P27872.A04
`
`REMARKS
`
`Initially, Applicants would like to express appreciation to the Examiner for the
`
`detailed Final Official Action provided.
`
`Upon entry of the above amendment, claims 1 and 9 will have been amended,.
`
`Accordingly, claims 1, 3, 5, 7, 9, and 10 are currently pending. Applicants respectfully
`
`request reconsideration of the outstanding rejections and allowance of claims 1, 3, 5, 7, 9,
`
`and 10 in the present application. Such action is respectfully requested and is now
`
`believed to be appropriate and proper.
`
`Claims 9 and 10 have been rejected under 35 U.S.C. § 102(a) as being anticipated
`
`by SUZUKI et al. (US. Patent No. 6,607,041).
`
`Although Applicants do not necessarily agree with the Examiner’s rejection of the
`
`claims on this ground, nevertheless, Applicants have amended independent claim 9 to
`
`clearly obviate the above noted ground of rejection in order to expedite prosecution of the
`
`present application.
`
`In this regard, Applicants note that SUZUKI et a1. fails to show each
`
`and every element recited in the amended claim.
`
`In particular, claim 9, as ainended, sets
`
`forth a rotary impact tool including, inter alia, a rotary driving mechanism, a hammer, an
`
`output shaft, a main switch, a torque setting switch, a torque calculator, a controller, and
`
`“a tight fastening mode setting switch that sets the tight fastening mode where a fastening
`
`member is fastened further to stop fastening of the fastening member in normal fastening
`
`torque; wherein the tight fastening mode setting switch is provided on an exterior surface
`
`of a housing thereby enabling to be touched directly by an operator in fastening
`
`operations; in the tight fastening mode, the impact blows of the hammer are performed in
`
`a predetermined term until a predetermined number of impact blows of the hammer are
`
`
`
`REMARKS
`
`Initially, Applicants would like to express appreciation to the Examiner for the
`
`detailed Final Official Action provided.
`
`Upon entry of the above amendment, claims 1 and 9 will have been amended,.
`
`Accordingly, claims 1, 3, 5, 7, 9, and 10 are currently pending. Applicants respectfully
`
`request reconsideration of the outstanding rejections and allowance of claims 1, 3, 5, 7, 9,
`
`and 10 in the present application. Such action is respectfully requested and is now
`
`believed to be appropriate and proper.
`
`Claims 9 and 10 have been rejected under 35 U.S.C. § 102(a) as being anticipated
`
`by SUZUKI et al. (US. Patent No. 6,607,041).
`
`Although Applicants do not necessarily agree with the Examiner’s rejection of the
`
`claims on this ground, nevertheless, Applicants have amended independent claim 9 to
`
`clearly obviate the above noted ground of rejection in order to expedite prosecution of the
`
`present application.
`
`In this regard, Applicants note that SUZUKI et a1. fails to show each
`
`and every element recited in the amended claim.
`
`In particular, claim 9, as ainended, sets
`
`forth a rotary impact tool including, inter alia, a rotary driving mechanism, a hammer, an
`
`output shaft, a main switch, a torque setting switch, a torque calculator, a controller, and
`
`“a tight fastening mode setting switch that sets the tight fastening mode where a fastening
`
`member is fastened further to stop fastening of the fastening member in normal fastening
`
`torque; wherein the tight fastening mode setting switch is provided on an exterior surface
`
`of a housing thereby enabling to be touched directly by an operator in fastening
`
`operations; in the tight fastening mode, the impact blows of the hammer are performed in
`
`a predetermined term until a predetermined number of impact blows of the hammer are
`
`
`
`P27872.A04
`
`performed as a tight fastening operation; when the tight fastening mode setting switch is
`
`switched on, the controller continuously drives the rotary driving mechanism so as to
`
`
`perform LIE tight fastening operations continuously; and when a number of th_e impact
`
`blows of the hammer corresponding to the fastening torque set in the torque setting
`
`switch is performed, the controller stops driving of the motor in the tight fastening
`
`mode”.
`
`This amendment is fully supported by the specification, including the claims and
`
`drawings, and no prohibited new matter has been added.
