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 .
DETAILED ACTION
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/10/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1 to 20 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 1 and 15:
Claim 1 reads that the controller is configured to “control the motor to inhibit rotation of the motor or a drivetrain in response to the rotation of the bit receiving portion”
And Claim 15 reads that the controller is configured to “control the motor to inhibit rotation of the spindle in response to the rotation of the flange nut”.
In both cases the claims are rejected as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted element would be the particular way the controller controls the motor to inhibit rotation.
The Specification provides support to the controller to control the motor to generate a torque in a second direction, opposite to the direction of the rotation detected, the torque maintains a rotational position of the motor, in response to determining that the positional quantity is different from the expected positional quantity of the motor, and as such will be interpreted.
Regarding Claim 9:
The Claim reads a step of “using a controller of the power tool, the motor to inhibit rotation of the motor or a drivetrain in response to the rotation of the bit receiving portion”.
The claim is rejected as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps would be the particular way the controller controls the motor to inhibit rotation.
The Specification provides support to the controller to control the motor to generate a torque in a second direction, opposite to the direction of the rotation detected, the torque maintains a rotational position of the motor, in response to determining that the positional quantity is different from the expected positional quantity of the motor, and as such will be interpreted.
Regarding Claim 15:
On the last line the claim reads: “in response to the rotation of the flange nut”. The Claim discloses that the spindle rotates and that the Hall sensors detect rotation of the spindle, not of the flange nut. The Claim will be read as -- in response to the rotation of the spindle--.
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 to 9, 13 to 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12491593, in view of Suzuki (US 2013/0082631).
The text of the respective claim of 12491593 will be shown in italics, underlined what is missing from the respective claim of 12491593. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding Claim 1:
The Claim reads: A power tool comprising: a housing; a bit receiving portion provided on the housing; a motor within the housing configured to rotate the bit receiving portion (Claim 1 of 12491593 reads: A power tool comprising: a housing; a bit receiving portion provided on the housing; a motor within the housing configured to rotate the bit receiving portion);
a Hall-effect sensor configured to detect a position of the bit receiving portion; and a controller coupled to the motor and the Hall-effect sensor (a controller coupled to the motor),
the controller configured, in an electronic spindle lock mode, to determine, based on signals from the Hall-effect sensor, that the bit receiving portion has rotated from an expected position (detect a positional quantity of the motor in a first direction, determine that the positional quantity is different from an expected positional quantity of the motor), and
control the motor to inhibit rotation of the motor or a drivetrain in response to the rotation of the bit receiving portion (See rejection 112, control the motor to generate a torque in a second direction, the torque maintains a rotational position of the motor, in response to determining that the positional quantity is different from the expected positional quantity of the motor).
As can be seen, Claim 1 of 12491593 misses using a Hall-effect sensor to detect a position of the bit receiving portion and provide that information to the controller, the controller being coupled to the Hall-effect sensor.
Suzuki teaches using Hall-effect sensors, coupled to the controller as part of an electronic spindle lock of the motor of a power tool (Paragraph 0089, rotational position sensor 14 includes at least one Hall device, and outputs a pulse signal to the control circuit 13 each time a rotational position of the rotor of the motor 20 has reached a predetermined rotational position of the motor 20).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Claim 1 of 12491593 the teachings of Suzuki and use Hall-effect sensors to detect an angular position of the bit receiving portion and provide that information to the controller to detect that the bit receiving portion has rotated from an expected position, as the use of hall-effect sensors as position sensors is a common practice in the art.
Regarding Claim 5:
The Claim reads; further comprising an electronic spindle lock button, wherein the controller is configured to: enter the electronic spindle lock mode when the electronic spindle lock button is actuated (Claim 7 of 12491593 reads: further comprising an electronic spindle lock button, wherein the controller is further configured to: enter the electronic spindle lock mode when the electronic spindle lock button is actuated)
Regarding Claim 6:
The Claim reads: wherein the controller is configured to enforce a maximum time limit for the electronic spindle lock mode (Claim 8 of 12491593 reads: wherein the controller is further configured to enforce a maximum time limit for the electronic spindle lock mode such that the spindle lock control loop is deactivated after the maximum time limit).
