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 .
Response to Amendments
The amendments filed 10/16/2025 have been entered.
Response to Arguments
Applicant's arguments filed 10/16/2025 have been fully considered but they are not persuasive.
Applicant argues on page 5 of the Remarks that the drawing objection in regards to the aperture should be withdrawn as apertures “are clearly depicted and numbered in the schematic view as the openings for the cooling air flow (element 160) to pass through the walls. Applicant further argues that a schematic drawing is a not-to-scale 2D diagram to show exact layout and it is clear that apertures 1750 and 1870 are openings filled by the cooling air flow 160. Applicant also argues that the action “mischaracterizes” the enclosure of the electrical storage device and the wall of the battery compartment. Applicant argues that the wall of the battery compartment is represented as the perimeter of the element 150 and the enclosure of the electrical storage device is represented as the perimeter of element 220, which is clearly depicted in Figure 24.
In response, and as best understood, Applicant is arguing that the Figures shows a wall 150, and then a gap, and then the outer wall of an element 220.
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If that is the case, then this is inconsistent with the originally filed drawings (10/22/2021):
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Per MPEP 608.2:
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Applicant did not identify a gap there in the original drawings and, instead, appeared to present the space between numeral 150 and what would be the exterior of numeral 220 as a solid wall, seemingly made of metal, per MPEP 608.2, as seen above.
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Additionally, in regards to cross-sections, per MPEP 608.02:
A cross section must be set out and drawn to show all of the materials as they are shown in the view from which the cross section was taken. The parts in cross section must show proper material(s) by hatching with regularly spaced parallel oblique strokes, the space between strokes being chosen on the basis of the total area to be hatched. The various parts of a cross section of the same item should be hatched in the same manner and should accurately and graphically indicate the nature of the material(s) that is illustrated in cross section. The hatching of juxtaposed different elements must be angled in a different way. In the case of large areas, hatching may be confined to an edging drawn around the entire inside of the outline of the area to be hatched. Different types of hatching should have different conventional meanings as regards the nature of a material seen in cross section.
Now, given the arguments, it’s unclear if the original issue was showing a cross-section where there was none, and thus removing the cross-hatching, or if it was putting cross-hatching on a gap.
The issue is that the newly amended drawings appear to show a delineation between the wall of the battery compartment 150 and the element 220, the delineation now being a gap, which seemingly makes up the enclosure of the electrical storage device. However, that delineation also now adds a gap where there was once a solid wall and would therefore be new matter as it is materially changing what is shown by Figure 24, specifically by removing material and creating a distance between two objects that wasn’t otherwise represented. It should be noted that the absence of cross-hatching does not mean an empty space, as per the MPEP and, particularly given the history of the drawings, it is not interpreted as a gap even with the amended drawings.
In the originally filed Figure 24, numeral 150 apparently shows the thickness of a wall, identified as numeral 150, separated by the exterior face and the interior face, where there is no delineation between the elements 220 and 150, seemingly showing them as one.
Additionally, the Applicant’s argument that the Office Action is mischaracterizing “the enclosure of the electrical storage device” and “the wall of the battery compartment” is not persuasive as there is no delineation shown in the drawing, as originally filed, between the enclosure (a “housing” of the electrical storage device 220) and the battery compartment 150, meaning that the mischaracterization of the claim language is actually due to the drawing as originally filed as characterizing these as one structure.
Finally, the need to show apertures 1870 and 1750 still stands. If it is a matter of the apertures not being able to be drawn, then the applicant should communicate that. Otherwise, the drawings are necessary for understanding what Applicant considers to be the apertures, and the flow path in between, especially as Applicant argues on page of the Remarks that specific inlet(s) and outlet(s) is/are needed in order to achieve the air pressure above atmospheric in the electrical storage device, rather than just any inlet/outlet being capable of said function.
As previously stated, some may consider a single cylindrical passageway to comprise an inlet, an outlet, and a flow path therebetween. Others may consider that simply a single opening. The specification helps to determine what is meant and, without drawings, it’s difficult to determine what the claim means by requiring an inlet, outlet, and flow path/slot. Theoretically an opening can exist as a planar, 2D structure, but realistically it will have a thickness and, therefore, any aperture inherently has an inlet (where fluid enters), outlet (where fluid exits), and a passageway (thickness therebetween). Therefore, not showing a “gap” seems to be how the Applicant is characterizing the inlet and outlet, and passage therebetween for airflow, meaning that the alleged mischaracterization is shown in the originally filed drawings, which show a single wall that has an inlet, an outlet, and a supposed passage therebetween.
For these reasons, the argument(s) is/are not persuasive.
Applicant argues on pages 6 and 7 of the Remarks that Figure 24 “clearly shows a gap or slot between the all of the battery compartment 150 and the enclosure of the electrical storage device 220 in 2-D.”
In response, the gap does not seem to appear in the originally filed drawing. Furthermore, Applicant cannot show both a fluid flow and a gap with an arrow, identifying two distinct structures with a single reference character. Even if the arrow were meant to show a “gap,” this is not how a gap is meant to be shown according to 37 CFR 1.84(r). A gap is, by definition, an unfilled space. Per MPEP 608.2, that space was clearly shown to be filled in the drawing(s) as originally filed, thus meaning no gap was shown.
Lastly, Applicant still identifies the slot section one, Ss1, as seemingly just being a section of the wall of numeral 150 and it is not inherently considered a gap, particularly from what is shown in Figure 24. Furthermore, Applicant does not similarly identify an aperture for which air “leaks” out, as “leak” seems to imply that it does not exit the inlet/outlet as intended.
