P27872.A08
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants
`
`: Hidenori SHIMIZU et a1.
`
`Appl. No.
`
`: 11/126,351
`
`Filed
`
`: May 11, 2005
`
`For
`
`: ROTARY IMPACT TOOL
`
`Group Art Unit : 3721
`
`Examiner : N. Chukwurah
`
`Confirmation No. : 3224
`
`APPEAL BRIEF UNDER 37 C.F.R. § 41.37
`
`Cormnissioner for Patents
`
`US. Patent and Trademark Office
`
`Customer Service Window, Mail Stop Appeal Brief-Patents
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Sir :
`
`This appeal is from the Examiner’s final rejection of claims 1, 3, 5, 7, 9, and 10 as
`
`set forth in the Final Official Action of December 11, 2007.
`
`A Notice of Appeal in response to the Final Official Action of December 11, 2007
`
`along with a Request for Extension of Time for two months was filed on May 12, 2008.
`
`The two month statutory period for response was set to expire on July 14, 2008 (July 12,
`
`2008 being a Saturday). Further, the instant Appeal Brief is being submitted together
`
`with payment including the requisite fee under 37 C.F.R. § 41.20(b)(2) in the amount of
`
`$510.00 for the filing of the Appeal Brief.
`
`However, if for any reason the necessary fee is inadequate or is not associated
`
`with this file, the Commissioner is authorized to charge the fee for the Appeal Brief and
`
`any necessary extension of time fees to Deposit Account No. 19-0089.
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants
`
`: Hidenori SHIMIZU et a1.
`
`Appl. No.
`
`: 11/126,351
`
`Filed
`
`: May 11, 2005
`
`For
`
`: ROTARY IMPACT TOOL
`
`Group Art Unit : 3721
`
`Examiner : N. Chukwurah
`
`Confirmation No. : 3224
`
`APPEAL BRIEF UNDER 37 C.F.R. § 41.37
`
`Cormnissioner for Patents
`
`US. Patent and Trademark Office
`
`Customer Service Window, Mail Stop Appeal Brief-Patents
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Sir :
`
`This appeal is from the Examiner’s final rejection of claims 1, 3, 5, 7, 9, and 10 as
`
`set forth in the Final Official Action of December 11, 2007.
`
`A Notice of Appeal in response to the Final Official Action of December 11, 2007
`
`along with a Request for Extension of Time for two months was filed on May 12, 2008.
`
`The two month statutory period for response was set to expire on July 14, 2008 (July 12,
`
`2008 being a Saturday). Further, the instant Appeal Brief is being submitted together
`
`with payment including the requisite fee under 37 C.F.R. § 41.20(b)(2) in the amount of
`
`$510.00 for the filing of the Appeal Brief.
`
`However, if for any reason the necessary fee is inadequate or is not associated
`
`with this file, the Commissioner is authorized to charge the fee for the Appeal Brief and
`
`any necessary extension of time fees to Deposit Account No. 19-0089.
`
`
`
`P27872.A08
`
`Appellant respectfully requests that the decision of the Examiner to reject claims
`
`1, 3, 5, 7, 9, and 10 as set forth in the Final Rejection be reversed and that the application
`
`be returned to the Examining Group for allowance.
`
`(1)
`
`REAL PARTY 1N INTEREST
`
`I
`
`The real party in interest is Matsushita Electric Works, Ltd., as established by an
`
`assignment recorded in the United States Patent ‘and Trademark Office on August 8, 2005
`
`at Reel 016867, Frame 0288.
`
`(2)
`
`RELATED APPEALS AND INTERFERENCES
`
`Appellant is presently not aware of any other appeals and/or interferences which
`
`will directly affect or be affected by or have a bearing on the Board’s decision in the
`
`present Appeal.
`
`(3)
`1
`
`I
`
`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
`
`I being unpatentable over SUZUKI et a1. (U.S..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.
