P27872.A09
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants
`
`: Hidenori SHIMIZU et a1.
`
`App1.No.
`
`: 11/126,351
`
`Filed
`
`For
`
`: May 11, 2005
`
`: ROTARY IMPACT TOOL
`
`Group Art Unit : 3721
`
`Examiner : N. Chukwurah
`
`Confirmation No. : 3224
`
`REPLY BRIEF UNDER 37 C.F.R. § 41.41(a)(1)
`
`Commissioner for Patents
`
`US. Patent and Trademark Office
`
`Customer Service Window, Mail Stop Appeal Brief-Patents
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Sir :
`
`The instant Reply Brief is in response to the Examiner’s Answer dated September
`
`25, 2008, the period for reply extending until November 25, 2008.
`
`The Examiner maintains the grounds of rejection advanced in the final rejection
`
`of claims 1, 3, 5, 7, 9, and 10 and provides arguments in support thereof.
`
`Appellants note that this Reply Brief is being filed under 37 C.F.R. § 41 .41(a)(l)
`
`and is directed to the arguments presented in the Examiner’s Answer, and therefore must
`
`be entered unless the final rejection is withdrawn in response to the instant Reply Brief
`
`Appellants note that this Reply Brief addresses points made in the Examiner’s Answer
`
`and does not repeat the arguments set forth in the Appeal Brief.
`
`It is respectfully submitted that the Appeal Brief filed July 14, 2008 has fully
`
`addressed the requirements for patentability of the pending claims. Accordingly, the
`
`herein contained remarks are merely supplemental to the Appeal Brief filed on July 14,
`
`2008 and all previously proffered arguments in the Appeal Brief are incorporated herein.
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants
`
`: Hidenori SHIMIZU et a1.
`
`App1.No.
`
`: 11/126,351
`
`Filed
`
`For
`
`: May 11, 2005
`
`: ROTARY IMPACT TOOL
`
`Group Art Unit : 3721
`
`Examiner : N. Chukwurah
`
`Confirmation No. : 3224
`
`REPLY BRIEF UNDER 37 C.F.R. § 41.41(a)(1)
`
`Commissioner for Patents
`
`US. Patent and Trademark Office
`
`Customer Service Window, Mail Stop Appeal Brief-Patents
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Sir :
`
`The instant Reply Brief is in response to the Examiner’s Answer dated September
`
`25, 2008, the period for reply extending until November 25, 2008.
`
`The Examiner maintains the grounds of rejection advanced in the final rejection
`
`of claims 1, 3, 5, 7, 9, and 10 and provides arguments in support thereof.
`
`Appellants note that this Reply Brief is being filed under 37 C.F.R. § 41 .41(a)(l)
`
`and is directed to the arguments presented in the Examiner’s Answer, and therefore must
`
`be entered unless the final rejection is withdrawn in response to the instant Reply Brief
`
`Appellants note that this Reply Brief addresses points made in the Examiner’s Answer
`
`and does not repeat the arguments set forth in the Appeal Brief.
`
`It is respectfully submitted that the Appeal Brief filed July 14, 2008 has fully
`
`addressed the requirements for patentability of the pending claims. Accordingly, the
`
`herein contained remarks are merely supplemental to the Appeal Brief filed on July 14,
`
`2008 and all previously proffered arguments in the Appeal Brief are incorporated herein.
`
`
`
`P27872.A09
`
`In order to facilitate review of the Reply Brief and for the sake of brevity, the present
`
`remarks do not
`
`include a discussion of all rejected claims or points raised by the
`
`Examiner, and such is not to be considered an acquiescence to the Examiner’s rejections
`
`or remarks.
`
`
`
`P27872.A09
`
`(1)
`
`STATUS OF THE CLAIMS
`
`Claims 2, 4, 6, and 8 have been canceled.
`
`Claims 1, 3, 5, 7, 9, and 10 stand finally rejected under 35 U.S.C. § 103(a) as
`
`being unpatentable over SUZUKI et al. (US. Patent No. 6,607,041) in View of AMANO
`
`et al. (US. Patent No. 6,371,218) and filrther in View of SANDERS (US. Patent No.