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Applicant argues on page 7 of the remarks that numeral 170 can be identified as “a bellows, a conduit, and a damping member” as these are different names for the same element.
In response, the terms “bellows,” “conduit,” and “damping member” do not mean the same thing to one of ordinary skill in the art. Bellow means “an instrument or machine that by alternate expansion and contraction draws in air through a valve or orifice and expels it through a tube” (“bellows”; Merriam-Webster Online Dictionary, def. 1). Conduit means “a channel through which something (such as a fluid) is conveyed” or “a pipe, tube, or tile” (“conduit”; Merriam-Webster Online Dictionary, defs. 1 and 2). A damping element, or damper, is “a device that damps,” such as a valve or plate, a small felted block, or a shock absorber (“damper”, Merriam-Webster Online Dictionary, def. 2). It’s unclear how these can be considered the “same” when all that unites them is having the same numeral 170. These terms are not synonymous with each other and are considered distinct from each other.
Furthermore, if Applicant wants to make clear that these are the different names for the same element, Applicant should consider using one name for the same element, rather than three different names for the same element.
For these reasons, the argument that these are the same is not persuasive.
Applicant argues on page 7 of the Remarks that the seemingly empty space referring to an electrical storage device in Fig. 24 is because the drawing is shown in 2-D that is showing the profile of the electrical storage device (element 22) and its housing/enclosure within the battery compartment (element 15), as discussed above.
In response, the originally filed drawings appeared to show a cross section having distinct features. Per MPEP 608.02:
A cross section must be set out and drawn to show all of the materials as they are shown in the view from which the cross section was taken. The parts in cross section must show proper material(s) by hatching with regularly spaced parallel oblique strokes, the space between strokes being chosen on the basis of the total area to be hatched. The various parts of a cross section of the same item should be hatched in the same manner and should accurately and graphically indicate the nature of the material(s) that is illustrated in cross section. The hatching of juxtaposed different elements must be angled in a different way. In the case of large areas, hatching may be confined to an edging drawn around the entire inside of the outline of the area to be hatched. Different types of hatching should have different conventional meanings as regards the nature of a material seen in cross section.
Applicant has not included multiple drawings showing a different angle or different angles to help determine the 3D structure. While 2D is acceptable and routinely used for drawings, it’s extremely rare that a single 2D image can convey accurately what is represented in 3D in the real world.
This is made even more difficult when the Figure uses numerals and imaginary arrows to describe things that aren’t shown in the figure, like the inlet, outlet, and passageways.
Lastly, the Figure 24 does appears to be more of a diagram, meaning that there is an added layer of ambiguity as one would then have to interpret how a diagram would look like incorporated into the invention or how it would look in a real, three-dimensional state.
There are ways to show what Applicant describes but it is still considered that the Figure 24 does not show what Applicant is attempting to convey in the arguments.
Applicant argues that the 2-D schematic shows the “profile” of the electrical storage device (element 220) and its housing/enclosure within the battery compartment (element 150).
In response, assuming there is a structure within the space 220, it would not be understood that numeral 220 shows both the electrical storage device AND its housing/enclosure (separately claimed). At best, this would only show one structure.
Additionally, numeral 1870 is meant to define the inlet aperture on the electrical storage device 220. Yet, the arrow seemingly points to what could be many objects, including the wall of 220, the housing of 220, and/or the wall of 150, lending to ambiguity about what is being shown.
Lastly, there is an issue where Applicant is seemingly attempting to show the aperture 1870 that would, as best understood from the arguments, be on the bottom face of electrical storage device 220 (“wherein the outlet aperture [formed in a wall of the battery compartment] faces a corresponding inlet aperture formed in an enclosure of the electrical storage device” as claimed in claim 1). If that is the case, then we are looking at a front face of the electrical storage device 220 and cannot see the bottom face of electrical storage device 220 where the aperture would seemingly be. If that is the case, then numeral 1870 should not be in the Figure as that structure cannot be shown in the Figure.
Alternatively, if the aperture is in the front face of the electrical storage device, and it is not shown, then this illustrates the ambiguity of not showing the aperture (i.e. would one building the claimed invention, as taught by the specification, put the aperture on the front face or the bottom face?).
As best understood, Applicant is arguing that the Figure is in 2D and, therefore, you are looking at a side-wall with an aperture therein, not shown because you are seeing a view of the wall and not the aperture. Yet, Applicant is still labeling the drawing as though it shows these structures. If the Figure does not show the aperture, then there should be no arrow “showing” the aperture. Applicant should include another and separate drawing to show the opening. Implying that a drawing shows something that is not actually shown is improper.
For these reasons, the argument is not persuasive.
Applicant argues on page 8 of the Remarks that “slot section” clearly represents a section or portion of a slot formed between the wall of the battery compartment and the enclosure of the electrical storage device and requires a slot (e.g. passage, opening, or groove).
In response, the claim does not make clear that a “slot” is being part of the claim. In this case, a section is simply a section. Using an adjective to differentiate one section from another does not inherently requires a structure as this could be an identifier akin to “one section” or “the second section.” Even in the case of “second section,” this would be considered indefinite without additional structure (i.e. first section) as this implies a structure (i.e. first section) without explicitly claiming it. This would not inherently require a “first section,” the point being that one would not, without a doubt, assume something implied is definitely in the claim.