`
`(4)
`
`STATUS OF THE AMENDMENTS
`
`A Request for Reconsideration under 37 CPR. § 1.116 was filed on March 11,
`
`2008. No amendments were filed under 37 CPR. § 1.116 after the Examiner’s final
`
`rejection of claims by the Final Official Action of December 11, 2007.
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`
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`P27872.A08
`
`(5)
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`SUMMARY OF CLAIMED SUBJECT MATTER
`
`The summary below is intended as a nonlimiting example of the claimed
`
`invention, and no estoppel should be deemed to extend therefrom.
`
`Claim 1 is directed to a rotary impact tool including a rotary driving mechanism
`
`including a motor 3 that rotates a driving shaft 36; a hammer 40 engaged with the driving
`
`shaft 36; an output shaft 31 to which a driving force is applied by impact blow of the
`
`hammer 40 (figures 2 and 3; Specification, page 5, lines 1—22); a main switch 2 operated
`
`by a user that controls a fastening operation (figures 1 and 2; Specification, page 4, lines
`
`13-25); a torque setting switch 7 (figures 1 and 2; Specification, page 4, lines 13-25) used
`
`by a user that sets a fastening torque; a torque calculator 11 that calculates a fastening ’
`
`torque (figures 1 and 2; Specification, page. 4, lines 13—25); a controller 5 that controls
`
`turning on and off of the motor based on switching on and off of the main switch 2, an
`
`.1 output of the torque calculator 11 and the fastening torque set in the torque setting switch
`7, and having a normal fastening mode and a tight'fastening mode (figures 1 and 4-6,
`Specification, page 8, lines 220); a rotation angle sensor 6 that senses a rotation angle of
`
`the output shaft 31 to which rotation force due to impact blow of the hammer 40 is
`
`applied or a rotation angle of a shaft of the motor 3 (figures 1 and 2; Specification, page
`
`4, lines 18-20; and page 5, line 23 through page 6, line 1); and a tight fastening mode
`
`setting switch 12 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
`
`(figures 1, 2, and 4-6; Specification, page 4, line 22; and page 7, line 24 through page 8,
`
`line 1; and page 8, lines 12-20); Wherein the tight fastening mode setting switch 12 is
`
`provided on an exterior surface of a hOusing thereby enabling to be touched directly by
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`
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`P27872.A08
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`an operator in fastening operations (figure 2); in the tight fastening mode, the impact
`
`blows of the hammer 40 are performed in‘ a predetermined term until a rotation angle of
`
`the output shafl reaches to a predetermined angle as a tight
`
`fastening operation
`
`(Specification, page 8, line 21 through page 9, line 8); when the tight fastening mode
`
`setting switch 12 is switched on, the controller 5 continuously drives the rotary driving
`
`mechanism so as to perform the tight fastening operations continuously;
`
`the torque
`
`calculator 11 calculates the fastening torque based on an output of the rotation angle
`
`sensor 6; the controller 5 stops driving of the motor 3 when the rotation angle obtained
`
`from an output of the rotation angle sensor 6 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 2 is switched off and a time when the main switch
`
`'2 is switched on again by the user is shorter than a predetermined time period, after the
`
`driving of the motor 3 is off due to completion of the normal fastening operation, the
`
`controller 5 performs the tight fastening operation, although the tight fastening mode
`
`setting switch 12 is switched off (SpecificatiOn, page 6, line 25 through page 7, line 15;
`
`and page 8, line 21 through page 9, line 14),:
`
`:
`
`_
`
`Claim 3 is directed to a rotary impact tool in accordance with claim 1, further
`
`including a tight fastening angle setting switch 8 that sets or varies the predetermined
`
`reference value set in the tight fastening mode (figure 7, Specification, page 9, line15
`
`through page 10, line 5).
`
`Claim 5 is directed to a rotary impact tool in accordance with claim 1, wherein the
`
`controller 5 increases a level of phase of the fastening torque set in the torque setting
`
`
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`P27872.A08
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`switch 7 by one, when a number of tight fastening operations reaches a predetermined
`
`number of times (Specification, page 9, lines 6—15).
