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 09/15/2025 has been entered. Claims 11-30 are pending in the application.
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.
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Claims 11-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. - US 12415258 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are substantially co-extensive in scope, at least in regard to the novel subject matter, and differ merely in equivalent terminology used as to function. Both claim a power tool having a hammer assembly, anvil having an anvil jaw, the anvil jaw being periodically engaged by the hammer as the hammer is being driven, the anvil further including: a socket engagement portion located opposite the anvil jaw, the socket engagement portion having a cylindrical wall forming a generally cylindrical open cavity and including interior splines disposed along an inner surface of the cylindrical wall; and a socket having a generally cylindrical first end and a second end, the socket first end having a first diameter and defining an anvil engagement portion configured to be removably fitted directly into the open cavity of the socket engagement portion, the anvil engagement portion having exterior splines configured to engage with the interior splines of the socket engagement portion; wherein the interior splines and the exterior splines mate and generate stiffness ratios of the anvil and the socket and to the stiffness of the fastener. Generally, all of the dependent claims of the patent set forth the equivalent subject matter of the dependent claims of the current application. Therefore, it would have been obvious to one skilled in the art to substitute the terminology recited in the current claims with the equivalent components of the patented claims, since to do so provides nothing new or unexpected.
See claim match below-
19343143 (claims)
US 12415258 B2 (claims)
11, 13-19, 23-29
1, 3-8, 10, 12-17
12, 22
2, 11
21
10
20, 30
9, 18
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 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.
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) 11-12, 16, 20-22, 26, and 30 is/are rejected under 35 U.S.C. 103 as obvious over Carroll (US 20040074344 A1) in view of VIOLA (WO 2011017066 A1) and further in view of Murakami et al. (US 20170036327 A1).
Regarding claims 11, 16, 20-21, 26, and 30, Carroll discloses a power tool assembly (16) comprising: a housing configured to house a motor [0018]; an anvil with a socket engagement portion (tool/socket attachment end, fig. 1),
the socket engagement portion (20) having a wall forming an open cavity (24) and including at least one interior spline (30) disposed along the wall within the cavity; and
a socket (40/60/70/80) having a first end (44) and a second end (42), the socket first end defining an anvil engagement portion (44) configured to be removably fitted directly into the open cavity of the socket engagement portion, the anvil engagement portion (20) including at least one exterior spline (50) configured to engage with the at least one interior spline of the socket engagement portion, the socket second end configured to receive a fastener (12);
the socket second end (42) having a second diameter configured to receive a fastener (12).
Carroll fails to explicitly disclose a drive system including: a hammer assembly, the hammer assembly including a hammer configured to be driven by the motor; an anvil including: an anvil jaw configured to be periodically engaged by the hammer as the hammer is being driven; a socket engagement portion opposite the anvil jaw and the socket engagement portion is integral to the anvil and the hammer is a ball-and-cam type hammer.
VIOLA teaches a power tool with motor (20, [0034], fig. 2) having a drive system including: a hammer assembly (120), the hammer assembly including a hammer (120) configured to be driven by the motor; an anvil (110) including: an anvil jaw (112b- 117/119) configured to be periodically engaged by the hammer as the hammer is being driven [0031-0046], figs. 1-7); a socket engagement portion (112a) opposite the anvil jaw for engaging a socket (12, [0032, 0040]).
Murakami et al. also teaches a power tool (1) with a motor (4, [0040], fig. 1) having a drive system including: a hammer assembly (40), the hammer assembly including a hammer (40) configured to be driven by the motor; an anvil (60) including: an anvil jaw (63a-63c) configured to be periodically engaged by the hammer as the hammer is being driven [0045-0049]; a socket engagement portion (61a) opposite the anvil jaw for engaging a socket and the socket engagement portion is integral to the anvil, the hammer is a ball-and-cam type hammer ([0039-0050], figs. 1-4).
Given the teachings of Kondo et al. to have a trigger biasing assembly with two compression springs, 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 drive system including: a hammer assembly, the hammer assembly including a hammer configured to be driven by the motor; an anvil including: an anvil jaw configured to be periodically engaged by the hammer as the hammer is being driven; a socket engagement portion opposite the anvil jaw and the socket engagement portion is integral to the anvil and the hammer is a ball-and-cam type hammer 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 feedback purposes as taught by Miller.
Regarding claims 12 and 22, Carroll discloses the at least one interior spline and the at least one exterior spline are selected from a group consisting of an involute spline, a triple square, a stub tooth spline, square teeth, arc teeth, radial slots, tri-lobes, hex indents, and keys and keyways and the socket engagement portion is integral to the anvil [0019, 0025-0031].
Allowable Subject Matter
Claims 13-15, 17-19, 23-25, and 27-29 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 and if a proper and if a Terminal Disclaimer is filed for US 12415258 B2.
Reasons for Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: the prior art of record fails to teach or render obvious a surgical stapling device comprising all the structural and functional limitations and further comprising, amongst other limitations/features, a power tool having a hammer assembly, anvil having an anvil jaw, the anvil jaw being periodically engaged by the hammer as the hammer is being driven, the anvil further including: a socket engagement portion located opposite the anvil jaw, the socket engagement portion having a cylindrical wall forming a generally cylindrical open cavity and including interior splines disposed along an inner surface of the cylindrical wall; and a socket having a generally cylindrical first end and a second end, the socket first end having a first diameter and defining an anvil engagement portion configured to be removably fitted directly into the open cavity of the socket engagement portion, the anvil engagement portion having exterior splines configured to engage with the interior splines of the socket engagement portion; wherein the interior splines and the exterior splines mate and generate stiffness ratios of the anvil and the socket and to the stiffness of the fastener, “wherein the at least one interior spline and the at least one exterior spline provides stiffness between the anvil and the socket, and a total inertia of the drive system is split between the inertia of the hammer, the inertia of the anvil, and the inertia of the socket, wherein an inertia ratio is decreased as a stiffness ratio increases, wherein the inertia ratio is the ratio of the combined inertias of the anvil and the socket to the inertia of the hammer assembly, and wherein the stiffness ratio is the ratio of the combined stiffness of the anvil and the socket to the stiffness of the fastener”. Though Carroll (US 20040074344 A1) teaches a socket anvil combination, it would not be obvious to modify the anvil/socket combination with having total inertia of the drive system is split between the inertia of the hammer, the inertia of the anvil, and the inertia of the socket, wherein an inertia ratio is decreased as a stiffness ratio increases and one of ordinary skill would recognize that a that a splined anvil mated with a splined socket with specific stiffness ratios to control stiffness on the fastener improves the impact driving of a fastener with withstanding the spring effect of the masses of the hammer, socket and anvil. Having the efficiency of the spline stiffness connection ensures most of the energy delivered by the impact wrench hammer transferred through the anvil-socket connection and overcome the spring effect.
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).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Additional prior art considered pertinent: FITCH (US 2508997 A) power tool with motor (M, fig. 1) with a hammer assembly- hammer (28) /roller-ball hammers (46) an anvil (16/22) with jaw (26/27) configured to be periodically engaged by the hammer as the hammer is being driven; a socket engagement portion (18) opposite the anvil jaw for engaging a socket (12, col. 2, line 11- col. 4, line 71, figs. 1-5) and see form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST).
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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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/ROBERT F LONG/Primary Examiner, Art Unit 3731
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