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 12/1/2025. Claims 1-18 are currently pending.
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:
the “manipulation part” of claim 1 and corresponding to control panel 6;
the “battery mount part” of claim 5 and corresponding to battery slot and latch 261;
the “indication part” of claim 8 and corresponding to LEDs 81 and 83;
the “upper coupling part” of claim 15 and corresponding to the shell portion 24;
the “lower coupling part” of claim 15 and corresponding to pivot member 271; and
the same limitations in claim 16.
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 § 112
The following is a quotation 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11-12 and 17-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 11 and 17, the limitation “plate-like base part” is indefinite because it is not clear in what manner the base part is like a plate. In order to further prosecution, the limitation has been interpreted to recite “base part in the form of a plate.”
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 (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 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.
Claims 1-6, 13, and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Machida (US 2020/0078919 A1).
Regarding claim 1, Machida discloses a power tool (1 – Fig. 2) comprising: a motor (2 – Fig. 2); a hammer mechanism (3 – Fig. 2) that is operably coupled to the motor and is configured to linearly drive a tool accessory along a driving axis (A1 – Fig. 2) that defines a front-rear direction of the power tool (para. 0027); a body housing (10 – Fig. 2) that houses the motor and the hammer mechanism (para. 0020); a handle member (15 – Fig. 2) that is coupled to the body housing via at least one elastic member (191 – Fig. 2) and includes a grip part (16 – Fig. 2) that is disposed rearward of the body housing to extend in an up-down direction that intersects the driving axis (see Fig. 2); a manipulation part (the dial of 43 – Fig. 2, para. 0043) that is configured to be manually operated by a user (para. 0043) and is continuous with an outer surface of the handle member (see Fig. 2); and at least one switch (the variable resistor and circuit board of 43 – Fig. 2, para. 0043) that is disposed within the handle member (see Fig. 2) and is configured to be switched between ON and OFF in response to manual operation of the manipulation part (the lowest setting of 43 is interpreted to be OFF and any setting above that is interpreted to be ON).
Machida further discloses:
Claim 2, the manipulation part (the dial of 43 – Fig. 2, para. 0043) is continuous with a facing surface of the handle member that faces the grip part (16 – Fig. 2; see Fig. 2 the surface on which 43 is disposed faces 16).
Claim 3, the facing surface is inclined upward as the facing surface extends forward (see Fig. 2, the surface on which 43 is disposed is inclined).
Claim 4, a controller (41 – Fig. 2) that is configured to control driving of the motor (para. 0042), wherein the at least one switch is configured to output a signal for setting a rotation speed of the motor to the controller in response to the manual operation of the manipulation part (para. 0043).
Claim 5, a portion of the handle member (15 – Fig. 2) between the grip part and the facing surface includes a battery mount part (171 – Fig. 2) that is configured to removably hold a battery (para. 0024 and see Fig. 2).
Claim 6, a controller (41 – Fig. 2) that is configured to control driving of the motor (para. 0042), wherein the at least one switch is configured to output a signal for setting a rotation speed of the motor to the controller in response to the manual operation of the manipulation part (para. 0043).
Claim 13, the outer surface of the manipulation part (the upper surface of the dial of 43 which is the upper surface of 43 – Fig. 2) and the outer surface of the handle member (the outer surface of 15 – Fig. 2) are substantially in the same plane (see Fig. 2, the dial of 43 is not visible in the side view, hence it is either in the same plane as the surface of 15 or slightly below which would be substantially in the same plane).
Claim 15, the handle member (15 – Fig. 2) includes an upper coupling part (19 – Fig. 2) that couples an upper end portion of the grip part (16 – Fig. 2) and the body housing (para. 0047), and a lower coupling part (18 – Fig. 2) that couples a lower end portion of the grip part and the body housing (para. 0047), and a front end portion of the lower coupling part is provided with the manipulation part (see Fig. 2).