`
`In Applicants’ invention, as
`
`claimed in amended claim 9, the rotary impact tool includes a tight fastening mode
`
`setting switch that is provided on an exterior surface of the housing, thereby allowing the
`
`tight fastening mode setting switch to be touched directly by an operator during the
`
`fastening operations. Support for this amendment can be found at least in figure 5 of the
`
`present application. Further, in Applicants’ invention, as claimed in amended claim 9,
`
`the rotary impact tool includes a tight fastening mode Operation in which a predetermined
`
`number of impact blows of the hammer are performed or the impact blows of the hammer
`
`are performed for a predetermined period of time until a number of rotations of the shaft
`
`of the motor reaches a predetermined reference number, or until the rotation angle of the
`
`output shaft reaches a predetermined angle. Support for this amendment can be found at
`
`least in the originally filed specification, on page 8, line 21 through page 9, line 2.
`
`In the Final Official Action, the Examiner asserts that the SUZUKI et a1. device
`
`includes a normal fastening mode (the temporary tightening mode) and a tight fastening
`
`mode (the torque adjusting mode). However, although the SUZUKI et a1. patent
`
`discloses a rotary impact power tool including selectable fastening modes, the SUZUKI
`
`
`
`P27872.A04
`
`et al. patent discloses only a normal fastening mode. The SUZUKI et a1. patent does not
`
`disclose a tight fastening mode as set forth in amended claim 9.
`
`In this regard, Applicants initially note that SUZUKI et al. discloses an (1) Impact
`
`Number Setting Mode (Tightening Operation Mode);
`
`(2) Temporary Tightening
`
`Operation, (3) Disassembly Operation, (4) Torque Adjusting Mode, and (5) Repairing
`
`Operation Mode, as examples of the selectable fastening modes. Among these selectable
`
`fastening modes, the (1) Impact Number Setting Mode or (2) Temporary Tightening
`
`Operation may correspond to the claimed normal fastening mode. However, SUZUKI et
`
`a1. does not disclose a tight fastening mode which is performed in addition to the normal
`
`fastening mode.
`In a true tight fastening mode, the fastening member must be fastened
`further to stop fastening of the fastening member in normal fastening torque. SUZUKI et
`
`al. does not contain a description of combining the fastening modes (I) - (5) described
`
`above. See particularly column 16, line 7, through column 20, line 56 of SUZUKI et al.
`
`The Examiner asserts that the (4) Torque Adjusting Mode of SUZUKI et a1.
`
`corresponds to the claimed tight fastening mode. However, Torque Adjusting Mode of
`
`SUZUKI et a1. is a mode to drive the motor in a sloWer rotation speed. See particularly
`
`column 19, lines 7-17 of SUZUKI et al. The Torque Adjusting Mode of SUZUKI et a1. is
`
`provided to prevent damage to the fastening device and impact tool when the tightening
`
`torque is too strong.
`
`See column 18,
`
`lines 61-63 of SUZUKI et a1. Additionally,
`
`SUZUKI et al. contains no description that the torque is adjusted or increased further to
`
`fasten the fastening member which was previously fastened in another fastening mode.
`
`In this regard, we note again that SUZUKI et a1. does not disclose combining any of the
`
`fastening modes (1) - (5).
`
`
`
`P27872.A04
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`Moreover, the rotary impact tool of SUZUKI et al. cannot switch the fastening
`
`mode without detaching the battery. SUZUKI et al. discloses that “[b]ecause dial section
`
`34 is only accessible when battery 122 is detached from power tool 1, the user is
`
`prevented from inadvertently changing the setting condition during operation” (column
`
`15, liens 44-47). Further, SUZUKI et al. discloses that “FIG. 5 shows the tightening tool
`
`along line 11 shown in FIG.
`
`1 and thus shows the bottom portion of tightening tool 1 in
`
`the situation in which battery 22, which may preferably be a rechargeable battery pact,
`
`has been separated from the tightening tool” (column 15, liens 29-33). Accordingly, the
`
`SUZUKI et al. device is not intended to easily switch between fastening modes by the
`
`operator.
`
`Thus, the SUZUKI et al. patent does not show a rotary impact tool including, infl
`
`Lia, a rotary driving mechanism, a hammer, an output shaft, a main switch, a torque
`
`setting switch, a torque calculator, a controller, “a tight fastening mode setting switch that
`
`sets the tight fastening mode where a fastening member is fastened further to stop
`
`fastening of the fastening member in normal fastening torque; wherein the tight fastening
`
`mode setting switch is provided on an exterior surface of a housing thereby enabling to
`
`be touched directly by an operator in fastening operations; in the tight fastening mode,
`
`the impact blows of the hammer are performed in a predetermined term until a
`
`predetermined number of impact blows of the hammer are performed as a tight fastening
`
`operation; when the tight fastening mode setting switch is switched on, the controller
`
`continuously drives the rotary driving mechanism so as to perform th_e tight fastening
`
`
`operations continuously; and when a number of flip impact blows of the hammer
`
`corresponding to the fastening torque set in the torque setting switch is performed, the
`
`
`
`P27872.A04
`
`controller stops driving of the motor in the tight fastening mode”, as set forth in amended
`
`claim 9. Since the reference fails to show each and every element of the claimed device,
`
`the rejection of claim 9 under 35 U.S.C. § 102(5) over SUZUKI et a1. is improper and
`
`withdrawal thereof is respectfully requested.