`
`Claim 7 is directed to a rotary impact tool in accordance with claim 3, wherein the
`
`controller 5 increases a level of phase of the fastening torque set in the torque setting
`
`switch 7 by one, when a number of tight fastening operations reaches a predetermined
`
`number oftimes (Specification, page 9, lines 6-15).
`
`Claim 9 is directed to a rotary impact tool including a rotary driving mechanism
`
`including a motor 3 that rotates a driving shaft 36; a hammer 40 engaged with the driving
`
`shaft 36; an output shaft 31 to which a driving force is applied by impact blow of the
`
`‘ hammer 40 (figures 2 and 3; Specification, page 5, lines 1-22); a main switch 2 operated
`
`by a user that controls a fastening operation (figures 1 and 2; Specification, page 4, lines
`
`13-25); a torque setting switch 7(figures 1 and 2; Specification, page 4, lines 13-25) used
`
`by a user that sets a fastening torque; a torque, calculator 11 that calculates a fastening
`
`torque (figures 1 and 2; Specification, page 4, lines 13-25); a controller 5 that controls
`
`turning on and off of the motor based on switching on and off of the main switch 2, an
`
`output of the torque calculator 11 and the fastening torque set in the torque setting switch
`
`7, and having a normal fastening mode and a‘ tight fastening mode (figures 1 and 4-6,
`. Specification, page 8, lines 2-20); and a tight fastening mode setting switch 12 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 (figures 1, 2, and 4-6; Specification,
`
`page 4, line 22; and page 7, line 24 through page 8, line 1; and page 8, lines 12-20);
`
`wherein the tight fastening mode setting switch 12 is provided on an exterior surface of a
`
`housing thereby enabling to be touched directly by an operator in fastening operations
`
`
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`P27872.A08
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`(figure 2); in the tight fastening mode, the impact blows of the hammer 40 are performed
`
`in a predetermined term until a predetermined number of impact blows of the hammer are
`
`performed as a tight fastening operation (Specification, page 8, line 21 through page 9,
`
`line 8); when the tight fastening mode setting switch 12 is switched on, the controller 5
`
`continuously drives the rotary driving mechanism so as to perform the tight fastening
`
`operations continuously; when a number of the impact blows of the hammer 40
`
`corresponding to the fastening torque set in the torque setting switch 7 is performed, the
`
`controller 5 stops driving of the motor 3 in the tight fastening mode; and when a time
`
`period between a time when the main switch 2 is switched off and a time when the main
`
`switch 2 is switched on again by the user isj shorter than a predetermined time period,
`
`after the driving of the motor is off due to completiOn of the normal fastening operation,
`
`the controller 5 performs the tight fastening operation,'although the tight fastening mode
`
`setting switch 12 is switched off (Specification, page 6, line 25 through page 7, line 15;
`
`and page 8, line 21 through page 9, line 14).
`
`I
`
`Claim 10 is directed to a rotary impact tool in accordance with claim 9, wherein
`
`the controller 5 increases a level of phase of the fastening torque set in the torque setting
`
`switch 7 by one, when a number of tight fastening operations reaches a predetermined
`
`number of times (Specification, page 9, lines 6-15).
`
`’
`
`(6)
`
`' 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).
`
`
`
`P27872.A08
`
`Claims 1, 3, 5, 7, 9, and 10 are on Appeal.
`
`(7)
`
`ARGUMENT
`
`In the Final Official Action of December 11, 2007, the Examiner rejected claims
`
`1, 3, 5, 7, 9, and 10 under 35 U.S.C. § 103(a) as being unpatentable over SUZUKI et a1.
`
`(U.S. Patent No. 6,607,041) in View of AMANO et al. (U.S. Patent No. 6,371,218) and
`
`further in view of SANDERS (U.S. Patent No. 5,056,607).
