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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/049,911
`
`10/22/2020
`
`Mitsumasa MIZUNO
`
`065933-0795
`
`9388
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`LEEDS, DANIEL JEREMY
`
`3731
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/14/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/049,911
`MIZUNO etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`DANIEL J LEEDS
`3731
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 3/4/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-4 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 1-4 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11) The drawing(s) filed on 10/22/2020 is/are: a)[¥) accepted or b)(. objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220607
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA 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.
`
`Responseto Arguments
`
`Applicant's arguments regarding the 103 rejections have been fully considered
`
`but they are not persuasive. In response to the Applicant’s amendedclaims, the
`
`Examiner has updatedthe citations as seen below.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) INGENERAL.—The specification shall contain a written description of the
`invention, and of the manner and process of making and usingit, in suchfull, clear, concise,
`and exact terms as to enable any person skilled in the art to whichit pertains, or with whichit
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AlA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and usingit, in suchfull, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with whichit is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
`Claim 1, and all subsequent dependentclaims are rejected under 35 U.S.C. 112(a)
`
`or 35 U.S.C. 112 (pre-AlA), first paragraph, as failing to comply with the written
`
`description requirement. The claim(s) contains subject matter which was not described
`
`in the specification in such a way as to reasonably conveyto one skilled in the relevant
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 3
`
`art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C.
`
`112, the inventor(s), at the time the application wasfiled, had possession of the claimed
`
`invention.
`
`Regarding claim 1, the limitation, “the electric power tool is configured such that, when
`
`synchronization between the driving magnet member and the driven magnet member is
`
`lost, an angle by which the driven magnet member is rotated in a reverse direction is
`
`smaller than an angle by which the driving magnet member is rotated in a normal
`
`direction” is not supported by the specification, and thereby represents both a written
`
`description violation and a new matter situation. After careful review of the
`
`specifications and the drawings, the Examiner has determined that the intent of the
`
`Applicant was to describe the angular velocity (the formula for angular velocity is
`
`shown in ExaminerIllustration 1, below)(as seen in Figures 5A. 5B, 6A, and 6B,
`
`the appropriate relationship is Angle of Rotation over Time) of the rotating
`
`members. Appropriate correction is required in order to overcome this rejection.
`
`Fann
`
`_ Ae
`At
`
`if
`os angular velocity
`A@ = change in anguiarrotation
`Ad =change In ime
`
`Examiner Illustration 1
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 4
`
`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-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claim 1, and all subsequent dependentclaims are rejected under 35 U.S.C. 112(b)
`
`or 35 U.S.C. 112 (pre-AlA), 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 claim 1, the limitation, “the electric power tool is configured such that, when
`
`synchronization between the driving magnet member and the driven magnet member is
`
`lost, an angle by which the driven magnet member is rotated in a reverse direction is
`
`smaller than an angle by which the driving magnet member is rotated in a normal
`
`direction’, renders the claim indefinite, as it is clear from both the specifications and the
`
`drawings thatit is in fact the angular velocity (see Examiner Illustration 1) that is being
`
`described, not the angle.
`
`In the interest of compact prosecution, the Examiner will
`
`interpret the angle by which the “member”is rotated as the “angular velocity by which
`
`the member is rotated’.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth in this Office action:
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 5
`
`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.
`
`Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hornschuch,
`
`(US 3,150,725) in view of Geiras, (US 2019/0199164), in view of Gelfand, (US,
`
`3,952,814).
`
`Regarding claim 1, the first embodiment of Hornschuch (Figs. 1-4) discloses: An
`
`electric power tool (Figure 1, impact wrenchin its entirety shown) comprising:
`
`a driving shaft (Figs. 1-4. Drive shaft 42) that is driven into rotation by a motor (Figure
`
`1, motor 40);
`
`an output shaft (Figs. 1-4. Anvil member 10) on which a front-end tool is attachable
`
`(Figs. 1-4.square coupling end 12);
`
`a torque transmission mechanism (Figs. 1-4. Rotational magnet member 22 and
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`Hammer mechanism 14) that includes a magnet coupling including a driving magnet
`
`member (Figs. 1-4. Rotational magnet member 22) coupled to the driving shaft side
`
`and a driven magnet member (Figs. 1-4. Hammer mechanism 14) coupled to the
`
`output shaft side,
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 6
`
`wherein, the electric power tool is configured such that, when synchronization between
`
`the driving magnet member and the driven magnet member is lost, an angle by which
`
`the driven magnet member is rotated in a reverse direction is smaller than an angle by
`
`which the driving magnet member is rotated in a normal direction (Column 3, line 1-
`
`Column4, line 25 provide a detailed description of the relative motions betwixt
`
`the driving member, 22, and the driven member (hammer), 14. In particular to the
`
`claim limitation requiring that the angular velocity of the driven memberbe less
`
`than the driving member, the Examiner specifically cites to Column4, lines 3-5, in
`
`which the hammerceases to rotate in reverse, and is “picked up”by the
`
`actuating member. This slowing and stopping of the reverse rotation of the
`
`hammerindicates an angular velocity of the hammer that must be smaller than
`
`the actuating member).
