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 .
Election/Restrictions
Claims 1-7 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/24/2026. Applicant has cancelled claims 1-7 and 20.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) 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. Such claim limitation(s) is/are:
input device (e.g. claim 8) - e.g. a button (paragraph 47)
pull mechanism (e.g. claim 9) - e.g. a ball screw mechanism (paragraph 43)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing 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.
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 8-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Woyciesjes (U.S. Patent 10,483,901, cited in IDS) in view of Ikuta et al. (U.S. PGPub 2019/0314888, cited in IDS).
Claim 8: Woyciesjes discloses a power tool (100) comprising: an output shaft (114) configured to actuate along a drive axis (implied at column 3, line 66 - column 4, line 3); an input device (206) configured to adjust an operating mode of the power tool (in that it can control operation of the tool based on fastener selection - column 4, line 64 - column 5, line 9; column 7, lines 58-64); a motor (110 - column 3, lines 33-36) coupled to the output shaft, the motor including a stator and a rotor that rotates about a motor axis (it is understood that a typical motor as disclosed would have a stator and a rotor); a current sensor (212) configured to detect a current of the motor (column 5, lines 34-42); and a controller (200) coupled to the input device, the motor, and the current sensor (column 4, lines 56-61), wherein the controller is configured to: receive, from the input device, an input indicative of the operating mode of the power tool (column 6, lines 56-66), operate the motor to actuate the output shaft (necessary to actuate the tool and set a fastener), determine a derivative of the current of the motor (interpreted by the examiner as a rate of change of current or dI/dt - column 5, lines 39-52; column 6, lines 22-29; column 6, lines 52-55), compare the derivative of the current of the motor to a current threshold, and stop, in response to the derivative of the current of the motor being greater than or equal to the current threshold, operation of the motor (column 8, line 59 - .column 9, line 9).
The tool of Woyciesjes as described above does not necessarily actively “determine the power tool is operating in a force-based operating mode” since it effectively only operates in such a mode (to this end, Woyciesjes also does not necessarily have an ability to adjust an operating mode between a force-based operating mode and another mode, for example). However, Ikuta et al. teaches a similar power tool wherein the tool can be selectively switched between at least a first operating mode (e.g. a fastener state or distance-based mode) and a second mode (e.g. a force-based mode using current thresholds) via an input device such as a button (paragraphs 11, 20, 74-75), and where in the second mode, the tool determines the power tool is operating in a force-based operating mode (paragraph 161). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a second mode and the ability to determine the power tool is operating in a force-based operating mode in order to have allowed the tool to operate with different fastener types, for example.
Claim 9: Woyciesjes further comprises a pull mechanism (generally 114) that is driven by the motor and capable of translating the output shaft along the drive axis, though it is not necessarily a ball screw mechanism per the interpretation under112(f). However, Ikuta further teaches a ball screw mechanism (40) as a pull mechanism in the similar tool (paragraphs 84, 86-87). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a ball screw mechanism as it represents a common means for converting motor rotary motion to shaft linear motion in riveting tools.
Claim 10: Referring to Woyciesjes, the force-based operating mode (i.e. the main mode of Woyciesjes) implicitly includes plural force-based operating modes, each corresponding to a specific force (e.g. current threshold) needed to secure a rivet nut to a workpiece (e.g. column 6, line 56 - column 7, line 15). There are not necessarily three such modes. However, Ikuta further teaches means for adjusting a current threshold setting having e.g. six steps (paragraphs 78, 160). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided at least three force-based operating modes depending on the number of fastener types anticipated for use with the tool, for example.