`
`-
`
`(A) The rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable V
`
`over SUZUKI et al. (U.S. Patent No. 6,607,041) in view of AMANO et al. (U.S.
`Patent No. 6,371,218) and further in view of SANDERS (U.S. Patent No. 5,056,607)
`
`is. improper, the decision to reject claim 1 on this ground should be reversed, and
`
`the application should be remanded to the Examiner.
`
`Claim 1:
`
`Independent claim 1 sets forth a rotaryimpact too] including, _i_nt_e_r_ali_a, “a rotary
`
`driving mechanism including a motor that rotates a driving shafi; a hammer engaged with
`
`the driving shaft; an output shaft to which a driVing force is applied by impact blow of
`
`the hammer; a main switch operated by a user that controls a fastening operation; a
`
`torque setting switch used by a user that sets :a fastening torque; a torque calculator that
`
`calculates a fastening torque; a controllerfthgat controls turning on and off of the motor
`
`based on switching on and off of the main switch, an output of the torque calculator and
`
`the fastening torque set in the torque setting switch, and having a normal fastening mode
`
`and a tight fastening mode; a rotation angle sensor that senses a rotation angle of the
`
`output shaft to which rotation force due to impact blow of the hammer is applied or a
`
`rotation angle of a shaft of the motor; and a tight faStening mode setting switch that sets
`
`
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`P27872.A08
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`the tight fastening mode in which a fastening member is fastened fiirther to stop fastening
`
`of the fastening member in normal fastening terque; 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 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 the tight
`
`fastening operations
`
`continuously; the torque calculator calculates the fastening torque based on an output of
`
`the rotation angle sensor; 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’.
`
`Appellant submits that neither SUZUKI et al., AMANO et al., nor SANDERS
`
`teach or suggest a rotary impact tool including; inter alia‘, a main switch; a' tight fastening
`
`, mode setting switch; and a controller that controls turning on and ofi”ofthe motor based
`
`on switching on and ofir of the main switch; and the controller stops driving of the motor
`
`when the rotation angle obtained from angoutput of the rotation angle sensor becomes
`
`equal to or larger than a predetermined reference value in the tight fastening mode; and
`
`
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`P27872.A08
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`when a time period between a time when the main switch is switched ofand 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 017 due to completion of the normal fastening
`
`operation,
`
`the controller performs the tight fastening operation, although the tight
`
`fastening mode setting switch is switched of. V
`
`Appellant’s claimed rotary impact tool 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 controller (CPU) operates in a time
`
`frame and the controller is programmable as shown in the entire disclosure to perform
`
`such function as regulating time intervals of switching on and off”.
`
`However, SUZUKI et a1. does not teach or suggest the measurement of a time
`
`period between a time when the main switch is switched ofi’ 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 off and a time when the main switch is
`
`switched on again.
`
`
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`P27872.A08
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`In this regard, the apparatus of SUZUKI'et a1. counts the number of times that the
`main switch 48, 226 has been operated-for. the purpose of maintenance. 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
`
`1.
`
`The SUZUKI et a1. patent discloses counting as further described below. For
`
`example, in the first embodiment, the SUZUKI et-al. patent describes a main switch 48
`
`and its operation in the first embodiment, as follows. The switch 48 is mounted on the
`
`handle 3a, and operates to start motor 22 (column 13,
`
`lines 4-6). The tightening
`
`operation is started when main switch 48 is turned on (column 15, lines 23-27). When
`
`the main switch 48 is turned on, the number :set of the setting device 34 is read by
`
`‘ microcomputer 38 and stored as a variable number [xy] (column 16,
`
`lines 27-29).
`
`Further, although SUZUKI et a1. teaches that when main switch 48 is turned on, the
`
`number indicating the specific time that is. set on setting dial section 35 is read by
`microcomputer 38 and stored (column 18, lines 31-33), and that if the main switch 48 is
`
`maintained in the ON position, motor 22 will automatically stop after the previously set
`
`time has passed, (column 18, lines 47-49), SUZUKI et a1. stills fails to teach or suggest
`
`the measurement of a time period between a time when the main switch is switched of
`
`and a time when the main switch is switched on again.
