DETAILED ACTION
Response to Amendment
The amendment of December 3, 2025 is considered herein.
Claim 16 has been amended.
Claims 1-15 and 25-30 have been cancelled.
Claims 31-39 have been added.
Claims 16-24 and 31-39 are pending and have been considered on the merits herein.
Claim Rejections - 35 USC § 102
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) 16-24 and 32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JAEKEL et al (DE 102009040128, wherein citations are made to the English translation provided herein).
Regarding claim 16, JAEKEL et al teaches a rechargeable battery pack (lithium ion batteries (paragraph [0022] and the pack shown in figure 1) for an electric handheld power tool (A recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115. Herein, JAEKEL et al teaches the use of the battery packs in portable devices and power tools (which would include a handheld power tool) in paragraph [0002], but also fulfilling the claim as written by being capable of use in a handheld power tool.), the rechargeable battery pack comprising:
a housing shell (2/3/10, figure 1, also can include components 14/16 to housing the battery cells); and
a core pack (“battery pack”, 1, comprising components 4/5/6/7) accommodated in the housing shell (figure 1);
the housing shell (3/10) being potted with a potting compound (18, figure 8 – steps 820 and 840, “first potting compound” and “second potting compound” respectively) serving to dissipate heat from the core pack (exposure of the core pack through areas like 62/66 of figure 5 show the pottant is applied such that the potting compound leaves areas exposed, such as in paragraphs [0052] and [0059], allowing for heat dissipation), the potting compound being introduced in the housing shell at least in a first layer (step 820) and a second layer (step 840) in contact with the first layer (see figure 8 and layer 18 (wherein both layers of figure 8 are taught to be 18) in figure 5 for example).
Regarding claim 17, the limitation “the second layer is applied to the first layer while the first layer is in a partially cured state” is interpreted to read on a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product (herein JAEKEL et al teaches the use of two layers of potting material 18, applied in two separate layers stacked in space, as discussed in figure 8.). The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Regarding claim 18, JAEKEL et al teaches at least one form-fitting seal holder (4/8, “mat” for holding the batteries on each end, “form-fitting”, as shown in figure 4 to have the shape or form of the cylindrical batteries to hold them therein [paragraph 0009] at each end and “seal holder” as they are holding the sealing or potting material in paragraph [0009]) provided between the housing shell (2/3/10) and the core pack (5/6/7) in order to hold the core pack fixed in position with respect to the housing shell in at least one direction and to seal off the core pack (see figure 1, wherein sealing is provided at each end of the core pack to fix it within the housing 2/3/10/14/16).
Regarding claim 19, JAEKEL et al teaches the potting compound (18) is introduced into the housing shell in the first and second layers in such a way that the seal holder (4/8) is pressed at least in sections into the first layer of the potting compound (paragraph [0009] teaches the mat within the pottant compound) (The term “pressing” is not interpreted to impart structural differentiation and is therefore interpreted as a product-by-process limitation, wherein it is only interpreted to be define the structure (taught by JAEKEL et al), not the method by achieving the structure.).
Regarding claim 20, JAEKEL et al teaches the potting compound (18) is introduced into the housing shell (2/3/10/14/16) in the first and second layers (18) in such a way that the seal holder (8) is located only outside the first layer of the potting compound (18) (as shown in figure 1).
Regarding claim 21, JAEKEL et al teaches the seal holder (4/8) is designed in the form of a tongue-and-groove joint (figure 1 shows and paragraph [0047] teaches the holder (4/8) to have indentation (30, interpreted as tongues) to engage with sleeves (14/16, interpreted as grooves)).
Regarding claim 22, JAEKEL et al teaches the first layer (18) of the potting compound completely covers a base (3) of the housing shell (2/3/10/14/16) (paragraph [0062]).
Regarding claim 23, JAEKEL et al teaches a non-potted residual volume (volume around struts 11 comprising no potting compound) remains within the housing shell (2/3/10/14/16) and above the second layer of the potting compound (18) (see figure 1, as described in figure 8).
Regarding claim 24, JAEKEL et al teaches the core pack (5/6/7) has a cell holder (5, “holder”) with a plurality of cylindrical rechargeable battery cells (6).
Regarding claim 32, JAEKEL et al teaches the device of claim 16 to be of use in a power tool (paragraph [0002]).
Claim(s) 38 and 39 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JAEKEL et al.
Regarding claim 38, JAEKEL et al teaches wherein a tongue (4, wherein horizontal extensions read on the tongue) of the tongue-and-groove joint is formed on the core pack (3/4) and a groove of the tongue-and-groove joint is formed on the housing shell (2/16, wherein the protrusions 16 form the engagement for the horizontal extensions). Moreover, in the alternative, the implementation of switching which engaged portions form the tongue or groove is well within the ambit of one of ordinary skill. If the housing shell component (16) were interpreted as the tongue to engage with the groove (30) of the mat (4) of the core pack, it would also be within the ambit of one of ordinary skill in the art to invert the combination or select from a finite group of tongue and groove arrangements as there are only a finite number of ways to fabricate a tongue and groove engagement (taught to be present in JAEKEL et al) between two components (core back and housing, shown in JAEKEL et al) (combination 1 core pack – tongue, housing – groove and combination 2 core pack – groove, housing – tongue).