Additionally, and more to the point, there becomes ambiguity about which slot this would require. For example, if a section had an aperture, like an inlet/outlet aperture, then this would be a section having a slot (e.g. a passage, opening, or groove). Applicant is implying structure, meaning strongly suggesting a slot is there, but the claim is vague about if it definitely is and which slot is there to make it a slot section. This is made even more ambiguous as the slot isn’t shown in the Figure to tell if this is a different slot from the apertures, or if Applicant is simply pointing to the side of the device with apertures.
If Applicant wishes a slot to be claimed, then a slot should be explicitly claimed as part of the structure, in accordance with the specification and without adding new matter, to overcome any ambiguity.
Applicant argues that “generating an air pressure above atmospheric” is clear. Applicant goes on to state that “[t]he outlet and the inlet are at least partially the cause of airflow speed change/pressure change, and thus “generate” an air pressure above atmospheric in the electrical storage device as well.”
In response, the issue with indefiniteness has to do with what the function conveys in terms of definite structure. Applicant appears to argue that this is meant to require, among other things, a specific inlet/outlet shape/size/position. There are two issues with this in terms of conveying structure
The first is that Applicant is seemingly arguing that the claim requires a specific inlet/outlet shape/size/position without even showing the inlet/outlet/size/position, let alone describing exactly how to one would make the claimed invention that generates an air pressure above atmospheric in the electrical storage device without bringing their own knowledge of nozzles and air pressure to essentially invent a structure capable of doing that in the absence of any teaching of the specification. This would be something that needs to be shown or described in the specification in order to require the claim to have a specific inlet, outlet, and combination thereof in view of the specification.
The second is that Applicant, in the arguments, says that this would “at least partially” cause the airflow speed change/pressure to generate an air pressure above atmospheric, implying that there is additional structure beyond that that Applicant needs to achieve said function.
To be clear, the actual statement itself of generating an air pressure above atmospheric is understood. However, this is a structural claim that requires functional limitations to be understood in terms of structure, not only to compare to the prior art, but to make and use a claimed device capable of that function. The argument does not help clarify what is inherent to said function and, therefore, this is still being considered indefinite.
However, even if Applicant were to persuasively describe all the structure Applicant requires to generate said function, this would seemingly not be adequately described in the specification as originally filed as the inlet and outlet are not even shown, let alone shown in a detail that seems to be required to produce said function.
For these reasons, the argument is not persuasive.
Applicant argues on page 8 of the remarks that “air leaks out between the outlet aperture and the inlet aperture to an exterior of the cut-off tool via the first slot section” is definite as “slot section” clearly requires a slot. Applicant than argues that a “slot section” clearly represents a section or portion of a slot.
In response, and as stated above, this is not clearly communicated with a “first slot section.” Additionally, the claim states that the flow of cooling air leaks out between the outlet aperture and the inlet aperture…via the first slot section” [emphasis added], and not via the slot. This ambiguously implies that there might be another hole/opening/passage beyond just a/the slot OR, again, that the air just moves out the inlet/outlet aperture which are, also, technically slots.
Applicant’s argument that “slot section” clearly requires a “slot” is not persuasive. First, the “slot section” would still be the “slot section” if one filled in any slot/hole, and therefore one understands “slot section” to be a section identified as a “slot section,” rather than a section inherently requiring a slot. Second, Applicant implying that “slot section” means “a slot section comprising a slot” shows how this is ambiguous as this could be “the slot” or “the inlet” (which is a “slot” by the definition of the term slot provided in the arguments), or “the outlet” (which is a “slot” by the definition of the term slot provided in the arguments), in addition to “a slot” as argued here by the Applicant. The result of implying structure is ambiguity which, in this case, creates indefiniteness.
Applicant should explicitly claim a slot to overcome the rejection under 35 USC 112(b) and avoid ambiguity.
Applicant argues on page 8 that claim 3 is definite as the “Office Action misinterprets the enclosure of the electrical storage device.”
In response, the interpretation is made in earnest in view of the specification, but the lack of drawing support and clear and exact structural definitions results in both an interpretation that ends in indefiniteness and an interpretation that Applicant feels mischaracterizes the claimed invention.
As stated previously, the electrical connectors 1840 are shown in Figure 24 seemingly embedded into the wall of numeral 150. Applicant shows no opening, or slot, or any structure that connects those connectors 1840 to the outside of the numeral 150. Applicant doesn’t even show the arrows connecting through from one side of numeral 150 in the second slot section (Ss2). This means “wherein an opening in the enclosure of the electrical storage device is formed in connection to the electrical connectors such that a second portion of the flow of cooling air leaks out to an exterior of the hand-held electrically powered cut-off tool through the opening and via a second slot section formed between the electrical storage device and the wall of the battery compartment” is completely left to interpretation. One has to, on their own, determine how to achieve the function claimed and how to facilitate air flow, particularly given that it’s uncertain whether the thickness between 150 and 220 is meant to be a continuous wall, or an open gap based on the arguments regarding the drawings.
The Examiner lays out a clear line of reasoning as to why one of ordinary skill in the art would not find this definite in the Non-Final Rejection 07/16/2025 and none of these points are addressed with the argument to both help the examiner’s understanding, or to clarify what is exactly being claimed. Applicant should clearly lay out the structure that is being claimed in order to avoid any ambiguity.
For these reasons, the argument is not persuasive.
Applicant argues that the Office Action mischaracterizes multiple claimed elements and that, if interpreted properly, the prior art would not read on the claimed invention, particularly the claimed functions.
In response, the Examiner thanks the Applicant for attempting to explain what is being claimed and how that differs from the prior art. While it is seemingly implied that the examiner is purposely mischaracterizing the invention, the mischaracterization is a result of the specification and drawings not being clear, as explained above. This is made more evident as incoming arguments explain what was originally meant by the specification and, hence, the updated rejections are the examiners way of trying to address the arguments/explanation while also maintaining that the prior art reads on what is understood to be the claimed invention. Ultimately, it is the claimed structure that is being compared to the prior art.