`
`Hornschuch does not explicitly disclose: a moment of inertia on the side of the
`
`driven magnet member being larger than a moment of inertia on the side of the driving
`
`magnet member;
`
`a clutch mechanism provided between the motor and the torque transmission
`
`mechanism.
`
`Examiner’s Note Regarding Mathematical Concept and Explanation
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 7
`
`In the following Geiras example, it could be notedthatit is the mass of the rotor and
`
`stator that are compared, not the moment of inertia. This, however, is irrelevant once
`
`the remaining variables of the equations for moment of inertia are input. The various
`
`formulae for moment ofinertia of different shapes can be seen in the following chart,
`
`Examiner’s Illustration A - (the chart is taken from the following web link, whichis self-
`
`dated as 3/24/2014 https://www.quora.com/How-do-l-calculate-the-moment-of-inertia-
`
`about-a-rotated-axis. The Examiner notes that the date is in fact irrelevant, as this is a
`
`scientific law and has always, and will always exist. The Examiner chosethis link due
`
`to the neat and orderly pictorial representation of the concept, rather than any form of
`
`uniquenessto the formulae. ).
`
`
`
` Bk ANYRS
`
`
`
`Examiner’s Illustration A
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 8
`
`As can be seen, the relevant formula for the arrangement of parts as shown in
`
`Hornschuchis that for a solid cylinder or disk,
`
`J = = MR? (the Examinernotesthatthis
`
`is irrelevant, as the use of another formula, such as hoop/shell or cylinder arrives at the
`
`same result, as the radius is the same and therefore cancels out in each case). As the
`
`radius of both the driven and driving member can be seen to be the same, the R
`
`cancels out, leaving nothing but the Moment of Inertia, |, equal to /2 the mass. Asthis
`
`applies to both sides of the equation (the driven and the driving member), the 2is
`
`irrelevant, and the massis left equal to the Moment of Inertia. Therefore, the equations
`
`and comparisons described by Geiras apply to both mass and MomentofInertia.
`
`Geiras teaches: a momentof inertia on the side of the driven magnet member being
`
`larger than a moment of inertia on the side of the driving magnet member (The
`
`theoretical and practical applications of the science taught in Geiras is best seen
`
`in paragraph’s 23-25. Beginning in paragraph 23, the specifically relevant ratio of
`
`the massof the rotor to the stator (equivalent to the driving and driven magnet
`
`memberof the current application) is discussed in detail, with specific focus on
`
`the fact that this ratio should be greater than 1 ([0023], “In the illustrated
`
`embodiment, m.sub.rotor/m.sub.stator is greater than 1. In some embodiments,
`
`m.sub.rotor/m.sub.stator is greater than 10. In other embodiments,
`
`m.sub.rotor/m.sub.stator can be a value between 50 and 100.”). Based upon the
`
`quotedcitations, it is clear that the mathematical and practical knowledge being
`
`claimed in the current application is clearly anticipated and taught by Geiras, as
`
`they had mathematic equations analyzing the effect of the various ratios of mass
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 9
`
`and moment of inertia of the driving and driven member. While the mass of an
`
`objectis in fact directly related to the momentof inertia, this relationshipis
`
`explicitly disclosed in paragraph [0024], “Equation 1 under the description of FIG.
`
`1 applies to IFES system 20, wherebythe stored kinetic energy is directly related
`
`to the rotational momentofinertia and to the square of the rotational speed.”
`
`Finally, further discussion of these relationships are discussed in paragraph
`
`[0025], all of which is relevant); and
`
`Therefore, it would have been obvious to one having ordinary skill in the art before the
`
`effective filing date of the claimed invention to have modified the ratio of moments of
`
`inertia of both the driving and driven magnet members in accordance with the teachings
`
`of Geiras, thereby combining prior art elements to achieve a predictable and desirable
`
`result. The benefit of utilizing these mathematical models during the design phase of
`
`the project is described in paragraph [0025] of Geiras — “Therefore, a design
`
`objective may be to minimize the massof all components which do not contribute
`
`significantly to the rotational momentofinertia (1). Increasing the ratio of
`
`m.sub.rotor/m.sub.stator, as noted above, can help to achievethis goal.
`
`Important design parameters that may be used include, for example, the ratio of
`
`rotational moment of inertia (1) to total system mass (m), and theratio of
`
`maximum energy storage capacity to total system mass(I/m). Therefore, IFES
`
`system 20 of the present disclosure can allow a system designerto attain values
`
`for these design parameters that greatly exceed values for FES systemsofthe
`
`priorart.”,
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 10
`
`The modified Hornschuch doesnot explicitly disclose: a clutch mechanism
`
`provided between the motor and the torque transmission mechanism.