`
`5,056,607).
`
`Claims 1, 3, 5, 7, 9, and 10 are on appeal.
`
`
`
`P27872.A09
`
`(2)
`
`GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL
`
`Claims 1, 3, 5, 7, 9, and 10 stand finally rejected under 35 U.S.C. § 103(a) as
`
`being unpatentable over SUZUKI et al. (US. Patent No. 6,607,041) in View of AMANO
`
`et al. (US. Patent No. 6,371,218) and further in View of SANDERS (US. Patent No.
`
`5,056,607).
`
`Claims 1, 3, 5, 7, 9, and 10 are on Appeal.
`
`
`
`P27872.A09
`
`(3) ARGUMENT
`
`Appellant’s claimed rotary impact tool as claimed in claim 1
`
`includes a main
`
`switch, a tight fastening mode setting switch, and a controller that stops driving of the
`
`motor; and when a time period between a time when the main switch is switched off and
`
`a time when the main switch is switched on again by the user is shorter than a
`
`predetermined time period, after the driving of the motor is off due to completion of the
`
`normal fastening operation, the controller performs the tight fastening operation.
`
`The Examiner has taken the position that the CPU of the SUZUKI et a1. device is
`
`programmable and is capable of regulating the time at which the switch is turned on and
`
`off. Further, the Examiner has contended that the claim limitation is merely a functional
`
`limitation, and the programming in the combination of references is capable of meeting
`
`the functional limitation.
`
`However, Appellant respectfully submits that SUZUKI et a1. does not teach or
`
`suggest the measurement of a time period between a time when the main switch is
`
`switched off and a time when the main switch is switched on again, as set forth in
`
`independent claim 1. Contrary to the Examiner’s assertions, there is nothing in the
`
`SUZUKI et al. patent which suggests that the SUZUKI et al. device is capable of being
`
`programmed to measure the time period between a time when the main switch is switched
`
`of and a time when the main switch is switched on again. Accordingly, there is no
`
`teaching or suggestion in the prior art that the programming in the combination of
`
`references is capable of performing the functions and meeting the claim limitations, as
`
`suggested by the Examiner.
`
`
`
`P27872.A09
`
`The SUZUKI et a1. patent discloses counting the number of times the main switch
`
`has been operated in order to adhere to a maintenance schedule.
`
`SUZUKI et a1.
`
`completely lacks any disclosure or teaching of measurement of a time period, as set forth
`
`in independent claim 1.
`
`Further, the AMANO et a1. patent and the SANDERS patent both also fail to
`
`teach or suggest a device that includes a controller that controls the device such that the
`
`measurement of a time period between a time when the main switch is switched afi’and a
`
`time when the main switch is switched on again. Therefore, the AMANO et a1. and
`
`SANDERS patents fail to cure the deficiencies of the SUZUKI et a1. device, and even
`
`assuming, arggendo, that the teachings of SUZUKI et a1., AMANO et a1., and SANDERS
`
`have been properly combined, Applicants’ claimed rotary impact too] including, i_n_tg
`
`@, a main switch; and a tight fastening mode setting switch; in which the “controller
`
`stops driving of the motor when the rotation angle obtained from an output of the rotation
`
`angle sensor becomes equal to or larger than a predetermined reference value in the tight
`
`fastening mode; and when a time period between a time when the main switch is
`
`switched off and a time when the main switch is switched on again by the user is shorter
`
`than a predetermined time period, after the driving of the motor is off due to completion
`
`of the normal fastening operation, the controller performs the tight fastening operation,
`
`although the tight fastening mode setting switch is switched off”, as recited in claim 1,
`
`would not have resulted from the combined teachings thereof.
`
`For at least all of the above reasons, Appellant submits that the rejection of claim
`
`1 under 35 U.S.C. § 103(a) over SUZUKI et al. in view Iof AMANO et a1. and SANDERS
`
`
`
`P27872.A09
`
`is improper. Therefore, Appellant respectfully requests that the decision of the Examiner
`
`to finally reject claim 1 under 35 U.S.C. § 103(a) be reversed.