Additionally, there is still some confusion as there is both an electrical storage device and a housing/enclosure for the electrical storage device that still adds ambiguity about what actually has the apertures and what allows fluid to flow through it. An electrical storage device is defined in the specification as “such as a battery.” So, the way the claim is written, it seems to imply that what is shown by numeral 220 is a battery and not a housing. Applicant also requires in the claims “an enclosure of the electrical storage device 220,” implying that the “electrical storage device” is a separate structure from the enclosure. Lastly, numeral 150 is referred to as a “battery compartment,” which would also seem to be defined as an enclosure for the battery.
The combination of not showing the inlets/outlets/slots, and identifying structures using multiple names (enclosure of the electrical storage device versus battery compartment) may result in a mischaracterization, but based on the part of trying to build a complete picture out of an unfinished one.
For example, Applicant argues that the Office Action does not identify an enclosure of the electrical storage device (element 220), but Applicant also does not show an enclosure of electrical storage device except for the “battery compartment 150.” Applicant, like the rejection, shows a battery compartment 150 and an electrical storage device 220, not a battery compartment, an enclosure, and an electrical storage device. Therefore, Applicant’s alleged mischaracterization is a result of trying to interpret what is meant by a claimed structure not shown or described, as the electrical storage device enclosure has no numeral in Figure 24, and applying the art as best understood, which was the reason for the comparison between the two Figures shown in the previous rejection.
Applicant argues on pages 9-12 that a “first slot section” of Moores Jr. cannot “leak” air as claimed. Applicant also defines “leak” in a more broader term saying that “leak” means “to let a substance or light in or out through an opening.”
In response, this goes back to the drawing objection and issues of indefiniteness above. Applicant argues on page 8 of the Remarks that “it is clear to one of ordinary skill in the art that “air leaks out between the outlet aperture and the inlet aperture to an exterior of the cut-off tool via the first slot section.”
The prior art shows an inlet and outlet, each forming a “slot” by the definition provided within the arguments by the Applicant (“passage, opening, or groove”) [Remarks/Arguments 10/16/2025; Page 8, first paragraph]. Therefore, the section that contains the inlet and outlet is, by Applicant’s own definition, a “slot section.”
As to air leaking “out between the outlet aperture and the inlet aperture to an exterior of the cut-off tool via the first slot section,” air does “leak” (i.e. lets a substance out through an opening) out of the inlet and outlet. In essence, both the outlet and the inlet “leak” air as it passes through the respective inlet/outlet.
The claimed “to an exterior of the cut-off tool” does not imply anything more than direction, as “to” indicates direction and this claim language is not considered to invoke additional structure beyond what is already claimed, like, for example, an additional slot beyond the slot already claimed. Since air moves through the inlet AND outlet in a direction that ultimately exits the device, then the air is passing through the proper way. However, this may also be a broader intended use and would only have merit based on the rest of the claim that produces air/substance through the inlets and outlets. In other word, what makes an inlet/outlet directional is not the inlet/outlet itself, but what pushes the substance through it. If the structure that pushes the substance through it is not claimed, then this would not require anything more than an inlet and outlet. As such, the claimed “air leaks out between the outlet aperture and the inlet aperture to an exterior of the cut-off tool via the first slot section” is considered met.
Additionally, this is still under 35 USC 112(b) rejection as being indefinite for what this functional statement conveys in terms of structure. While one can compare a function to a function for determining whether the prior art meets the claimed function, using the structure applicant uses or some other structure, ultimately the comparison will lie between whether or not the structure of the prior art meets the claimed structure (interpreted through functional interpretation), which is yet to be made definite.
For these reasons, the argument(s) are not persuasive.
Applicant argues on page 8 of the Remarks that alleging the electrical connectors (element 1840) are disposed on the exterior of the electrical storage device (element 220, 1800) is incorrect. Applicant states that “the Office Action misinterprets the enclosure of the electrical storage device” and that “the enclosure of the electrical storage device being the housing of the electrical storage device, the electrical connectors allow airflow through the enclosure.”
In response, it is not clear what is meant by this. As stated previously, the enclosure is not shown. It would suggest that either the exterior of element 220 is the enclosure, or possibly even the “battery compartment” (i.e. the “[electrical storage device] compartment”) 150 could be the enclosure for the electrical storage device 220. Either way, Applicant doesn’t seem to really show how these are connected other than, possibly, showing them embedded into the wall of numeral 150, which is the “battery compartment.” Even then, Applicant also does not show how air flows around them and/or through them to understand what is structurally meant by this claim language.
For these reasons, the argument is not persuasive.
Applicant argues on pages 9-12 similar arguments as iterated previously regarding mischaracterization, particularly with regards to the claimed functional language.
In response, the functional language must be evaluated for what it conveys in terms of structure, and that evaluation is based on what Applicant discloses. As stated previously, the examiner has done their best to understand what is being shown and/or described and has applied art to that interpretation. Any mischaracterization of said interpretation is likely a lack of understanding of the claimed invention in light of the specification. In order to clear up any mischaracterization, it is strongly recommended that Applicant use clear claim limitations, such as explicitly claiming structure rather than through intended use, not rely on implied structure, where “slot section” is implied to be a section comprising a slot, and show what is considered new and novel in the Figures and/or show where it is adequately and fully described in the specification.
For these reasons, the arguments are not persuasive.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s).