Regarding claim 39, JAEKEL et al teaches wherein the core pack (3) has a cell holder (4), a tongue of the tongue-and-groove joint being formed on the cell holder (4, wherein horizontal extensions read on the tongue) and a groove of the tongue-and-groove joint being formed on the housing shell (2/16, wherein the protrusions 16 form the engagement for the horizontal extensions). Moreover, in the alternative, the implementation of switching which engaged portions form the tongue or groove is well within the ambit of one of ordinary skill. If the housing shell component (16) were interpreted as the tongue to engage with the groove (30) of the mat (4) of the core pack, it would also be within the ambit of one of ordinary skill in the art to invert the combination or select from a finite group of tongue and groove arrangements as there are only a finite number of ways to fabricate a tongue and groove engagement (taught to be present in JAEKEL et al) between two components (core back and housing, shown in JAEKEL et al) (combination 1 core pack – tongue, housing – groove and combination 2 core pack – groove, housing – tongue).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over JAEKEL et al, in view of STANGER et al (WO2019/120815A1, wherein US PG PUB 2020/0335740A1 is cited as the English equivalent herein).
Regarding claim 31, JAEKEL et al discusses covering at least portions of the length of the battery with potting material (see paragraph [0008]) which can be interpreted to include full coverage of the housing but fails to expressly disclose the housing shell to be completely potted by the first layer and the second layer so that no non-potted residual volume remains above the second layer.
STANGER et al teaches a battery pack for a handheld tool including a pottant material (see figures 1 and 2 and the abstract). STANGER et al further detailed the use of a thermally conductive potting material to completely surround the batteries (see figure 2) to allow for complete and uniform heat dissipation (paragraph [0026]).
At the time of filing, it would have been obvious to utilize the pottant material of JAEKEL et al to extend the entirety of the housing, as shown in STANGER et al so as to allow for uniform dissipation of heat. Moreover, if the entirety of the housing is covered with pottant (fabricated using a two layer system as in JAEKEL et al), there is no residual room not occupied by pottant material, fulfilling the claim.
Claim(s) 33 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over JAEKEL et al, in view of PHILLIPS et al (US PG PUB 2008/0220324).
Regarding claim 33, JAEKEL et al teaches the device of claim 16 to be of use in a power tool(paragraph [0002]), but fails to disclose including a battery-powered screwdriver.
PHILLIPS et al teaches the use of a cordless rechargeable battery pack for a power tool, as in JAEKEL et al, in the abstract and figure 2. PHILLIPS et al teaches the use of the battery pack in a drill (interpreted to include screwdriving capabilities or driving a fastener) in paragraph [0035] to allow for cordless operation from the battery power source.
At the time of invention, it would have been obvious to one of ordinary skill in the art to utilize the power tool battery pack of JAEKEL et al within a power drill, as in PHILLIPS et al, so as to provide the rechargeable and cordless functionality of the battery pack to a different device.
Claim(s) 34 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over JAEKEL et al, in view of ELFERING et al (US PG PUB 2018/0366697).
Regarding claim 34, JAEKEL et al teaches the core pack to include a cell holder (4) holding a row of cylindrical rechargeable batteries (6) but JAEKEL et al is silent to the presence of a CID valve.
ELFERING et al teaches the use of a cylindrical battery pack wherein batteries are present and sealed within a housing (see abstract and paragraphs [0053] and [0157]), just as in JAEKEL et al. Paragraphs [0157] and [0171] teach the use of a CID venting (interpreted to read on a valve) on the end of the battery (see figure 32) to allow for venting of excess pressure.
At the time of filing, it would have been obvious to use the CID valve component at the end of the battery of ELFERING et al in the battery of JAEKEL et al so to allow for venting of excess pressure.
Regarding claim 35, placement of the CID in the end of the battery component (6) of JAEKEL et al adjacent the electrode (65) shown in figure 5 (similar to the placement near the electrode of figure 32 of ELFERING et al) would allow for the CID to be below the top edge of the first layer (bottom of figure 5 component 18) when viewed in the inverse. The location of top and bottom are relative locations which are subject to orientation changes and not absolute, rendering the claimed relative locations taught by the combination of JAEKEL et al and ELFERING et al.
Allowable Subject Matter
Claims 36 and 37 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 36, the closest available prior art is that of JAEKEL et al, which fails to teach comprising exactly four form-fitting sealing holders provided between the housing shell and the core pack in order to hold the core pack fixed in position with respect to the housing shell in at least one direction and to seal off the core pack. Claim 37 is at least allowable based on its dependency to claim 36.
Response to Arguments
Applicant's arguments filed December 3, 2025 have been fully considered but they are not persuasive.
The Examiner agrees the previous interpretation of JAEKEL et al fails to read on the amended claims but the interpretation of JAEKEL et al presented above, utilizing figure 8, does read on the claims as amended.
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.
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/KOURTNEY R S CARLSON/ Primary Examiner, Art Unit 1721 3/21/2026