DETAILED ACTION
Notice of Pre-AIA 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 .
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 10/8/2025 has been entered.
This action replaces and supersedes the final action mailed 10/8/2025 at the request of SPE Adam Eiseman.
MPEP 706.07(h)
See MPEP 706.07(h) XI A: “…a Board decision in an application is the "law of the case," and is thus controlling in that application and any subsequent, related application. See MPEP § 1214.01 (where a new ground of rejection is entered by the Board pursuant to 37 CFR 41.50(b), argument without either amendment of the claims so rejected or the submission of a showing of facts can result only in a final rejection of the claims, since the examiner is without authority to allow the claims unless amended or unless the rejection is overcome by a showing of facts not before the Board)
At present, pending claim 1 is a combination of previously rejected claims 1, 4, and 7 and the rejection applicable to claims 4 and 7 was presented in an appeal which rejection was affirmed in a decision on 07/22/2025.
Because the scope of the pending claim 1 is the same as a rejection affirmed by the board, Examiner is without authority to reach a different conclusion than the Patent Trial Appeal Board, and the only result can be a rejection on the same grounds as previously appealed.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) s 1, 2, 5-6, 8-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart, Okouchi, Kani, Tang and Elfner as affirmed by the Patent Trial Appeal Board’s 7/22/2025 decision (See the decision on Page 13 and 14 which shows the claimed subject matter of the present claims 1, 2, 5-6, and 8-14 to be rejected, as claims 1, 4, 7 previously presented have been incorporated into claim 1, however all the claimed subject matter from these claims was contained and rejected in the prior prosecution, and affirmed in the 7/22/2025 decision).
Claim(s) s 1, 2, 5-6, 8-14 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart, Okouchi, Kani, Tang and Elfner as affirmed by the Patent Trial Appeal Board’s 7/22/2025 decision (See the decision on Page 13 and 14 which shows the claimed subject matter of the present claims 1, 2, 5-6, and 8-14 to be rejected, as claims 1, 4, 7 previously presented have been incorporated into claim 1, however all the claimed subject matter from these claims was contained and rejected in the prior prosecution, and affirmed in the 7/22/2025 decision).
Applicant’s response to claims 16-21 being withdrawn as divergent from claims 8-14 (elected by original presentation) was to argue that the claims were drawn to the same invention. If that is correct then they are rejectable on the identical grounds as presented previously.
Claim Rejections - 35 USC § 112(a)
Claims 5,6, 16-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 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 convey to one skilled in the relevant 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 was filed, had possession of the claimed invention. The claims recite “fixing elements” and the disclosure fails to reasonably demonstrate possession of the full scope of the term “fixing elements”.
For example, fixing elements as shown in the figures are three blocks—and indeed applicant requires three fixing elements in certain claims (claim 20-21). The disclosure also states that “Preferably, the fixing elements 46, 48 are fastened to the coupling surfaces 26, 28, in particular are realized integrally with the coupling surfaces 26, 28. Preferably, the
fixing elements 46, 48 are realized as latching elements, as snap-in elements, as bayonet elements, or as other fixing elements considered appropriate by persons skilled in the art.” However, the disclosure fails to show how any of those ideas could be implemented. “Bayonets” for example require insertion and twisting—which is inconsistent with the disclosed components making up the device as a whole. The implementation of “bayonets” is not shown. Nor is the nature of “snap” elements shown in a reasonable manner—the figures show bare boxes, with no indication of how the ‘snap’ would function in practice. It appears the idea of some kind of fastener is present—but critically applicant has not worked out how to make the device in practice. A person of ordinary skill seeing the disclosure of applicant as a whole would not believe they demonstrate possession of the scope of the terms “fixing elements” since critical aspects of how those devices work in practice are wholly absent from the disclosure.
Claim Rejections - 35 USC § 112(b)
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-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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.
Claim 16 requires “extends at least substantially parallel” which is nonsense in context. The amount of parallelism being claimed is subjective at least due to the term “substantially.”
Similarly, in claim 16 the term “a direction at least substantially perpendicular” is nonsense in context. The amount of perpendicularity being required in the claim is subjective at least due to the term “substantially.”
The claimed “fixing elements” are indefinite. They are not understood from the drawings and the specification taken as a whole. Their intent is recognized (fastening/fixing) but the nature of the element being claimed—what scope this term has—has not been reasonably set forth, and as above, it is believed applicant has failed to demonstrate reduction to practice of this term as well.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart, Okouchi, Kani, Tang and Elfner as affirmed by the Patent Trial Appeal Board’s 7/22/2025 decision (See the decision on Page 13 and 14 which shows the claimed subject matter of the present claims 1, 2, 5-6, and 8-14 to be rejected, as claims 1, 4, 7 previously presented have been incorporated into claim 1, however all the claimed subject matter from these claims was contained and rejected in the prior prosecution, and affirmed in the 7/22/2025 decision), further in view of Takano et al (US 2009/0108806) and .
As best understood—(See 112(B) supra) applicant is now newly claiming the inventiveness of having “substantially” flat and “substantially” perpendicular surfaces in the coupling of a battery pack to a tool. These are both subjective and so inconsequential that they fail to establish the necessary inventiveness for patentability.
This is a routine and ordinary way to couple battery packs in the tool arts.
Takano et al, shows a coupling surface that extends at least substantially parallel to a plane of main extent of the coupling unit, the fixing elements projecting from the coupling surface in a direction at least substantially perpendicular to the coupling surface, and the coupling surface bears against the energy storage unit when the energy storage unit is fastened to the coupling unit (See figure 1 and 3, showing exploded and mated together surfaces).
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Alternatively and additionally, Look at Kani—already of record, which shows : coupling surface that extends at least substantially parallel to a plane of main extent of the coupling unit, the fixing elements projecting from the coupling surface in a direction at least substantially perpendicular to the coupling surface, and the coupling surface bears against the energy storage unit when the energy storage unit is fastened to the coupling unit (See figure 2, showing the battery pack mated together in the receiving face corresponding to the surfaces of the battery pack).
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To the extent the claims are understood, the features as set forth in claims 16-21 are old features, not invented by applicant, and are apparently present in either Kani, Takano, or the other devices as discussed previously.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M MICHALSKI whose telephone number is (571)272-6752. The examiner can normally be reached Typically M-F 6a-3:30p East Coast Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/Primary Examiner, Art Unit 3724