. P27871 .A04
`
`REMARKS
`
`Initially, Applicants would like to express appreciation to the Examiner for
`
`the detailed Official Action provided, for the acknowledgment of Applicants’ Claim
`
`for Priority and receipt of the certified copy of the priority document, and for the
`
`acknowledgment of Applicants’ Information Disclosure Statement by return of the
`
`Form PTO-1449.
`
`Upon entry of
`
`the above amendment, claims 1-12 will have been
`
`amended.
`
`Accordingly,
`
`claims 1-12 are currently pending.
`
`Applicants
`
`respectfully request reconsideration of the outstanding objection and rejection
`
`and allowance of claims 1-12 in the present application.
`
`Such action is
`
`respectfully requested and is now believed to be appropriate and proper.
`
`The Examiner has rejected claims 1-12 under 35 U.S.C. § 112, second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly
`
`claim the subject matter which applicant regards as the invention.
`
`in particular,
`
`the Examiner has rejected claims 1, 3, 5, 7, 9, and 11 under 35 U.S.C. § 112,
`
`second paragraph, as the recitation of “term” is indefinite.
`
`In response thereto,
`
`Applicants have amended claims 1, 3, 5, 7, 9, and 11 as suggested by the
`
`Examiner. Accordingly,
`
`in view of the above noted amendments and remarks,
`
`claims 1-12 are believed to fully comply with 35 U.S.C. § 112, second paragraph,
`
`and Applicants
`
`respectfully request
`
`reconsideration and withdrawal of
`
`the
`
`outstanding rejection under 35 U.S.C. § 112, second paragraph.
`
`The Examiner has rejected claims 1-12 under 35 U.S.C. § 102(e) as being
`
`anticipated by WATANABE (US. Patent No. 6,687,567).
`
`
`
`REMARKS
`
`Initially, Applicants would like to express appreciation to the Examiner for
`
`the detailed Official Action provided, for the acknowledgment of Applicants’ Claim
`
`for Priority and receipt of the certified copy of the priority document, and for the
`
`acknowledgment of Applicants’ Information Disclosure Statement by return of the
`
`Form PTO-1449.
`
`Upon entry of
`
`the above amendment, claims 1-12 will have been
`
`amended.
`
`Accordingly,
`
`claims 1-12 are currently pending.
`
`Applicants
`
`respectfully request reconsideration of the outstanding objection and rejection
`
`and allowance of claims 1-12 in the present application.
`
`Such action is
`
`respectfully requested and is now believed to be appropriate and proper.
`
`The Examiner has rejected claims 1-12 under 35 U.S.C. § 112, second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly
`
`claim the subject matter which applicant regards as the invention.
`
`in particular,
`
`the Examiner has rejected claims 1, 3, 5, 7, 9, and 11 under 35 U.S.C. § 112,
`
`second paragraph, as the recitation of “term” is indefinite.
`
`In response thereto,
`
`Applicants have amended claims 1, 3, 5, 7, 9, and 11 as suggested by the
`
`Examiner. Accordingly,
`
`in view of the above noted amendments and remarks,
`
`claims 1-12 are believed to fully comply with 35 U.S.C. § 112, second paragraph,
`
`and Applicants
`
`respectfully request
`
`reconsideration and withdrawal of
`
`the
`
`outstanding rejection under 35 U.S.C. § 112, second paragraph.
`
`The Examiner has rejected claims 1-12 under 35 U.S.C. § 102(e) as being
`
`anticipated by WATANABE (US. Patent No. 6,687,567).
`
`
`
`. P27871.A04
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`Although Applicants do not necessarily agree with the Examiner’s
`
`rejection of the claims on this ground, nevertheless, Applicants have amended
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`independent claim 1
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`to clearly obviate the above noted ground of rejection in
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`order to expedite prosecution of
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`the present application.
`
`In this regard,
`
`Applicants note that WATANABE fails to show each and every element recited in
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`the amended claim.
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`In particular, claim 1, as amended, sets forth a rotary impact
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`tool including, inter alia, a rotary driving mechanism; a hammer; an output shaft;
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`a main switch; “and a controller that controls on and off of the motor, and having
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`a normal fastening mode and a tight fastening mode; wherein a time period
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`sensor, which senses time periods from a time when the main switch is switched
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`on to a time when the main switch is switched off and from a time when the main
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`switch is switched off to a time when the main switch is switched on next,
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`is
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`further comprised; and the controller gives transition to the tight fastening mode
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`from the normal fastening mode when the time period from the time when the
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`main switch is switched off to the time when the main switch is switched on next
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`sensed by the time period sensor is shorter than a first predetermined time
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`biog"-
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`This amendment
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`is fully supported by the specification,
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`including the
`
`claims and drawings, and no prohibited new I matter has been added.