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Claim 1 – The “cooling air conduit” is not shown. Applicant discusses this in paragraphs 0008, 0047, 0048, 0053, and 0159, of Application Publication, but does not show a reference numeral for it. Applicant states that a “cooling air conduit may be formed as part of an interior space enclosed by work tool body parts, or as a hose of other type of conduit, or as a combination of different types of conduits” [Application Publication; paragraph 0048].
Claim 1 - Applicant claims “wherein the outlet aperture (1750) faces a corresponding inlet aperture (1870) formed in an enclosure of the electrical storage device…thereby generating an air pressure above atmospheric pressure in the electrical storage device.” Applicant does not show an aperture with either 1750 or 1870, but merely an arrow indicating airflow.
Applicant also doesn’t show the electrical storage device (battery) in the enclosure (the enclosure assumed to be 150 as this is the only structure that the numerals 1870, 1750 seem to be pointing to) and, particularly, doesn’t show how, even if 1870 and 1750 were apertures, that they would “[generate] an air pressure above atmospheric pressure in the electrical storage device.” Applicant should show the apertures and should also show the functional structure of how those apertures are structurally configured in relation to the electrical storage device to “[generate] an air pressure above atmospheric pressure in the electrical storage device.”
Claim 1 - Applicant claims “wherein a first slot section is formed by a distance between the outlet aperture (1750) and the inlet aperture (1870) such that a first portion of the flow of cooling air leaks out between the outlet aperture (1750) and the inlet aperture (1870) to an exterior of the cut-off tool via the first slot section.”
First, there is not really a structure associated with the slot sections Ss1, Ss2, Ss3, but merely an area bracketed off in Figure 24. Applicant needs to show slots if these sections do have slots.
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At best, one is lead to assume that there is a passageway between the outlet aperture 1750 and the inlet apertures 1870 for the airflow to travel straight as shown in Figure 24. As such, there is nowhere for a “leak” except the outlet 1750 and inlet 1870, which would not necessarily be considered a “leak” (considered an accidental loss) as the inlet and outlet where deliberately put there to act as an outlet and inlet.
Perhaps Applicant considered the adjacent air flows 2415 to show the leak, but Applicant does not show that this is a passageway (arrows are not considered structure) and, even so, they are not shown as connected to the inlet and outlet (1750, 1870), respectively. Applicant needs to show the passageway for the air to “leak” as claimed.
While mentioned briefly above, the electrical storage device 220 of Figure 24 is merely shown as a space inside of the battery compartment 150 and not as a structure delineated from the interior of battery compartment 150. Applicant must show a distinct structure representative of the storage device 220.
Applicant must also show both the claimed “enclosure” and the claimed “battery compartment” as both are simultaneously claimed. The claim requires both (“a battery compartment” and “inlet aperture formed in an enclosure of the electrical storage device”). Applicant just shows the structure 150 assumed to be the “enclosure” of the electrical storage device 220, but does not seem to show a battery compartment as claimed.
Claim 2 – The claimed “distance between the electrical storage device (220) and the wall of the battery compartment (150)” is not shown. Figure 24 does not appear to show that there is a distance between 150 and 220. Rather, it appears that 220 is referencing the interior volume of the compartment 150, which abut each other.
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Claim 3 – The claim requires “an opening in the enclosure of the electrical storage device (220) is formed in connection to the electrical connectors (1840) such that a second portion of the flow of cooling air leaks out to an exterior of the cut-off tool through the opening and via a second slot section (Ss2) formed between the electrical storage device (220) and the wall of the battery compartment (150). In Figure 24, there is not even an opening shown in slot section 2, nor is there even an arrow showing the flow going through the wall, like between 1870 and 1750. Applicant needs to show the passage for which the air “leaks out” but showing the opening in the enclosure of the electrical storage device formed in connection to the electrical connectors as claimed. Additionally, Applicant needs to show “between the electrical storage device (220) and the wall of the battery compartment (150) as claimed, since there seems to be no delineation between the two.
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The claim requires the claimed “electrical storage device comprises one or more electrical connectors arranged to mate with corresponding contact strips arranged in the battery compartment, wherein an opening in the enclosure of the electrical storage device is formed in connection to the electrical connectors such that a second portion of the flow of cooling air leaks out to an exterior of the cut-off tool though the opening.”
Applicant identifies electrical connectors 1740 of battery compartment 150 (Fig. 17B).
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Applicant shows electric connectors 1840 of battery 220/1800 (Figs. 18B, 24).
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Applicant identifies electrical storage device as numeral 220 (Figs. 2A, 2B, 7B, 7C, 24, 25) and 1800 (Figs. 18A-18D).
The connectors 1840 of the battery 220 appear to be on the inside of the battery compartment 150 in Figure 24. Assuming that there is a battery within the enclosure, then it would seem the connectors on the outside of the battery should touch the connectors on the enclosure. But, the claim requires “an opening in the enclosure of the electrical storage device is formed in connection to the electrical connectors [of the electrical storage device] such that a second portion of the flow of cooling air leaks out to an exterior of the cut-off tool through the opening [in the enclosure of the electrical storage device] and via a second slot section formed between the electrical storage device and the wall of the battery compartment.” Applicant states “[a]n opening in the enclosure of the electrical storage device 220, 1800 is formed in connection to the electrical connectors 1840 such that a second portion 2425 of the flow of cooling air leaks out to an exterior of the cut-off tool through the opening and via a second slot section Ss2 formed between the electrical storage device 220, 1800 and the wall of the battery compartment 150” [Application Publicaiton; paragraph 0164]. However, no “opening” is shown, the electrical connectors 1840 are seemingly shown as an area, and the enclosure is not referenced in that Figure. Applicant needs to show this claimed structure, particularly the opening as claimed.