`
`Further,
`
`the SUZUKI et a1. patent describes a main switch 226 in the third
`
`embodiment, as follows. The motor 222, is Stopped when the required maintenance
`
`condition has been reached (column 28, lines 36 to 38), which is determined by the
`
`‘10
`
`
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`P27872.A08
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`number of times that main switch 226 has been operated (column 28, lines 54 to 55).
`
`Additionally, if the main switch 226 and oil unit 10 are replaced with new parts, the
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`information concerning the actual usage of main switch 226 and oil unit 10 (i.e., the
`
`. number of times that the switch has been operated) should be reset to zero in memory 328
`
`(column 31, lines 35 to 38). Further, SUZUKI et al. provides that the number of times
`
`that main switch 226 may be operated before the maintenance alarm will be given may be
`
`set (column 32, lines 34 to 36).
`
`Accordingly, the SUZUKI et al. patent discloses counting the number oftimes the
`
`main switch has been operated in order to adhere to a maintenance schedule,
`
`the
`
`SUZUKI et al. completely lacks any disclosure or teaching of measurement of a time
`period.
`I
`1
`
`Accordingly, as described in detail above, SUZUKI et al. fails to teach or suggest
`
`-
`
`the measurement of a time period between a time when the main switch is switched of
`
`. and a time when the main switch is switched on again, as recited in independent claim 1.
`
`In contradistinction to Applicants’ claimed invention, the SUZUKI et al. apparatus counts
`
`the number of times that the main switch has been operated for the purpose of
`
`maintenance.
`
`Thus, 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.
`Further, the AMANO et al. 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 ofand a
`
`‘ll'
`
`
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`P27872.A08
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`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 al. device, and even
`
`assuming, arggendo, that the teachings of SUZUKI et al., AMANO et al., and SANDERS
`
`have been properly combined, Applicants’ claimed rotary impact tool including, in];
`
`aljg, 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.
`
`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. and SANDERS.
`Thus, the only reason to combine the teachings.of SUZUKI et al., AMANO et al., and
`
`SANDERS results from a review of Appellant’s disclosure and the application of
`
`impermissible hindsight.
`
`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 of AMANO et al. and SANDERS
`
`is improper. Therefore, Appellant respectfiilly requests that the decision of the Examiner
`
`to finally reject claim 1 under 35 U.S.C. § 103(a) be reversed, and that the application be
`
`12_
`
`
`
`P27872.A08
`
`remanded to the Examiner for withdrawal of the rejection over SUZUKI et al. in view of
`
`AMANO et al. and SANDERS and for an early allowance of claim on appeal.
`
`(B) The rejection of claim 3 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 (U.S. Patent No. 5,056,607)
`
`is improper, the decision to reject claim 3 on this ground should be reversed, and
`
`the application should be remanded to the Examiner.
`
`Claim 3:
`
`Appellant submits that dependent claim 3, 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, Appellant notes that claim 3 sets forth a rotary impact tool in
`
`accordance with claim 1, further including a tight fastening angle setting switch that sets
`
`or varies the predetermined reference value set in the tight fastening mode, which is
`
`neither taught nor suggested by SUZUKI et al., AMANO et al., or SANDERS. The
`
`Examiner states that the modified rotary impact tool of SUZUKI et al. would include a
`
`tight fastening angle setting switch to set or vary the predetermined reference value set in
`the tight fastening mode as disclosed in the AMANO et al. patent. However, Appellant
`
`respectfully submits that SUZUKI et al., AMANO et al., and SANDERS fail to teach or
`
`suggest the subject matter as claimed 'in independent claim 1. Further, contrary to the
`
`Examiner’s assertions, the AMANO et al. patent fails to teach or suggest setting or
`
`varying a predetermined reference value set in the tight fastening mode. Therefore, the
`
`'13
`
`
`
`P27872.A08
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`AMANO et a1. and SANDERS patents fail to cure the deficiencies of the SUZUKI et al.