Regarding Claim 7:
The Claim reads: wherein the controller is configured to: determine that the power tool is stopped, enter the electronic spindle lock mode in response to the power tool being stopped, detect a movement of the power tool a delay time after entering the electronic spindle lock mode, and enter a sleep mode when no movement of the power tool is detected after the delay time (Claim 2 of 12491593 reads: wherein the controller is further configured to: determine that the power tool is stopped; activate the spindle lock control loop in response to determining that the power tool is stopped; detect, using one or more sensors, movement of the power tool a delay time after activating the spindle lock control loop; and enter a sleep mode when no movement of the power tool is detected after the delay time).
Regarding Claim 8:
The Claim reads: wherein the controller is configured to: determine that a wake-up signal is received when in the sleep mode, perform normal motor operation when the wake-up signal is received from a trigger, and enter the electronic spindle lock mode when the wake-up signal is received from one or more sensors (Claim 4 of 12491593 reads: wherein the controller is further configured to: determine that a wake-up signal is received when in the sleep mode; perform normal motor operation when the wake-up signal is received from a trigger; and activate the spindle lock control loop when the wake-up signal is received from the one or more sensors).
Regarding Claim 9:
The Claim reads: A method for operating a power tool including a motor and a bit receiving portion, the method comprising (Claim 9 of 12491593 reads: A method for operating an electronic spindle lock of a power tool including a motor configured to rotate a bit receiving portion),
in an electronic spindle lock mode (activating, using the controller, a spindle lock control loop in response to entering the electronic spindle lock mode): detecting, using a Hall-effect sensor, a position of the bit receiving portion;
determining that the bit receiving portion has rotated from an expected position based on the detected position (the spindle lock control loop including: detect a positional quantity of the motor in a first direction, determining that the positional quantity is different from an expected positional quantity of the motor);
and controlling, using a controller of the power tool, the motor to inhibit rotation of the motor or a drivetrain in response to the rotation of the bit receiving portion (See rejection 112, controlling the motor to generate a torque in a second direction, the torque maintains a rotational position of the motor, in response to determining that the positional quantity is different from the expected positional quantity of the motor).
As can be seen, Claim 9 of 12491593 misses using a Hall-effect sensor to detect a position of the bit receiving portion and provide that information to the controller, the controller being coupled to the Hall-effect sensor.
Suzuki teaches using Hall-effect sensors, coupled to the controller as part of an electronic spindle lock of the motor of a power tool (Paragraph 0089, rotational position sensor 14 includes at least one Hall device, and outputs a pulse signal to the control circuit 13 each time a rotational position of the rotor of the motor 20 has reached a predetermined rotational position of the motor 20).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Claim 1 of 12491593 the teachings of Suzuki and use Hall-effect sensors to detect an angular position of the bit receiving portion and provide that information to the controller to detect that the bit receiving portion has rotated from an expected position, as the use of hall-effect sensors as position sensors is a common practice in the art.
Regarding Claim 13:
The Claim reads: further comprising entering the electronic spindle lock mode when an electronic spindle lock button is actuated (Claim 7 of 12491593 reads: entering the electronic spindle lock mode when an electronic spindle lock button is actuated).
Regarding Claim 14:
The Claim reads: further comprising enforcing a maximum time limit for the electronic spindle lock mode (Claim 13 of 12491593 reads: wherein the controller is further configured to enforce a maximum time limit for the electronic spindle lock mode such that the spindle lock control loop is deactivated after the maximum time limit).
Claims 15 and 17 to 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12491593, in view of Ichikawa (JP 2019/004614) and Suzuki (US 2013/0082631).
The text of the respective claim of 12491593 will be shown in italics, underlined what is missing from the respective claim of 12491593. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding Claim 15:
The Claim reads: A grinder comprising: a spindle configured to receive a grinder accessory and a flange nut for securing the grinder accessory to the spindle; a motor coupled to the spindle and configured to rotate the grinder accessory during operation (Claim 15 of 12491593 reads; A power tool comprising: a housing; a bit receiving portion provided on the housing; a motor within the housing configured to rotate the bit receiving portion; a grinder is a kind of power tool and the “spindle configured to receive a grinder accessory” would be the bit receiving portion)
a Hall-effect sensor configured to detect a position of the spindle (a sensor configured to detect a positional quantity of the motor in a first direction); and
a controller coupled to the motor and the Hall-effect sensor (a controller coupled to the motor),
the controller configured, in an electronic spindle lock mode, to: determine, based on signals from the Hall-effect sensor, that the spindle has rotated from an expected position; and control the motor to inhibit rotation of the spindle in response to the rotation of the flange nut (See rejections 112, the controller configured to: enter an electronic spindle lock mode for controlling the motor to engage or disengage the bit receiving portion with a tool bit, and control the motor as a brake, that surely means “inhibit rotation”, in response to entering the spindle lock mode, wherein the motor generates a counter torque that maintains a rotational position of the motor in response to determining a difference between an expected positional quantity of the motor and the positional quantity of the motor in the first direction).