Claim 4 – The claim requires “an air outlet (1860) is formed in the electrical storage device enclosure (150?) opposite to the inlet aperture (1870) to form a passage for cooling air to flow through the electrical storage device (220).” As shown in Figure 24, the “inlet aperture” is formed in the electric storage and is not shown to, along with an air outlet 1860, to “form a passage for cooling air to flow through the electrical storage device 220. As seen in Figure 18C, the air outlet 1860 and inlet aperture 1870 are on opposite sides of the battery 1800. The Examiner will not that this runs counter to the inlet aperture 1870 of Figure 24 which is shown on the inside of the enclosure 150. So, if Figure 18C is meant to show the enclosure, then the “inlet aperture” is in the wrong location. If Figure 18C is meant to show the “electrical storage device,” then Figure 18C doesn’t show the “inlet aperture formed in an enclosure” as required by claim 1.
Claim 4 – The claim requires “an additional slot section is formed by a distance between the air outlet (1860) and the wall of the battery compartment (150), such that an additional portion of the flow of cooling air leaks out to an exterior of the cut-off tool via the additional slot section (Ss3?).”
Firstly, Applicant does not show Figure 24 in the context of the “cut-off tool.” While Figure 24 shows air seemingly leaving the compartment 150, it’s not inherent that this also is the same exit/outlet for the cut-off tool. There is no showing in any of the Figures that show the outlet 1860 connected to the outlet of the cut-off tool.
Secondly, the distance between the air outlet 1860 and the (outside?) wall of the battery compartment is the thickness of the battery compartment. However, Applicant does not show a passageway extending through the enclosure. As best understood, outlet 1860 is just an opening in the wall of the enclosure going from one side to the other. But Applicant needs to show this passageway, particularly since Applicant is trying to state that this is the “additional slot section”, separate from the “air outlet” (1860).
Lastly, Applicant doesn’t show slot sections (sections with slots), particularly connected to the outlet. At best, Applicant shows air flow arrows 2435, disconnected from the outlet 1860. Even so, these are offset from the “distance between the air outlet and the wall of the battery compartment,” which would be considered akin to the thickness.
Claim 5 – Applicant does not show “a cooling air conduit” of claims 5, 6, and 7. The figures do not identify a numeral for this structure and the drawings appear to just shown an airflow rather than a conduit.
Applicant identifies numerals 170 as a bellows, a conduit, and a damping member.
In Figure 24, a seemingly empty space is referred to as “an electrical storage device 220.” This should be delineated from the battery compartment 150 as, currently, this seems to identify the battery compartment 150 and 220 as the interior of the battery compartment.
MPEP 608.02:
(q) Lead lines. Lead lines are those lines between the reference characters and the details referred to. Such lines may be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (l) of this section.
(r) Arrows. Arrows may be used at the ends of lines, provided that their meaning is clear, as follows:
(1) On a lead line, a freestanding arrow to indicate the entire section towards which it points;
(2) On a lead line, an arrow touching a line to indicate the surface shown by the line looking along the direction of the arrow; or
(3) To show the direction of movement.
No new matter should be entered. The examiner notes that any assumption made for the sake of examination is not an admission that the specification discloses the missing portions. An assumption is merely accepting something as true despite the lacking of the evidence required for certainty.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-8 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.
Regarding claims 1-8, the use of “slot section” is indefinite. A “section” is simply “a distinct part or portion.” While a “slot” can be considered a narrow opening, groove, passage, or enclosure, the term “slot” here is used as an adjective and not a noun. It’s unclear whether “slot section” therefore requires a “slot” as it neither explicitly requires a slot, but also might be alluding to that the “slot” is what makes that portion “distinct.” Therefore, this is ambiguous as to whether or not the claim actually requires a slot. Applicant should either claim a “slot”, as opposed to a “slot section,” or at least claim a “slot section comprising a slot” to avoid ambiguity. For the purpose of examination, the examiner will consider a “slot section” to merely be a section.
Regarding claim 1, the claimed “wherein the outlet aperture faces a corresponding inlet aperture formed in an enclosure of the electrical storage device for receiving cooling air and thereby generating an air pressure above atmospheric pressure in the electrical storage device” is indefinite. The claimed “for receiving cooling air and thereby generating an air pressure above atmospheric pressure in the electrical storage device” is considered functional language directed toward the “outlet aperture” facing the “corresponding inlet aperture.” The phrasing implies that the outlet and inlet generate an air pressure above atmospheric.
Applicant is explicitly claiming the structure of “wherein the outlet aperture faces a corresponding inlet aperture formed in an enclosure of the electrical storage device.” The claimed “for receiving cooling air and thereby generating an air pressure above atmospheric pressure in the electrical storage device” seemingly seeks to further specify these structures and/or that relationship. A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step.
