., see prior art of record). For example, Putney et al. US 5,836,403 teaches a powered rotary impact tool (30) comprising: a housing (shown in FIG. 1); a motor (32) disposed in the housing; an output tool holder (42); and an impact mechanism (34) configured to be driven upon rotation of the motor and to transmit torque from the motor to the output tool holder, the impact mechanism including a first cam member (36) extending along an axis and configured to be rotatably driven upon rotation of the motor; a second cam member (38) coupled to the first cam member for axial and rotational movement relative to the first cam member; a hammer (40) coupled to the second cam member for axial and rotational movement relative to the second cam member; an anvil (42) configured to be selectively engaged by the hammer, the anvil being rotatable to rotatably drive the output tool holder; and a first spring (48) configured to bias the hammer toward the anvil; wherein when torque on the output tool holder is less than or equal to a threshold amount, the first spring maintains the hammer in continuous engagement with the anvil, and the first cam member, the second cam member, the hammer, and the anvil rotate in unison about the axis (col. 5, lines 24-29; configuration of FIGS. 18A-D), and wherein (note: the following takes place in when the motor is running counter clockwise, as shown in FIGS. 20A-D. In the clockwise mode, the second cam member does not move rearward.) when torque on the output tool holder exceeds the threshold amount, the second cam member moves rotatably and axially rearward away from the anvil relative to the first cam member, and the hammer moves rotatably and axially rearward away from the anvil relative to the second cam member, which decouples the hammer from the anvil, and, subsequently, the first spring causes the second cam member to move rotationally and axially forward toward the anvil relative to the first cam member and causes the hammer to move rotationally and axially forward toward the anvil relative to the second cam member, such that the hammer imparts a rotational impact to the anvil (described in col. 6, line 33 through col. 7, line 5).
However, Putney does not teach the second cam member moves rotatably and axially rearward away from the anvil relative to the first cam member, and the hammer moves rotatably and axially rearward away from the anvil relative to the second cam member, which decouples the hammer from the anvil, since there is no relative motion between the second cam member and hammer in the counter clockwise configuration, and in the clockwise mode the second cam member does not move rearward. Upon examination, the art considered as a whole, alone or in combination, neither anticipates nor renders obvious the invention as claimed. 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 claimed invention.
Conclusion
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/DARIUSH SEIF/Primary Examiner, Art Unit 3731
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