`
`Appellant’s claimed rotary impact tool as claimed in claim 9 includes a main
`
`switch, a tight fastening mode setting switch, and a controller that stops driving of the
`
`motor; and when a time period between a time when the main switch is switched off and
`
`a time when the main switch is switched on again by the user is shorter than a
`
`predetermined time period, after the driving of the motor is off due to completion of the
`
`normal fastening operation, the controller performs the tight fastening operation.
`
`The Examiner has taken the position that the CPU of the SUZUKI et a1. device is
`
`programmable and is capable of regulating the time at which the switch is turned on and
`
`off. Further, the Examiner has contended that the claim limitation is merely a functional
`
`limitation, and the programming in the combination of references is capable of meeting
`
`the functional limitation.
`
`However, Appellant respectfully submits that SUZUKI et a1. does not teach 0r
`
`suggest the measurement of a time period between a time when the main switch is
`
`switched off and a time when the main switch is switched on again, as set forth in
`
`independent claim 9. Contrary to the Examiner’s assertions,
`
`there is nothing in the
`
`SUZUKI et al. patent which suggests that the SUZUKI et al. device is capable of being
`
`programmed to measure the time period between a time when the main switch is switched
`
`ofl” and a time when the main switch is switched on again. Accordingly, there is no
`
`teaching or suggestion in the prior art that the programming in the combination of
`
`
`
`P27872.A09
`
`references is capable of performing the functions and meeting the claim limitations, as
`
`suggested by the Examiner.
`
`The SUZUKI et a1. patent discloses counting the number of times the main switch
`
`has been operated in order to adhere to a maintenance schedule. Thus, since SUZUKI et
`
`a1.
`
`teaches only counting, SUZUKI et a1. does not disclose,
`
`teach, or suggest
`
`the
`
`measurement of a time period between a time when the main switch is switched off and a
`
`time when the main switch is switched on again, as set forth in independent claim 9.
`
`Further, the AMANO et a1. patent and the SANDERS patent both also fail to
`
`teach or suggest a device that includes a controller that controls the device such that the
`
`measurement ofa time period between a time when the main switch is switched ofi” and a
`
`time when the main switch is switched on again. Therefore, the AMANO et al. and
`
`SANDERS patents fail to cure the deficiencies of the SUZUKI et a1. device, and even
`
`assuming, arggendo, that the teachings of SUZUKI et al., AMANO et al., and SANDERS
`
`
`have been properly combined, Appellant’s claimed rotary impact tool including, inter
`
`ali_a, a main switch; and a tight fastening mode setting switch; in which the “controller
`
`stops driving of the motor when the rotation angle obtained from an output of the rotation
`
`angle sensor becomes equal to or larger than a predetermined reference value in the tight
`fastening mode; and when a time period between a time when the main switch is
`
`switched off and a time when the main switch is switched on again by the user is shorter
`
`than a predetermined time period, after the driving of the motor is off due to completion
`
`of the normal fastening operation, the controller performs the tight fastening operation,
`
`although the tight fastening mode setting switch is switched off”, as recited in claim 9,
`
`would not have resulted from the combined teachings thereof.
`
`
`
`P27872.A09
`
`For at least all of the above reasons, Appellant submits that the rejection of claim
`
`9 under 35 U.S.C. § 103(a) over SUZUKI et al. in View of AMANO et a1. and SANDERS
`
`is improper. Therefore, Appellant respectfully requests that the decision of the Examiner
`
`to finally reject claim 9 under 35 U.S.C. § 103(a) be reversed.
`
`Thus, Appellant respectfully submits that each and every pending claim of the
`
`present application meets the requirement for patentability under 35 U.S.C. § 103(a), and
`
`that the present application and each pending claim are allowable over the prior art of
`
`record.
`
`Should there be any questions, any representative of the US. Patent and
`
`Trademark Office is invited to contact the undersigned at the below listed number.
`
`Respectfully Submitted,
`Hidenori SHIMIZU et a1.
`/7
`./
`/>/ Reg. #47343
`
`
`Reg. No. 29,027
`
`Linda .1. Hedge
`
`November 24, 2008
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 Roland Clarke Place
`
`Reston, VA 20191
`(703) 716-1191
`
`
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