`
`device, and even assuming, arguendo, that the teachings of SUZUKI et al., AMANO et
`
`al., and SANDERS have been properly combined, Appellant’s claimed rotary impact tool
`
`would not have resulted from the combined teachings thereof.
`
`For at least all of the above reasons, Appellant submits that the rejection of claim
`3 under 35 U.S.C. § 103(a) is inappropriate and unsupported by the teachings of SUZUKI
`
`: et al., AMANO et al., and SANDERS. Therefore, Appellant respectfully requests that
`
`the decision of the Examiner to finally reject claim 3 under 35 U.S.C. § 103(a) be
`
`reversed, and that the application be remanded to the Examiner for withdrawal of the
`
`rejection over SUZUKI et al. in View of AMANO et a1. and SANDERS, and for an early
`
`allowance of claim 3 on appeal.
`
`(C) The rejection of claim 5 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 (U.S. Patent No. 5,056,607)
`
`is improper, the decision to reject claim 5 on this ground should be reversed, and
`the application should be remanded to the Examiner.
`i
`
`Claim 5:
`
`Appellant submits 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, Appellant notes that claim 5 sets forth a rotary impact tool in
`
`accordance with claim 1, wherein the controller increases a level of phase of the fastening
`
`”114
`
`
`
`P27872.AO8
`
`torque set
`
`in the torque setting switch bylone, when a number of tight fastening
`
`operations reaches a predetermined number. of times, which is neither taught nor
`suggested by SUZUKI et al., AMANO et al., or SANDERS. The Examiner states that
`
`the controller of SUZUKI et al. is capable of increasing a level of phase of the fastening
`
`torque set
`
`in the torque setting switch by one, when a number of tight fastening
`
`operations reaches a predetermined number of times. However, Appellant respectfully
`
`submits that SUZUKI et al., AMANO et al., and SANDERS fail to teach or suggest the
`
`subject matter as claimed in independent claim 1. Further, contrary to the Examiner’s
`
`assertions, column 7, lines 1-4 (as referred to by the Examiner) of the SUZUKI et al.
`
`patent discloses that if the fastening object has been tightened so that the load applied to
`
`the anvil by the hammer exceeds the'rpredetermined value,
`
`the hammer will rotate
`
`. separately from the anvil and will strike the;-anvil. Thus, the hammer will repeatedly
`
`strike the anvil, the anvil will rotate after each strike, and the power tool generates
`
`increased torque. Accordingly, the SUZUKI et a1. patent does not appear to teach a
`
`controller that increases a level of phase of the fastening torque set in the torque setting
`
`switch by one, when a number of tight fastening operations reaches a predetermined
`
`number of times, as suggested by the Examiner. Further, since the AMANO et a1. and
`
`SANDERS patents fail to cure the deficiencies of the SUZUKI et a1. device, and even
`
`assuming, arguendo, that the teachings of SUZUKI et'a1., AMANO et al., and SANDERS
`
`have been properly combined, Appellant’s claimed rotary impact tool would not have
`
`resulted from the combined teachings thereof.
`
`For at least all of the above reasons, Appellant submits that the rejection of claim
`
`5 under 35 U.S.C. § 103(a) is inappropriate and unsupported by the teachings of SUZUKI
`
`15
`
`
`
`P27872.A08
`
`et al., AMANO et al., and SANDERS. Therefore, Appellant respectfully requests that
`
`the decision of the Examiner to finally reject claim 5 under 35 U.S.C. § 103(a) be
`
`reversed, and that the application be remanded to the Examiner for withdrawal of the
`
`rejection over SUZUKI et al. in View of AMANO et a1. and SANDERS, and for an early
`allowance of claim 5 on'appeal.