`
`The Examiner has further taken the position that the controller is capable of
`
`increasing a phase level of the fastening torque as claimed in claim 10. Applicants
`
`submit that dependent claim 10, which is at least patentable due to its dependency from
`
`claim 9, for the reasons noted above, recites additional features of the invention and is
`
`also separately patentable over the prior art of record based on the additionally recited
`
`features.
`
`In this regard, it is initially noted that the Examiner has provided the unsupported
`
`statement that the SUZUKI et al.1device is “capable” of the features claimed in claim 10.
`
`The Examiner has not pointed to any disclosure in the SUZUKI et a1. reference which
`
`describes that
`
`the SUZUKI et al. device is “capable” of these claimed features.
`
`Accordingly, Applicants respectfully submit that there is no disclosure of the subject
`
`matter claimed in claim 10, as asserted by the Examiner. Therefore, Applicants submit
`
`that the invention as recited in dependent claim 10 is not disclosed by the applied
`
`reference and that dependent claim 10 is separately patentable for these additional
`
`reasons.
`
`The Examiner has rejected claims 1, 3, 5, and 7 under 35 U.S.C. § 103(a) as being
`
`unpatentable over SUZUKI et al. in view of AMANO et al. (US Patent No. 6,371,218).
`
`Although Applicants do not necessarily agree with the Examiner's rejection of
`
`claim 1 on this ground, nevertheless, Applicants have amended independent claim 1 to
`
`10
`
`
`
`P27872.AO4
`
`clearly obviate the above noted ground of rejection in order to expedite prosecution of the
`
`present application.
`
`In this regard, Applicants note that SUZUKI et a1. and AMANO et
`
`al. fail to teach or suggest the subject matter claimed in amended claim 1.
`
`In particular,
`
`claim 1, as amended, sets forth a rotary impact tool including, inter alia, “a tight fastening
`
`mode setting switch that sets the tight fastening mode in which a fastening member is
`
`fastened further to stop fastening of the fastening member in normal fastening torque;
`
`wherein the tight fastening mode setting switch is provided on an exterior surface of a
`
`housing thereby enabling to be touched directly by an operator in fastening operations, in
`
`, the tight
`
`fastening mode,
`
`the impact blows of the hammer are performed in a
`
`predetermined term until a rotation angle of the output shaft reaches to a predetermined
`
`V angle as a tight fastening operation; when the tight fastening mode setting switch is
`
`switched on, the controller continuously drives the rotary driving mechanism so as to
`
`perform LIE tight fastening operations continuously”.
`
`This amendment is fully supported by the specification, including the claims and
`
`drawings, and no prohibited new matter has been added.
`
`In Applicants’ invention, as
`
`claimed in amended claim I, the rotary impact tool includes a tight fastening mode
`
`setting switch that is provided on an exterior surface of the housing, thereby allowing the
`
`tight fastening mode setting switch to be touched directly by an operator during the
`
`fastening operations. Support for this amendment can be found at least in figure 5 of the
`
`present application. Further, in Applicants’ invention, as claimed in amended claim 1,
`
`the rotary impact tool includes a tight fastening mode Operation in which a predetermined
`
`number of impact blows of the hammer are performed or the impact blows of the hammer
`
`are performed for a predetermined period of time until a number of rotations ‘of the shaft
`
`11
`
`
`
`P27872.AO4
`
`of the motor reaches a predetermined reference number, or until the rotation angle of the
`
`output shaft reaches a predetermined angle. Support for this amendment can be found at
`
`least in the originally filed specification, on page 8, line 21 through page 9, line 2.
`
`As discussed fully above, the SUZUKI et al. device does not include a tight
`
`fastening mode, nor does the SUZUKI et a1. device include a tight fastening mode setting
`
`switch that is provided on the exterior surface of the housing, as set forth in amended
`
`claim 1.