`
`In
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`Applicants' claimed invention, the time period sensor 9 (i.e., the timer) measures
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`the time periods not only from a time when the main switch is switched on to a
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`time when the main switch is switched off, but Applicants’ claimed time period
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`sensor also measures from a time when the main switch is switched off to a time
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`
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`. P27871.A04
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`when the main switch is switched on again. Therefore, the time period sensor of
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`Applicants’ claimed invention measures both of the ON time period and OFF time
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`period of the main switch (the trigger switch). By measuring the OFF time period
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`of the main switch, the operation transitions to the tight fastening mode, even
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`when the user removes his fingers from the main switch for a short time.
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`In the conventional rotary impact tool having the normal fastening mode
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`and the tight fastening mode, the operation transitions to the tight fastening mode
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`when the switched ON state is maintained after completing the normal fastening
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`mode. When the user removes his fingers from the main switch momentarily, the
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`operation does not transition to the tight fastening mode. Applicants' claimed
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`rotary impact tool with a time period sensor solves at least this problem in the
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`prior art devices. That is, when the OFF time period of the main switch after
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`completing the normal fastening mode is shorter than a predetermined time
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`period, for example, necessary for preparing a new fastening member such as a
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`screw,
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`the controller transitions to the tight fastening mode from the normal
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`fastening mode, since the short time period signals that the user wishes to fasten
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`the fastening member in the tight fastening mode. Further, even when the user
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`removes his fingers from the main switch for a short period of time, the fastening
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`member can be fastened completely with the tight fastening operation.
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`The WATANABE patent discloses a power tool
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`including a timer. As
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`described in column 3, lines 44-47 of WATANABE, the control device measures
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`“a time period from when a first impact is detected by the sensor to when the
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`trigger switch is switched from the ON position to the OFF position". Thus,
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`
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`.P2787'1 .A04
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`although the WATANABE device includes a time period measuring device, the
`
`impact tool of WATANABE measures a time period from when a first impact is
`
`detected by the sensor to when the trigger switch is switched from the ON
`
`position to the OFF position. Accordingly, the timer of WATANABE measures
`
`only a part of the time period while the trigger switched is switched on. Further,
`
`as described in column 3, lines 47-52 of WATANABE, the timer measures the
`
`time period so that in the automatic stop mode, “the control device preferably
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`activates the drive source when the trigger switch is switched from the OFF
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`position to the ON position, and stops the drive source when a predetermined or
`
`preset time has elapsed after the first impact was detected by the sensor".
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`Further, although the rotary impact
`
`tool of WATANABE includes a
`
`measurement mode and an automatic stop mode as described in column 3, line
`
`39, the WATANABE patent does not disclose a normal fastening mode and a
`
`tight fastening mode. Accordingly, WATANABE includes a normal fastening
`
`mode that
`
`is automatically stopped; WATANABE does not
`
`include a tight
`
`fastening mode in addition to the normal fastening mode.
`
`Thus,
`
`the WATANABE patent does not show a rotary impact
`
`tool
`
`including, inter alia, “a controller that controls on and off of the motor, and having
`
`a normal fastening mode and a tight fastening mode; wherein a time period
`
`sensor, which senses time periods from a time when the main switch is switched
`
`on to a time when the main switch is switched off and from a time when the main
`
`switch is switched off to a time when the main switch is switched on next,
`
`is
`
`further comprised; and the controller gives transition to the tight fastening mode
`
`10
`
`
`
`.P27871 .A04
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`from the normal fastening mode when the time period from the time when the
`
`main switch is switched off to the time when the main switch is switched on next
`
`sensed by the time period sensor is shorter than a first predetermined time
`
`m”, as set forth in amended claim 1. Since the reference fails to show each
`
`and every element of the claimed device, the rejection of claim 1 under 35 U.S.C.
`
`§ 102(e) over WATANABE is improper and withdrawal thereof is respectfully
`
`requested.
`
`Applicants
`
`submit
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`that dependent claims 2-12, 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.
`
`In particular, the subject matter of claim 2 relates to an initial operation
`
`described in the instant specification on page 7,
`
`lines 5-12.
`
`If the fastening
`
`member is a wood screw or a tapping screw, at least a portion of the threaded
`
`portion of the screw is engaged with an object to be fastened.
`
`If the fastening
`
`member is a bolt or a nut, the bolt and nut are not completely engaged with each
`
`other at the initial operation. When a time period (T1) from a time when the main
`
`switch is switched on first to a time when the main switch is switched off is
`
`shorter than a second predetermined reference time period (T2), the controller
`
`judges that the fastening operation in the normal fastening mode was the initial
`
`operation, so that the controller restricts transition to the tight fastening mode
`
`from the normal fastening mode. Accordingly, Applicants submit that none of the
`
`cited prior art teaches or suggests “a rotary impact tool wherein when a time
`
`11
`
`
`
`.P27871 .A04
`
`period from a time when the main switch is switched on first to a time when the
`
`main switch is switched off is shorter than a m predetermined reference
`
`time m, the controller restricts transition to the tight fastening mode from the
`
`normal fastening mode", as set forth in claim 2.