`I
`I‘
`(D) The rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable
`
`over SUZUKI et a]. (US. Patent No. 6,607,041) in view of AMANO et a]. (US.
`
`Patent No. 6,371,218) and further in view of SANDERS (U.8. Patent No. 5,056,607)
`
`is improper, the decision to reject claim 7 on this ground should be reversed, and
`
`the application should be remanded to the Examiner.
`
`Claim 7:
`
`Appellant submits that dependent claim 7, 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, Appellant notes that claim 7 sets forth a rotary impact tool in
`
`accordance with claim 3, wherein the controller increases a level of phase of the fastening
`
`torque set
`
`in the torque setting switch by one, when a number of tight fastening
`
`operations reaches a predetermined number of times, which is neither taught nor
`
`suggested by SUZUKI et al., AMANO et al., or SANDERS. The Examiner states that
`
`the controller of SUZUKI et a1. is capable of increasing a level of phase of the fastening
`
`torque set in the torque setting switch by one, when a number of tight fastening
`
`operations reaches a predetermined number of times. Hewever, Appellant respectfully
`
`
`
`P27872.A08
`
`submits that SUZUKI et al., AMANO et al., and SANDERS fail to teach or suggest the
`
`subject matter as claimed in independent claim 1. Further, contrary to the Examiner’s
`
`assertions, column 7, lines 14 (as referred to by the Examiner) of the SUZUKI et al.
`
`patent discloses that if the fastening object has been tightened so that the load applied to
`
`the anvil by the hammer exceeds the predetermined value,
`
`the hammer will rotate
`
`separately from the anvil and will strike the anvil. - Thus, the hammer will repeatedly
`
`strike the anvil, the anvil will rotate afier each Strike, and the power tool generates
`
`increased torque. Accordingly, the SUZUKI et al. patent does not appear to teach a
`
`controller that increases a level of phase of the fastening torque set in the torque setting
`
`switch by one, when a number of tight fastening operations reaches a predetermined
`
`number of times, as suggested by the Examiner. Further, since the AMANO et al. and
`
`SANDERS patents fail to cure the deficienqies of the SUZUKI et al. 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 would not have
`
`resulted fi'om the combined teachings thereof.
`
`For at least all of the above reasons, Appellant submits that the rejection of claim
`
`7 under 35 U.S.C. § 103(a) is inappropriate and unsupported by the teachings of SUZUKI
`
`et al., AMANO et al., and SANDERS. Therefore, Appellant respectfully requests that
`
`' the decision of the Examiner to" finally reject claim 7 under 35 U.S.C. § 103(a) be
`
`reversed, and that the application be remanded to the Examiner for withdrawal of the
`
`rejection over SUZUKI et al. in view of AMANO et al. and SANDERS, and for an early
`
`allowance of claim 7 on appeal.
`
`3
`
`,V
`
`.
`
`l7
`
`
`
`P27872.A08
`
`(E) The rejection of claim 9 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 (U.8. Patent No. 5,056,607)
`
`is improper, the decision to reject claim 9 on this ground should be reversed, and
`
`the application should be remanded to the Examiner.
`
`Claim 9:
`
`Independent claim 9 sets forth a rotary impact too] including a rotary driving
`
`mechanism including a motor that rotates aidriving shaft; a hammer engaged with the
`
`driving shaft; an output shaft to which a driving force is applied by impact blow of the
`
`hammer; a main switch operated by a user that controls a fastening operation; a torque
`
`setting switch used by a user that sets a fastening torque; a torque calculator that
`
`calculates a fastening torque; a controller that controls turning on and off of the motor
`
`based on switching on and off of the main switch, an output of the torque calculator and
`
`the fastening torque set in the torque setting switch, and having a normal fastening mode
`
`and a tight fastening mode; 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 terque; 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 the tight fastening operations
`
`18
`
`
`
`P27872.A08
`
`continuously; when a number of the 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 mod
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