`
`The AMANO et al. patent is directed to an impact driven rotation device. As can
`
`be clearly seen in the figures and the specification, AMANO et al. fails to teach or
`
`suggest a rotary impact tool including the tight fastening mode as claimed and including a
`
`tight fastening mode setting switch that is provided on the exterior surface of the housing.
`
`Therefore, the AMANO et a1. patent fails to cure the deficiencies of the SUZUKI et al.
`
`device, and even assuming, arguendo, that the teachings of SUZUKI et a1. and AMANO
`
`et al. have been properly combined, Applicants' claimed rotary impact tool would not
`have resulted from the combined'teachings thereof.
`
`Further, there is nothing in the cited prior art that would lead one of ordinary skill
`
`in the art to make the modification suggested by the Examiner in the rejection of claim 1
`
`under 35 U.S.C. § 103(a) over SUZUKI et al. in View of AMANO et al. Thus, the only
`
`reason to combine the teachings of SUZUKI et a1. and AMANO et al. results from a
`
`review of Applicants' disclosure and the application of impermissible hindsight.
`
`Accordingly, the rejection of claim 1 under 35 U.S.C. § 103(a) over SUZUKI et al. in
`
`view of AMANO et a1. is improper for all the above reasons and withdrawal thereof is
`
`respectfully requested.
`
`12
`
`
`
`P27872.A04
`
`The Examiner has further taken the position that the controller is capable of
`
`increasing a phase level of the fastening torque as claimed in claim 5. Applicants submit
`
`that dependent claim 5, which is at least patentable due to its dependency from claim 1,
`
`for the reasons noted above, recites additional features of the invention and is also
`
`separately patentable over the prior art of record based on the additionally recited
`
`features.
`
`In this regard, it is initially noted that the Examiner has provided the unsupported
`
`statement that the SUZUKI et al. device is “capable” of the features claimed in claim 5.
`
`'The Examiner has not pointed to any disclosure in the SUZUKI et al. reference which
`
`describes that
`
`the SUZUKI et
`
`a1. device is “capable” of these claimed features.
`
`Accordingly, Applicants respectfully submit that there is no disclosure of the subject
`
`matter claimed in claim 5, as asserted by the Examiner. Therefore, Applicants submit
`
`that
`
`the invention as recited in dependent claim 5 is not disclosed by the applied
`
`references and that dependent claim 5 is separately patentable for these additional
`
`reasons.
`
`Applicants submit that dependent claims 3 and 7, which are at least patentable due
`
`to their dependency from claim 1, for the reasons noted above, recite additional features
`
`of the invention and are also separately patentable over the prior art of record based on
`
`the additionally recited features.
`
`Accordingly, Applicants respectfully request reconsideration and withdrawal of
`
`the rejections, and an early indication of the allowance of claims 1, 3, 5, 7, 9, and 10.
`
`13
`
`
`
`P27872.A04
`
`SUMMARY AND CONCLUSION
`
`In view of the foregoing, it is submitted that the present amendment is proper for
`
`entry since it merelyclarifies language describing the position of the tight fastening mode
`
`setting switch, and the tight fastening mode operation, which is an issue about which
`
`Applicants have already presented arguments and it is also submitted that none of the
`
`references of record, considered alone or in any proper combination thereof, anticipate or
`
`render obvious Applicants’ invention as recited in claims 1, 3, 5, 7, 9, and 10. The
`
`applied references of record have been discussed and distinguished, while significant
`
`claimed features of the present invention have been pointed out.
`
`Accordingly, consideration of the present amendment, reconsideration of the
`
`outstanding Final Official Action, and allowance of the present amendment and all of the
`
`claims therein are respectfully requested and now believed to be appropriate.
`
`Applicants have made a sincere effort to place the present application in condition
`
`for allowance and believe that they have now done so.
`
`Any amendments to the claims which have been made in this amendment, which
`
`do not narrow the scope of the claims, and which have not been specifically noted to
`
`overcome a rejection based upon the prior art, should be considered cosmetic in nature,
`
`and to have been made for a purpose unrelated to patentability, and no estoppel should be
`
`deemed to attach thereto.
`
`14
`
`
`
`P27872.A04
`
`Should there be any questions, the Examiner is invited to contact the undersigned
`
`at the below listed number.
`
`Respectfully Submitted,
`Hidenori SHIMIZU et a1.
`
`Linda J Hodge
`
`Reg. #47,348
`
`Reg. No. 29,027
`
`April 30, 2007
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 Roland Clarke Place
`‘
`
`Reston, VA 20191
`
`(703) 716-1191
`
`15
`
`
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