`
`Gelfand teaches: a clutch mechanism (Fig. 2, friction clutch 21) provided between
`
`the motor (Fig. 2, drive 8) and the torque transmission mechanism (Col. 12, line 63,
`
`“The embodiments of the impact wrench shownin FIGS.2, 6, 11, 16, 20 have a
`
`commonfeature residing in that the hammer4 is made composite of a driven part
`
`17 and a driving part 18,”).
`
`Therefore, it would have been obvious to one having ordinary skill in the art before the
`
`effective filing date of the claimed invention to have modified the magnetically operated
`
`tool of Hornschuchwith the additionalfriction clutch of Gelfand, thereby combining prior
`
`art elements to achieve a predictable result. The benefit of this addition are detailed in
`
`the extreme in Col. 1, line 1 — Col. 10, line 60 of Gelfand, which provide an in depth
`
`analysis of prior clutch devices (impact clutch) vs the current clutch device(friction
`
`Clutch).
`
`In the interest of brevity, the Examiner will not provide a complete citation from
`
`the Gelfand disclosure. Put succinctly, however, Col. 7, line 30 sums up the applicant’s
`
`intent — “Such an embodimentprovides for a highly efficient impact wrench in which the
`
`hammer is brought into engagement with the anvil with minimum energy losses sothat
`
`the overall efficiency of the wrenchis improved.”
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 11
`
`Regarding claim 2, the modified Hornschuch further discloses: the moment ofinertia
`
`on the side of the driven magnet member is less than 100 times the moment of inertia
`
`on the side of the driving magnet member ({0023], “In the illustrated embodiment,
`
`m.sub.rotor/m.sub.stator is greater than 1. In some embodiments,
`
`m.sub.rotor/m.sub.stator is greater than 10. In other embodiments,
`
`m.sub.rotor/m.sub.stator can be a value between 50 and 100.” — all three of these
`
`options can be readto fall within the claimed limitation. Further discussion of
`
`choosing the appropriate values can be read in paragraphs [0023-0025].).
`
`Regarding claim 3, the modified Hornschuch (based upon the embodiment shown
`
`in Figures 1-4) does not explicitly disclose: “the driving magnet member is an inner
`
`rotor, and the driven magnet member is an outer rotor’.
`
`The second embodiment of Hornschuch, figures 5-8, discloses: “the driving
`
`magnet (Figs. 5-8, actuating member 23) member is an inner rotor, and the driven
`
`magnet (Figs. 5-8, hollow hammer 15) member is an outer rotor’.
`
`Therefore, it would have been obvious to one having ordinary skill in the art before the
`
`effectivefiling date of the claimed invention to have modified the arrangement of the
`
`driven and driving magnetic elements between the various embodiments of
`
`Hornschuch, thereby utilizing a simple substitution of one embodiment with another
`
`embodiment, combining prior art elements to achieve a predictable and desirable result.
`
`The benefit of this secondary arrangementis disclosed in Col. 4, line 59, “This
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 12
`
`arrangement has the advantage of being slightly more compact inasmuch as actuating
`
`member 23 fits within hammer 15.”
`
`Regarding claim 4, the modified Hornschuch (based upon the embodiment shown
`
`in Figures 1-4) does not explicitly disclose: “the driving magnet member is an inner
`
`rotor, and the driven magnet member is an outer rotor’.
`
`The second embodiment of Hornschuch, figures 5-8, discloses: “the driving
`
`magnet (Figs. 5-8, actuating member 23) member is an inner rotor, and the driven
`
`magnet (Figs. 5-8, hollow hammer 15) member is an outer rotor’.
`
`Therefore, it would have been obvious to one having ordinary skill in the art before the
`
`effectivefiling date of the claimed invention to have modified the arrangement of the
`
`driven and driving magnetic elements between the various embodiments of
`
`Hornschuch, thereby utilizing a simple substitution of one embodiment with another
`
`embodiment, combining prior art elements to achieve a predictable and desirable result.
`
`The benefit of this secondary arrangementis disclosed in Col. 4, line 59, “This
`
`arrangement has the advantage of being slightly more compact inasmuch as actuating
`
`member 23 fits within hammer 15.”
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 13
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the eventa first reply is filed within
`
`TWO MONTHS ofthe mailing date ofthis final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to DANIEL JEREMY LEEDSwhosetelephone number is
`
`(571)272-2095. The examiner can normally be reached Mon-Thurs, 0730-1730.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`

`

`Application/Control Number: 17/049,91 14
`Art Unit: 3731
`
`Page 14
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Anna Kinsaul can be reached on 571-270-1926. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free). If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/DANIEL JEREMY LEEDS/
`Examiner, Art Unit 3731
`
`/ANNA K KINSAUL/
`Supervisory Patent Examiner, Art Unit 3731
`
`