One in the art would not think that an outlet and an inlet, by themselves, were capable of generating an air pressure. Inlets and outlets, rather, just convey air from, for example, a pump. In looking at the specification, Applicant “shows” (see drawing objection above) an outlet aperture 1750, an inlet aperture 1870 in Figure 24, seemingly separated by a distance. Applicant doesn’t show any particular spacing, size or aperture, etc. that would specify these apertures beyond simply being an aperture “wherein the outlet aperture faces a corresponding inlet aperture formed in an enclosure of the electrical storage device.” Therefore, it’s unclear what structure this functional limitation is supposed to invoke regarding the outlet and inlet besides simply conveying the intended use of the structure. In such a case, Applicant is advised to either make clear this is intended use or, since it’s not considered to add anything to the claim, strike the functional limitation from the claim. In other words, “wherein the outlet aperture faces a corresponding inlet aperture formed in an enclosure of the electrical storage device for receiving cooling air and thereby allowing an air pressure above atmospheric pressure in the electrical storage device” or “wherein the outlet aperture faces a corresponding inlet aperture formed in an enclosure of the electrical storage device for receiving cooling air
Regarding claim 1, the claimed “such that a first portion of the flow of cooling air leaks out between the outlet aperture and the inlet aperture to an exterior of the cut-off tool via the first slot section” is indefinite. Applicant is implying that air exits to the exterior of the cut-off tool “between” the outlet aperture and the inlet aperture via a “slot section.” Firstly, the “slot section” is ambiguous about whether this is a slot or a section, or both. If this is other than simply a “section,” Applicant is directed to the drawing objection above requiring the slot to be shown. For the purpose of examination, the examiner will consider this as best understood from Figure 24, wherein “slot section” is merely a section Ss1. So, for the purpose of examination, this will be considered “such that a first portion of the flow of cooling air leaks out between the outlet aperture and the inlet aperture to an exterior of the cut-off tool via the first
In that regard, without any additional structure between the inlet aperture and the outlet aperture, and with no slot or structure being shown between them in the Figures, then this will be considered as air leaking out from between the outlet aperture and the inlet aperture (i.e. leaking from the space between them) to an exterior of the cut-off tool via the in the first section.”
Regarding claim 3, the claim is indefinite. Applicant states that the “electrical storage device” is numeral 220, 1800. Figure 18C appears to show a section 1840 that is meant to convey electrical connectors, seemingly on the exterior of electrical storage device 220/1800. Applicant claims that “an opening in the enclosure (wherein the enclosure is understood to be numeral 150 in Figure 24 ) of the electrical storage device is formed in connection to the electrical connectors [of electrical storage device] such that a second portion of the flow of cooling air leaks out to an exterior of the cut-off tool (which comprises the enclosure) through the opening and via a second slot section formed between the electrical storage device and the wall of the battery compartment.
Applicant does not show “an opening in the enclosure of the electrical storage device formed in connection to the electrical connectors [of the electrical storage device 220/1800].” Figure 24 seems to show the electrical connectors 1840 as part of the enclosure 150, not of the electrical storage device 220/1800. There is no opening in the enclosure 150, let alone an opening connected to the connectors 1840 and, even were there an opening connected to the connectors 1840, these would not be readily apparent as electrical connectors 1840 of the electrical storage device 220/1800 for which the opening is connected.
As this is a functional limitation that is meant to be read in light of the specification, it becomes unclear what the functions of “formed in connection to the electrical connectors [of the electrical storage device] such that a second portion of the flow of cooling air leaks out to an exterior of the cut-off tool through the opening and via a second slot section formed between the electrical storage device and the wall of the battery compartment” requires structurally of the claim aside from “an opening in the enclosure of the electrical storage device.” For the purpose of examination, this will be considered, “wherein an opening is formed in the enclosure of the electrical storage device
Applicant is further advised that there is a drawing objection for this “opening” in the enclosure.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-6, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moores (US-2003/0027037).
Regarding claim 1 (Currently Amended), Moores (US-2003/0027037) discloses the hand-held electrically powered cut-off tool comprising[:]
a fan (see annotated Figure 1 below) arranged to be driven by an electric motor to generate a flow of cooling air (Fig. 1) [;]
a battery compartment (housing 34) comprising an electrical storage device (battery cells 36), [the electrical storage device] arranged to power the electric motor,
a cooling air conduit (area between the fan and the outlet aperture) outlet aperture] (see annotated Fig. 1) formed in a wall of the battery compartment (housing 34) (Fig. 1),
wherein the outlet aperture faces (wherein the center axis of the aperture is considered the direction the aperture faces) a corresponding inlet aperture (see annotated Fig. 1) formed in an enclosure (housing 34) (Applicant does not show a reference numeral for enclosure. However, Applicant states that the “inlet aperture” is formed in the enclosure, which is shown to be the battery compartment 150. In that regard, Moores discloses an enclosure, housing 34, housing the battery compartment where the batteries are stored) of the electrical storage device (battery cells 36) (Fig. 1) for receiving cooling air (Fig. 1) and thereby permitting an air pressure above atmospheric pressure in the electrical storage device (The claimed “thereby permitting…in the electrical storage device” is considered the result of having the outlet aperture facing a corresponding inlet aperture as claimed. The term “thereby” means “as a result of that” and so it is understood that this is a result of the claimed structure. The prior art having that structure means the prior art would, as a result of that structure, be capable of performing as intended by Applicant.);
wherein a first slot section (i.e. section) is formed by a distance between the outlet aperture and the inlet aperture (width) (the space formed between the inlet and outlet aperture, which Moores shows as a passageway) such that a first portion of the flow of cooling air leaks out between the outlet aperture and the inlet aperture (leaks out from between the outlet aperture and the inlet aperture via the inlet aperture and the outlet aperture) to an exterior of the cut-off tool via the first slot section (the air, after having “leaked out” from between the inlet aperture and the outlet aperture, travels through the housing 34 and to the exterior of the cut-off tool) (see interpretation under 35 USC 112(b) above) (Fig. 1).