`
`The subject matter of claims 3 and 7 relates to an example shown in the
`
`instant application in figure 10. When the userjudges that the fastening member
`
`has not been fastened tightly by the first tight fastening operation, it is necessary
`
`to repeat the tight fastening operation. According to claims 3 and 7, when the
`
`main switch is switched on in a predetermined time period (T4) after completing a
`
`tight fastening operation in the tight fastening mode, the controller transitions to
`
`the tight fastening mode again. With this configuration,
`
`the tight fastening
`
`operation can be repeated until the fastening member is completely fastened.
`
`Accordingly, Applicants submit
`
`that none of the ‘cited prior art
`
`teaches or
`
`suggests “a rotary impact tool wherein when the main switch is switched on in a
`
`predetermined time period after completing a tight fastening operation in the tight
`
`fastening mode, the controller gives transition to the tight fastening mode, again",
`
`as set forth in claims 3 and 7.
`
`The subject matter of claims 4, 8, and 10 relates to the example shown in
`
`figure 11.
`
`In this regard, the user may not remove his fingers from the main
`
`switch until the fastening member is completely fastened. The controller repeats
`
`the tight fastening operation while the main switch is maintained in the tight
`
`fastening mode. Accordingly, Applicants submit that none of the cited prior art
`
`teaches or suggests “a rotary impact tool wherein the controller repeats tight
`
`12
`
`
`
`.P27'87'1 .A04
`
`fastening operation while the switching on of the main switch is maintained i_n the
`
`tight fastening mode”, as set forth in claims 4, 8, and 10.
`
`The subject matter of claims 5, 9, and 11 relates to the fastening operation
`
`described in the instant specification on page 8, lines 17-23. As described on
`
`lines 20-23, when the normal fastening time period T2 becomes longer,
`
`the
`
`quantity of energy due to the impact blows of the hammer becomes larger just
`
`before the completion of the fastening operationof the fastening member. Thus,
`
`the controller varies a quantity of impact energy in the tight fastening mode
`
`corresponding to a time period from a time when the main switch is switched on
`
`first to a time when the main switch is switched off or corresponding to a total
`
`4 number of impact blows of the hammer in the time period from a time when the
`
`main switch is switched on first to a time when the main switch is switched off.
`
`Thereby, the fastening member can be completely fastened in a short time.
`
`Accordingly, Applicants submit
`
`that none of the cited prior art
`
`teaches or
`
`suggests “a rotary impact tool wherein the controller varies a quantity of impact
`
`energy in the tight fastening mode corresponding to a time period from a time
`
`when the main switch is switched on first to a time when the main switch is
`
`switched off or corresponding to a total number of impact blows of the hammer in
`
`the time period from a time when the main switch is switched on first to a time
`
`when the main switch is switched off’, as set forth in claims 5, 9, and 11.
`
`The subject matter of claims 6 and 12 relates to the tight fastening
`
`described in the instant specification on page 10,
`
`lines 14-17. The controller
`
`gradually reduces the quantity of impact energy in the tight fastening operation
`
`13
`
`
`
`.P27‘sr1 AM
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`when the tight fastening operations are continuously repeated. When the tight
`
`fastening operations are continuously performed, the quantity of the impact blows
`
`of the hammer in the tight fastening operation B2 becomes smaller than that in
`
`the former tight fastening operation B, as shown in figures 10 and 11. The
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`fastening torque of the fastening member can be approached asymptotically to
`
`the objected fastening torque or fastening height instead of in phase, so that an
`
`improved fastening operation is performed. Accordingly, Applicants submit that
`
`none of the cited prior art teaches or suggests “a rotary impact tool wherein the
`
`controller gradually reduces the quantity of impact energy in the tight fastening
`
`operation when the tight fastening operations are continuously repeated", as set
`
`forth in claims 6 and 12 .
`
`Accordingly, claims 2-12 are each separately patentable for
`
`these
`
`additional reasons.
`
`Accordingly, Applicants
`
`respectfully
`
`request
`
`reconsideration
`
`and
`
`withdrawal of all the rejection, and an early indication of the allowance of claims
`
`1-12.
`
`SUMMARY AND CONCLUSION
`
`In view of the foregoing,
`
`it
`
`is submitted that the present amendment is
`
`proper and 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 1-12. The applied references of record have been discussed
`
`and distinguished, while significant claimed features of the present invention
`
`have been pointed out.
`
`14
`
`
`
`.P27'8?1 .A04
`
`Accordingly, consideration of the present amendment, reconsideration of
`
`the outstanding 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.
`
`Should the Examiner have any questions, the Examiner is invited to
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`contact the undersigned at the below-listed telephone number.
`
`Respectfully Submitted,
`Hid nori SHIMIZU et al.
`
`7
`
`Linda J. Hodge
`Reg. #47,348
` Bruce
`. Bernstein
`
`Reg. No. 29,027
`
`October 30, 2006
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 Roland Clarke Place
`
`Reston, VA 20191
`(703) 716-1191
`
`15
`
`
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