Claim 16, a power tool (1 – Fig. 2) comprising: a motor (2 – Fig. 2); a hammer mechanism (3 – Fig. 2) that is operably coupled to the motor and is configured to linearly drive a tool accessory along a driving axis (A1 – Fig. 2) that defines a front-rear direction of the power tool (para. 0027); a body housing (10 – Fig. 2) that houses the motor and the hammer mechanism (para. 0020); a handle member (15 – Fig. 2) that is coupled to the body housing via at least one elastic member (191 – Fig. 2) and includes a grip part (16 – Fig. 2) that is disposed rearward of the body housing to extend in an up-down direction that intersects the driving axis (see Fig. 2); a manipulation part (the dial of 43 – Fig. 2, para. 0043) that is configured to be manually operated by a user (para. 0043) and is continuous with an outer surface of the handle member (see Fig. 2); and at least one switch (the variable resistor and circuit board of 43 – Fig. 2, para. 0043) that is disposed within the handle member (see Fig. 2) and is configured to be switched between ON and OFF in response to manual operation of the manipulation part (the lowest setting of 43 is interpreted to be OFF and any setting above that is interpreted to be ON); wherein: the handle member includes an upper coupling part (19 – Fig. 2) that couples an upper end portion of the grip part and the body housing (para. 0047), and a lower coupling part (18 – Fig. 2) that couples a lower end portion of the grip part and the body housing (para. 0047), and the manipulation part is provided at a front end portion of the lower coupling part of the handle member, continuously with a facing surface of the handle member that faces the grip part (see Fig. 2).
Claim Rejections - 35 USC § 103
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Machida (US 2020/0078919 A1) in view of Suda (US 2012/0169256 A1).
Regarding claim 10, Machida discloses essentially all of the elements of the claimed invention in claim 1.
However, Machida does not disclose an indication part.
Suda teaches a similar power tool, wherein the power tool comprises: a manipulation part (the assembly of 23 and 24 – Fig. 1) for controlling parameters of the tool and an indication part (22 – Fig. 1) that is configured to visually indicate information relating to a state of the power tool (para. 0122). One of ordinary skill in the art, upon reading the teaching of Suda, would have recognized that an indication part provides the benefit of allowing a user to confirm the state of the power tool, thereby improving proper use of the tool.
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 power tool of Machida to include an indication part as taught by Suda in order to improve proper use of the tool. Note that since the parameter of Machida is the rotation speed of the motor, the indication part would indicate the rotation speed of the motor.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Machida (US 2020/0078919 A1) in view of Fuller (US 4584718).
Regarding claim 14, Machida discloses essentially all of the elements of the claimed invention in claim 13.
However, Machida does not disclose that the manipulation part includes a flexible sheet that covers an outside surface of a manipulation panel.
Fuller teaches a manipulation part (the assembly of 42, 84, and 86 – Fig. 4) that includes a flexible sheet (42 – Fig. 4) that covers an outside surface of a manipulation panel (the top panel of 80 including 84 and 86 – Fig. 4) in order to improve the resistance of the manipulation part to water (col. 1, lines 25-27). One of ordinary skill in the art, upon reading the teaching of Fuller would have recognized that knobs 84 and 86 of Fuller are analogous to the manipulation part of Machida since they are both dials.
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 manipulation part of Machida to include a flexible sheet as taught by Fuller in order to improve the resistance of the manipulation part to water.
Allowable Subject Matter
Claims 7-9 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.
Claims 11-12 and 17-18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 claim 7, the primary reason for the indication of allowable subject matter is the recitation of the structure of the switch and manipulation part. Machida discloses a dial as the manipulation part and a resistor and circuit board as the switch. This is much different than two different switches and two push buttons. While such a set-up of two buttons with two switches may be known, the added limitation of each of the first and second buttons being disposed at least partially outside a projection area of the grip part when the grip is projected from the rear is not known. This extra limitation is specific to applicant’s invention and it is not clear how this limitation may be met with a reference that simply teaches two buttons and two switches without engaging in impermissible hindsight.
Regarding claims 11 and 17, Machida clearly doesn’t disclose a manipulation panel. While a manipulation panel having a plate base part and push button is known the limitation of a push button disposed in a hole formed in the base part and coupled to the base part by at least two flexible arm parts is not known.
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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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731 7/21/2026
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