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Regarding claim 3 (Currently Amended), Moores discloses the hand-held electrically powered cut-off tool according to claim 1, wherein the electrical storage device comprises one or more electrical connectors (electrical elements 29) arranged to mate with corresponding contact strips (electrical elements 28) arranged in the battery compartment (portion of the housing 26 containing battery cells 36 and elements 28, 29) (“cordless device 20 includes electrical elements 28 which couple with the battery pack electrical elements 29”) [Moores; paragraph 0038], wherein an opening in an enclosure (battery compartment 26) of the electrical storage device (battery cells 36) is formed in connection to the electrical connectors (electrical elements 29) such that a second portion of the flow of cooling air leaks out to an exterior of the cut-off tool (at this point, the air has already exited the cut-off tool and is moving throughout “an exterior of the cut-off tool” as claimed) through the opening (shown in Figure 1 below) and via a second slot section formed between the electrical storage device (battery cells 36) and the wall of the battery compartment (portion of the battery compartment 26 containing battery cells 36) (Fig. 1).
Regarding claim 4 (Currently Amended), Moores discloses the hand-held electrically powered cut-off tool according to claim 1, wherein an air outlet is formed in the enclosure of the electrical storage device opposite (i.e. set over against something that is at the other end or side of an intervening line or space) to the inlet aperture (see annotated Figure below) to form a passage for cooling air to flow through the electrical storage device (battery cells 36) (Fig. 1), wherein a third slot section (see annotated Figure below) is formed by a distance between the air outlet and the wall of the battery compartment (battery cells 36) (applicant claims the “battery compartment” is what comprises “an electrical storage device”) such that a third portion of the flow of cooling air leaks out to an exterior of the cut-off tool via the third slot section (see annotated Figure 1 below).
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Regarding claim 5 (Currently Amended), Moores discloses the hand-held electrically powered cut-off tool according to claim 1,
wherein a cooling air conduit is arranged to guide a portion of the flow of cooling air from a first part (the first part comprising the handle of housing 22) and into a second part (the second part comprising the battery pack 26) for cooling the electrical storage device (battery cells 36) (Fig. 1).
Regarding claim 6 (Previously Presented), Moores discloses the hand-held electrically powered cut-off tool according to claim 5, wherein the first part is vibrationally isolated from the second part by one or more resilient elements (see annotated Figure 1 below) (MPEP 608.02 provides drawing symbols for materials which show that the material shown in Figure 1 of Moores acting as “resilient elements” identified below are made of a synthetic resin or plastic and therefore are each considered a material made with resilient material, i.e. resilient elements.). As Applicant identifies the function of being “vibrationally isolated” in the specification as being a result of separating the first part and the second part from each other by resilient elements, then the prior art of Moore is considered to meet the claimed function as Moores possesses resilient elements (i.e. elements made from a resilient material) as identified in Figure 1 below.
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Regarding claim 8 (Previously Presented), Moores discloses the hand-held electrically powered cut-off tool according to claim 5, wherein the portion of the flow of cooling air guided from the first part (handle of housing 22) and into the second part (housing 26) passes via a flexible air flow conduit arranged in-between the first and the second parts (The term “flexible air flow conduit” is interpreted as a conduit made of a flexible material, or a structure intentionally imparted with a flexibility, such as a leaf spring) (MPEP 608.02 provides drawing symbols for materials which show that the material shown in Figure 1 of Moores acting as the air flow conduit is made of a synthetic resin or plastic and, therefore, the air flow conduit of Moores is considered a “flexible” air conduit for being made from a material considered to be “flexible”.).
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.
Claim(s) 2 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moores (US-2003/0027037).
Regarding claim 2 (Previously Presented), Moores discloses the hand-held electrically powered cut-off tool according to claim 1, but fails to disclose wherein the distance between the electrical storage device (battery cells 36) and the wall of the battery compartment (portion of the housing 26 containing battery cells 36) is between 0.5 mm and 2.0 mm.
However, Applicant does not state that there is a particular reason for making the distance as claimed, such as solving a problem or providing an improvement, such as an improvement over the device of Moores. MPEP 2144.04.IV.A states that mere changes in size that do not perform differently than the prior art does not patentably distinct the claimed invention from the prior art. In other words, merely changing the distance between the electrical storage device and the wall of the battery compartment would be an obvious design choice to one of ordinary skill in the art.
Regarding claim 7 (Currently Amended), Moores discloses the hand-held electrically powered cut-off tool according to claim 5, wherein the portion of the flow of cooling air from the first part (the first part comprising the handle of housing 22) and into the second part (the second part comprising the battery pack 26) is arranged to pass a control unit (see annotated Figure below) of the hand-held work tool (“The cordless device 20 includes electrical elements 28 which couple with the battery pack electrical elements 29.”) [Moores; paragraph 0038]. While Moores does not specifically describe what is shown as the “control unit,” a “control unit” would require an electrical charge, as would the motor. Moores describes electrical elements 28 as coupling with the battery pack elements 29 to seemingly power the motor that drives the fan, as shown by the apparent electrical connections in Figure 1. Moores does not show a “control unit” for controlling the device of Figure 1, but states that “[f]urther, an electronic package 154 is within the housing 142 to control charging of the battery as well as operation of the fan 144.” It is therefore obvious that this would be a control element, since it is the only structure shown to be both connected to the battery and the fan. Therefore, it’s obvious to one of ordinary skill in the art that this is a control unit for controlling charging of the battery.
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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 shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL DILLON CRANDALL whose telephone number is (571)270-5947. The examiner can normally be reached Mon - Fri 8:30 - 5:30.
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/JOEL D CRANDALL/Examiner, Art Unit 3723