P27872.A05
`
`REMARKS
`
`Initially, Applicants would like to express appreciation to the Examiner for the
`
`detailed Official Action provided.
`
`Upon entry of the above amendment, the specification and claims 1 and 9 will
`
`have been amended. Accordingly, claims 1, 3, 5, 7, 9, and 10 are currently pending.
`
`Applicants respectfully request
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`reconsideration of the outstanding rejections and
`
`allowance of claims 1, 3, 5, 7, 9, and 10 in the present application. Such action is
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`respectfully requested and is now believed to be appropriate and proper.
`
`The specification has been amended on page 11, line 8.
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`In particular, the phrase
`
`“when a term T1 between a time when the main switch 2 is switched off and a time when
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`the main switch 2 is switched on again by the user is longer than a predetermined term
`
`T2” has been changed to —-- when a term Tl 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 longer than a predetermined term T2-——. This amendment is fully supported by
`
`the specification, including the claims and drawings, and no prohibited new matter has
`
`been added.
`
`In this regard, as clearly shown in figure 8, the time period T1 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 T2.
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`Accordingly,
`
`it is respectfully requested that the amendment to the specification be
`
`entered.
`
`Claims 1, 3, 7, 9, and 10 have been 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 SANDERS (US. Patent No. 5,056,607).
`
`
`
`REMARKS
`
`Initially, Applicants would like to express appreciation to the Examiner for the
`
`detailed Official Action provided.
`
`Upon entry of the above amendment, the specification and 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.
`
`The specification has been amended on page 11, line 8.
`
`In particular, the phrase
`
`“when a term T1 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 longer than a predetermined term
`
`T2” has been changed to —-- when a term Tl 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 longer than a predetermined term T2-——. This amendment is fully supported by
`
`the specification, including the claims and drawings, and no prohibited new matter has
`
`been added.
`
`In this regard, as clearly shown in figure 8, the time period T1 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 T2.
`
`Accordingly,
`
`it is respectfully requested that the amendment to the specification be
`
`entered.
`
`Claims 1, 3, 7, 9, and 10 have been 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 SANDERS (US. Patent No. 5,056,607).
`
`
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`P27872.A05
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`Although Applicants do not necessarily agree with the Examiner's rejection of
`
`claims 1 and 9 on this ground, nevertheless, Applicants have amended independent
`
`claims 1 and 9 to clearly obviate the above noted ground of rejection in order to expedite
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`prosecution of the present application.
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`In this regard, Applicants note that SUZUKI et
`
`al., AMANO et al., and SANDERS fail to teach or suggest the subject matter claimed in
`
`amended claims 1 and 9.
`
`In particular, claim 1, as amended, sets forth a rotary impact
`
`tool including, inter alia, a main switch; a tight fastening mode setting switch; and “a
`
`controller that controls turning on and off of the motor based on switching on and off of
`
`the main switch”; and “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
`
`erforms the ti
`
`t fastenin
`
`o eration althou
`
`the ti
`
`t fastenin mode
`
`setting switch is switched off”. Claim 9, as amended, sets forth a rotary impact tool
`
`including, inter alia, a main switch; a tight fastening mode setting switch; “a controller
`
`that controls turning on and off of the main switch”; 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 ti
`
`tfastenin o eration althou
`
`the ti
`
`tfastenin mode settin switch is switched
`
`off”.
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`
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`P27872.A05
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`This amendment is fully supported by the specification, including the claims and
`
`drawings, and no prohibited new matter has been added. Support for the amendments
`
`may be found at least in the specification on page 11, lines 5—13 and in figure 8.
`
`In this
`
`regard, figure 8 shows that when a time period T1 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 T2, after the driving of the motor 3 is off due to
`
`completion of the normal fastening operation designated by the symbol 01, it is possible
`
`that the controller 5 can perform the tight fastening operation designated by the symbol 6,
`
`although the tight fastening mode setting switch 12 is switched off. See page 11, lines 5-
`
`13.
`
`It is noted that “longer” on line 8 is a clear typographical error, and should be
`
`replaced by ——shorter--. As clearly shown in figure 8, the time period T1 is shorter that
`
`the time period T2. Accordingly, it is respectfully submitted that the phrase “when a
`
`term T1 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 longer than a predetermined term T2” in lines
`
`6—8 should read “when a term Tl 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 term T2”, and that,
`
`therefore,
`
`this phrase provides support for the
`
`amendments to claims 1 and 9.
`
`Accordingly, in Applicants’ invention, as claimed in amended claims 1 and 9, the
`
`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
`
`10
`
`
`
`P27872.A05
`
`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.
`
`Therefore, claims 1 and 9 have been amended to include the feature that the
`
`controller performs the tight fastening operation, when the term Tl 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 term T2, after the driving of the motor is off due
`
`to completion of the normal fastening operation, although the tight fastening mode setting
`
`switch is switched off. The prior art fails to teach or suggest this feature including two
`
`way switching of the operation mode to the tight fastening mode by operation of the tight
`
`fastening mode setting switch and automatic switching by the controller corresponding to
`
`the time period between a time when the main switch is switched off and a time when the
`
`main switch is switched on again.
`
`The SUZUKI et a1. patent fails to teach or suggest a device that includes a
`
`controller that controls the device such that when the time period between turning off the
`
`main switch and turning on the main switch is shorter than the predetermined time
`
`period, after the normal fastening is completed and driving of the motor is turned off, the
`
`controller performs the tight fastening operation, although the tight fastening mode is
`
`switched off. Further, the AMANO et a]. patent and the SANDERS patent both also fail
`
`to teach or suggest a device that includes a controller that controls the device such that
`
`when the time period between turning off the main switch and turning on the main switch
`
`is shorter than the predetermined time period, after the normal fastening is completed and
`
`driving of the motor is turned off, the controller performs the tight fastening operation,
`
`although the tight fastening mode is switched off. Therefore, the AMANO et a1. and
`
`11
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`
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`P27872.A05
`
`SANDERS patents fail to cure the deficiencies of the SUZUKI et a]. device, and even
`
`assuming, argpendo, that the teachings of SUZUKI et a1., AMANO et al., and SANDERS
`
`have been properly combined, Applicants’ claimed rotary impact tool including, infl
`
`aha, 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 amended
`
`claims 1 and 9, 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 claims 1
`
`and 9 under 35 U.S.C. § 103(a) over SUZUKI et al. in view of AMANO et a1. and
`
`SANDERS. Thus, the only reason to combine the teachings of SUZUKI et al., AMANO
`
`et al., and SANDERS results from a review of Applicants’ disclosure and the application
`
`of impermissible hindsight. Accordingly, the rejection of claims 1 and 9 under 35 U.S.C.
`
`§ 103(a) over SUZUKI et al. in view of AMANO et a1. and SANDERS is improper for
`
`all the above reasons and withdrawal thereof is respectfully requested.
`
`Applicants submit that dependent claims 3, 5, 7, and 10, which are at least
`
`patentable due to their dependency from claims 1 and 9, for the reasons noted above,
`
`12
`
`
`
`P27872.A05
`
`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.
`
`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, 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 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.
`
`13
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`
`
`P27872.A05
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`Should there be any questions, the Examiner is invited to contact the undersigned
`
`at the below listed number.
`
`Respectfully Submitted,
`Hide
`ri SHIMIZU et a1.
`
`Um
`
`Bruce H. B
`
`stein
`
`Reg. No. 29,027
`
`Linda J. Hodge
`
`Reg. #47,348
`
`September 17, 2007
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 Roland Clarke Place
`
`Reston, VA 20191
`
`(703) 716-1191
`
`14
`
`
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