Claim 15 of 12491593 does not mention a flange nut for securing the grinder accessory to the spindle.
Ichikawa teaches a grinder comprising a flange nut for securing the grinder accessory to the spindle (Figure 1, tool 10, considered the grinder accessory is attached to the projection of the output shaft, considered the spindle, by annular fixture 14, that will be considered a flange nut.
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Claim 15 of 12491593 the teachings of Ichikawa and use a flange nut to attach the grinder accessory to the spindle since that is a well-known way to install a grinder accessory to a grinders
As can be seen, Claim 15 of 12491593 misses using a Hall-effect sensor to detect a position of the spindle and provide that information to the controller, the controller being coupled to the Hall-effect sensor.
Suzuki teaches using Hall-effect sensors, coupled to the controller as part of an electronic spindle lock of the motor of a power tool (Paragraph 0089, rotational position sensor 14 includes at least one Hall device, and outputs a pulse signal to the control circuit 13 each time a rotational position of the rotor of the motor 20 has reached a predetermined rotational position of the motor 20).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Claim 15 of 12491593 the teachings of Suzuki and use Hall-effect sensors to detect an angular position of the bit receiving portion and provide that information to the controller to detect that the bit receiving portion has rotated from an expected position, as the use of hall-effect sensors as position sensors is a common practice in the art.
Regarding Claim 17:
The Claim reads: further comprising an electronic spindle lock button, wherein the controller is configured to: enter the electronic spindle lock mode when the electronic spindle lock button is actuated (Claim 7 of 12491593 reads: further comprising an electronic spindle lock button, wherein the controller is further configured to: enter the electronic spindle lock mode when the electronic spindle lock button is actuated)
.
Regarding Claim 18:
The Claim reads: wherein the controller is configured to enforce a maximum time limit for the electronic spindle lock mode (Claim 8 of 12491593 reads: wherein the controller is further configured to enforce a maximum time limit for the electronic spindle lock mode such that the spindle lock control loop is deactivated after the maximum time limit).
Regarding Claim 19:
The Claim reads: wherein the controller is configured to: determine that the grinder is stopped, enter the electronic spindle lock mode in response to the grinder being stopped, detect a movement of the grinder a delay time after entering the electronic spindle lock mode, and enter a sleep mode when no movement of the grinder is detected after the delay time (Claim 2 of 12491593 reads: wherein the controller is further configured to: determine that the power tool is stopped; activate the spindle lock control loop in response to determining that the power tool is stopped; detect, using one or more sensors, movement of the power tool a delay time after activating the spindle lock control loop; and enter a sleep mode when no movement of the power tool is detected after the delay time).
Regarding Claim 20:
The Claim reads: wherein the controller is configured to: determine that a wake-up signal is received when in the sleep mode, perform normal motor operation when the wake-up signal is received from a trigger, and enter the electronic spindle lock mode when the wake-up signal is received from one or more sensors (Claim 4 of 12491593 reads: wherein the controller is further configured to: determine that a wake-up signal is received when in the sleep mode; perform normal motor operation when the wake-up signal is received from a trigger; and activate the spindle lock control loop when the wake-up signal is received from the one or more sensors).
Allowable Subject Matter
Claims 2, 10 and 16 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In particular Suzuki (US 2013/0082631) discloses a power tool with an electronic spindle lock that also locks the position of the motor, Zhong (US 10512971), Stanton (US 2020/0086396), Johnson (US 2014/0202725) and Schell (US 7578357) also disclose spindle locks that were considered relevant; while Miyazawa (WO 2020003696), Ichikawa (JP 2019/004614), Iwata (JP 2014/069253) and Wood (US 2013/0193891) teach using Hall sensors to detect angular position or rotors.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDUARDO R FERRERO whose telephone number is (571)272-9946. The examiner can normally be reached M-F 9:30-7:00.
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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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/EDUARDO R FERRERO/Examiner, Art Unit 3731
/ROBERT F LONG/Primary Examiner, Art Unit 3731
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