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 .
Summary
This communication is a First Office Action Non-Final Rejection on the merits.
Claim(s) 1-7 is/are currently pending and considered below.
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.
Claim(s) 7 is/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 pre-AIA the applicant regards as the invention.
Regarding claim 7, introduction of “wherein the elastic member has a squeeze rate equal to or less than 30% when an elastic force of the hammer spring in a most significantly compressed state is applied to the elastic member” renders the claim indefinite because, as written, the scope of the claim is uncertain. Specifically, “an elastic force of the hammer spring in a most significantly compressed state is applied to the elastic member” varies based on how much force the motor (thereby hammer) is capable for produce (that is, if an electric tool has a motor with higher power output, it would apply higher elastic force to the elastic member than an electric tool with lower-powered motor). Therefore, the squeeze rate (thereby the scope) may vary. For the purposes of examination, a prior art that reads on claim 1 is understood to read on claim 7.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horie to US 2013/0284480 A1.
Regarding claim 1, Horie discloses an electric tool (1, Fig. 1) including
an impact mechanism (20), the impact mechanism comprising at least:
a drive shaft (21);
a hammer (26) having a hammer body (26);
a striking portion (28);
a hammer spring (23); and
an elastic member (o ring 25) sandwiched between the hammer body and the hammer spring (Fig. 1).
Regarding claim 2, Horie discloses the electric tool of claim 1, wherein the elastic member has a ring shape (o ring 25 is a ring shape).
Regarding claim 3, Horie discloses the electric tool of claim 1, wherein the hammer body has a groove having a ring shape which is open backward, and the elastic member is housed in the groove (grove upon which the o ring 25 is sandwiched between 26 and 23; Fig. 1).
Regarding claim 4, Horie discloses the electric tool of claim 1, further comprising a plate member (washer 24) having a ring shape (washer has a ring shape) between the hammer spring and the elastic member (Fig. 1).
Regarding claim 7, Horie discloses the electric tool of claim 1, wherein the elastic member has a squeeze rate equal to or less than 30% when an elastic force of the hammer spring in a most significantly compressed state is applied to the elastic member (see 112b rejection above).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horie in view of Furutachi (US 2025/0034357 A1).
Regarding claim 5, Horie discloses the electric tool of claim 1.
Horie does not explicitly disclose wherein the elastic member is made of fluororubber.
However, Furutachi discloses: “Fluororubber compositions have excellent oil resistance and fuel resistance, and are used as sealing molded materials, such as oil seals, O rings, and packings, in a wide range of fields, such as automotive and industrial machinery.”
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filling date of the claimed invention to have modified the elastic member, as disclosed by Horie, to be made of fluorubber, as taught by Furutachi, due to its advantages for o rings in machinery.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horie in view of Arroyo (US 2024/0297548 A1).
Regarding claim 6, Horie discloses the electric tool of claim 1.
Horie does not explicitly disclose wherein the elastic member has a hardness equal to or greater than 85 degrees.
However, Arroyo discloses that in a motorized unit 1, an elastic member may comprise a material having a Shore A hardness in the region of 65-90 (“[0010] The o-ring may comprise a material having a Shore A hardness in the region of 65-90” para 10)
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filling date of the claimed invention to have modified the elastic member, as disclosed by Horie, to have a hardness equal to or greater than 85 degrees, as taught by Arroyo, since it has been held that “[i]in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); in re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, one having ordinary skill in the art would have modified the elastic member with a motivation of providing relative resistance to compression in normal use, while also enabling compression in the event of abnormal use (Arroyo para 10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (See PTO-892 Notice of References Cited).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Himchan Song whose telephone number is (571)272-4142. The examiner can normally be reached M-Th 9:00 a.m. - 4:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at (571) 270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HIMCHAN SONG/Examiner, Art Unit 3731
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