DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on June 12th 2026 is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the references cited therein are considered by the examiner.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 13-15 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.
Claim 13 recites the phrase “wherein the counterweight at least partially surrounds the spindle”. This claim is deemed indefinite because it is unclear whether the counterweight surrounds the spindle or not.
Double Patenting
5. 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.
5. Claims 1-3 and 6-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-11 of copending Application No. 19/637,170 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are drafted more broadly than the more narrowly recited claims in the reference application. The limitations of claims 1-3 and 6-11 are encompassed by the claims 1-3 and 6-11 of the reference application including: a power tool comprising: a housing, a motor, a driving gear, a driven gear, a crankshaft, a counterweight and a spindle.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
6. Claims 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-15 of copending Application No. 19/637,170 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are drafted more broadly than the more narrowly recited claims in the reference application. The limitations of claims 1-3 and 6-11 are encompassed by the claims 1-3 and 6-11 of the reference application including: a power tool comprising: a housing, a motor, a driving gear, a driven gear, a crankshaft, a counterweight and a spindle.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
7. Claim 17 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of copending Application No. 19/637,170 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are drafted more broadly than the more narrowly recited claims in the reference application. The limitations of claim 17 are encompassed by the claim 16 of the reference application including: a power tool comprising: a housing, a motor, a driving gear, a driven gear, a crankshaft, a counterweight and a spindle.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
8. Claims 1-12 and 16-20 are allowed.
Regarding claim 1, Fukinuki et al. (US 2021/0394288; “Fukinuki”) is the most relevant prior art.
Fukinuki discloses a power tool (100) comprising:
a housing (11) having a handle (11) configured to be grasped by a user (para. [0034]);
a motor (12) supported by the housing (11; Fig. 2) and defining a motor axis (101; Fig. 6);
a driving gear (para. [0038]) rotated by the motor (12) about the motor axis (101; para. [0038]);
a driven gear (132) defining a rotation axis (102), the driven gear (132) engaging the driving gear (para. [0038]) to be rotated by the driving gear (para. [0038]) about the rotation axis (102; Fig. 6);
a crankshaft (133) coupled to and rotatable with the driven gear (132; para. [0039], [0040]);
a counterweight (134) having a first yoke (see annotated diagram 1 below) coupled to the driven gear (132) to translate rotation of the driven gear (132) into reciprocating motion of the counterweight (134; para. [0040]; Fig. 6), the counterweight (134) defining a center of gravity; and
a spindle (see annotated diagram 1 below) having a second yoke (141a) coupled to the crankshaft (133) to translate rotation of the driven gear (132) into reciprocating motion of the spindle (see annotated diagram 1 below; para. [0040], [0041]),
wherein the counterweight and the spindle reciprocate opposite one another.
Fukinuki fails to disclose wherein the counterweight at least partially surrounds the spindle.
It would not have been obvious to modify the reference of Fukinuki with the aforementioned limitation because this would require reconfiguring the counterweight and spindle of Fukinuki. This reconfiguration would not be compatible with the current configuration of Fukinuki’s reciprocating tool, thus rendering said tool inoperable.
PNG
media_image1.png
442
496
media_image1.png
Greyscale
Diagram 1
Regarding claim 16, Fukinuki et al. (US 2021/0394288; “Fukinuki”) is the most relevant prior art.
Fukinuki discloses a power tool (100) comprising:
a housing (11) having a handle (11) configured to be grasped by a user (para. [0034]);
a motor (12) supported by the housing (11; Fig. 2) and defining a motor axis (101; Fig. 6);
a driving gear (para. [0038]) rotated by the motor (12) about the motor axis (101; para. [0038]);
a driven gear (132) defining a rotation axis (102), the driven gear (132) engaging the driving gear (para. [0038]) to be rotated by the driving gear (para. [0038]) about the rotation axis (102; Fig. 6);
a crankshaft (133) coupled to and rotatable with the driven gear (132; para. [0039], [0040]);
a counterweight (134) having a first yoke (see annotated diagram 1 above) coupled to the driven gear (132) to translate rotation of the driven gear (132) into reciprocating motion of the counterweight (134; para. [0040]; Fig. 6), the counterweight (134) defining a center of gravity; and
a spindle (see annotated diagram 1 above) having a second yoke (141a) coupled to the crankshaft (133) to translate rotation of the driven gear (132) into reciprocating motion of the spindle (see annotated diagram 1 above; para. [0040], [0041]),
wherein the counterweight and the spindle reciprocate opposite one another.
Fukinuki fails to disclose wherein the spindle extends through the counterweight.
It would not have been obvious to modify the reference of Fukinuki with the aforementioned limitation because this would require reconfiguring the counterweight and spindle of Fukinuki. This reconfiguration would not be compatible with the current configuration of Fukinuki’s reciprocating tool, thus rendering said tool inoperable.
9. Claims 13-15 would be allowable if rewritten or amended 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.
Regarding claim 13, Fukinuki et al. (US 2021/0394288; “Fukinuki”) is the most relevant prior art.
Fukinuki discloses a power tool (100) comprising:
a housing (11) having a handle (11) configured to be grasped by a user (para. [0034]);
a motor (12) supported by the housing (11; Fig. 2) and defining a motor axis (101; Fig. 6);
a driving gear (para. [0038]) rotated by the motor (12) about the motor axis (101; para. [0038]);
a driven gear (132) defining a rotation axis (102), the driven gear (132) engaging the driving gear (para. [0038]) to be rotated by the driving gear (para. [0038]) about the rotation axis (102; Fig. 6);
a crankshaft (133) coupled to and rotatable with the driven gear (132; para. [0039], [0040]);
a counterweight (134) having a first yoke (see annotated diagram 1 above) coupled to the driven gear (132) to translate rotation of the driven gear (132) into reciprocating motion of the counterweight (134; para. [0040]; Fig. 6), the counterweight (134) defining a center of gravity; and
a spindle (see annotated diagram 1 above) having a second yoke (141a) coupled to the crankshaft (133) to translate rotation of the driven gear (132) into reciprocating motion of the spindle (see annotated diagram 1 above; para. [0040], [0041]),
wherein the counterweight and the spindle reciprocate opposite one another.
Fukinuki fails to disclose wherein the counterweight at least partially surrounds the spindle.
It would not have been obvious to modify the reference of Fukinuki with the aforementioned limitation because this would require reconfiguring the counterweight and spindle of Fukinuki. This reconfiguration would not be compatible with the current configuration of Fukinuki’s reciprocating tool, thus rendering said tool inoperable.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to EYAMINDAE JALLOW whose telephone number is (571)270-1927. The examiner can normally be reached on Monday-Thursday from 7:30am-5:00pm and alternating Fridays from 7:30am-4:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SHELLEY SELF, can be reached on (571)272-4524. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
11. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/EYAMINDAE C JALLOW/Primary Examiner, Art Unit 3731