Claim 11: The three force-based operating modes do not explicitly include an M6 operating mode that drives the output shaft to secure an M6 rivet nut, an M8 operating mode that drives the output shaft to secure an M8 rivet nut, and an M10 operating mode that drives the output shaft to secure an M10 rivet nut. However, it is noted that the claim does not otherwise specify how the operating modes are characterized or distinguished other than being intended for these particular fastener types and so any three operating modes could be arbitrarily designated as being associated with these types of fasteners. Additionally, both Woyciesjes (column 6, lines 59-64) and Ikuta (paragraph 159) acknowledge that fastener parameters, such as fastener length and diameter, are considered for threshold determination, so it would have been obvious to have associated threshold values with known fastener sizes.
Claim 12: Following from the above, the current threshold includes a first current threshold corresponding to the M6 operating mode, a second current threshold corresponding to the M8 operating mode, and a third current threshold corresponding to the M10 operating mode (i.e. any three modes), wherein the third current threshold is greater than the first and second current thresholds, and wherein the second current threshold is greater than the first current threshold (any set of three thresholds of different values would meet the above limitations).
Claim 14: Referring to Woyciesjes, the motor axis and the drive axis are parallel to each other (both horizontal, evident in Fig. 2).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Woyciesjes in view of Ikuta et al. as applied to claim 8 above, and further in view of Wille (U.S. Patent 5,605,070, cited IDS).
Claim 13: Woyciesjes further comprises a housing (108), an anvil (102) coupled to the housing, and a pull stud (104) extending from the anvil. Woyciesjes also contemplates using the systems with other fasteners such as popnuts (column 11, lines 31-35), but the disclosed pull stud is not necessarily capable of engaging a rivet nut, and the tool lacks a clutch mechanism that is disposed between the motor and the output shaft, wherein the clutch mechanism is in an engaged state when threading and unthreading the rivet nut onto the pull stud and transitions to a disengaged state when the rivet nut contacts the anvil. However, Wille teaches a similar tool for use with rivet nuts (e.g. title) having a pull stud (34) capable of engaging a rivet nut (column 8, lines 6-7), and a clutch mechanism (9) that is disposed between the motor and the output shaft (Fig. 1), wherein the clutch mechanism is in an engaged state when threading and unthreading the rivet nut onto the pull stud and transitions to a disengaged state when the rivet nut contacts the anvil (column 6, lines 11-27; column 8, lines 15-27). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Woyciesjes as taught by Wille in order to have accommodated different fastener types such as rivet nuts.
Claims 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Woyciesjes in view of Ikuta et al. as applied to claim 8 above, and further in view of Schiffler (U.S. PGPub 2010/0257720).
Claim 15: Woyciesjes further comprises a battery pack (112) configured to supply power to the motor (implied) and an indicator (210 - column 5, lines 43-54). The controller is not necessarily configured to monitor a power level of the battery pack, compare the power level to a predetermined value, and inhibit operation of the tool when the power level is below the predetermined value. However, Schiffler teaches a similar tool having a battery pack wherein the controller is configured to monitor a power level of the battery pack, compare the power level to a predetermined value, and inhibit operation of the tool when the power level is below the predetermined value (paragraphs 27-30). ). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided this function to Woyciesjes in order to have ensured adequate power for each rivet setting operation, for example.
Claim 16: Referring to Schiffler, the controller is configured to permit operation of the tool when the power level of the battery pack is above the predetermined value (paragraph 29).
Claim 17: The predetermined value is not necessarily adjustable via the input device. However, it has been held that adjustability, where needed, involves routine skill in the art. In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954). Please note that in the instant application, paragraph 66, Applicant has not disclosed any criticality for the adjustability of this feature. Furthermore, to the extent that the input device represents the user interface for supplying input parameters to the tool, it would have been reasonable to have provided such adjustability at the input device.
Claim 18: Referring to Schiffler, the controller is configured to output a signal indicating the power level of the battery pack is below the predetermined value (paragraph 29).
Claim 19: The indicator may be any one of a light-emitting-diode, a display screen, or an auditory device, and wherein the signal is provided by the indicator (paragraph 29).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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, Sunil K. Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew P Travers/Primary Examiner, Art Unit 3726
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