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 Amendment
This Office Action is in response to the Amendment filed on the date: 2/9/2026.
Claims 5-23 are currently pending.
Claims 1-4 were previously cancelled.
Claims 12-23 are new.
Response to Arguments
Claim Objections
Applicants have amended claim 5 and the objection is withdrawn.
Rejections under 35 U.S.C. §102
Applicants argue that “The Office Action submits at page 3 that a second performance parameter is "Motor does not operate" of Fig. 7 of Yang. A motor “not operating” as asserted by the Office Action is not a second performance parameter because there is no performance.” The applicants’ arguments concentrate on the term “performance” (see REMARKS page 2) while claimed limitation rejected as “performance parameter value”. The examiner respectfully disagrees because arguably “performance parameter” can be zero or when a motor does not rotate. In addition, claim 5 specifically recites “performance parameter value” as described in its own specification as “that the performance parameter of the power tool is a speed value of the drive or a torque value of the drive” (see [0014]). One of ordinary skill in the art would totally agree that a rotational speed value (or a torque value) of a motor can be zero, so that “Motor does not rotate” (see fig. 7) reads correctly on claimed limitation “a second performance parameter value”.
Based on the explanations of the above, the rejections of claims 5, and 7 to 9 under 35 U.S.C. 102 stand.
Rejections under 35 U.S.C. 103
In view of the above explanations with respect to independent claim 5, the rejections under 35 U.S.C. 103 of dependent claims 6 and 11 stand.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20-23 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 new claim 20 contains subject matter “wherein the power tool switches from operating at the first performance parameter value of the power tool to operating at the second performance parameter value of the power tool solely when both the recorded temperature value corresponds to the predetermined temperature threshold value and the recorded voltage value corresponds to the predetermined voltage threshold value”; the new claim 21 contains subject matter “wherein the second performance parameter value corresponds to the power tool operating at a torque lower than at the first performance parameter value”; the new claim 22 contains subject matter “wherein the predetermined temperature threshold value is lower than the critical temperature threshold value”; the new claim 23 contains subject matter “wherein the predetermined voltage threshold value is higher than the discharged state voltage threshold value”, which were 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.
Regarding claim 20, the specification merely discloses “setting a first performance parameter value of the power tool to a second performance parameter value of the power tool for setting a current intensity value if the recorded temperature value corresponds to a predetermined temperature threshold value and the recorded voltage value corresponds to a predetermined voltage threshold value” (see Abstract) or “setting the current intensity value by setting at least one performance parameter value of the power tool when the rechargeable battery exceeds a predetermined charge value” (see [0013]). Nowhere in the specification discloses clearly the newly added limitations “wherein the power tool switches from operating at the first performance parameter value of the power tool to operating at the second performance parameter value of the power tool solely when both the recorded temperature value corresponds to the predetermined temperature threshold value and the recorded voltage value corresponds to the predetermined voltage threshold value” which is considered as a new matter.
Regarding claim 21, the specification merely discloses “it may be possible that the performance parameter of the power tool is a speed value of the drive or a torque value of the drive” (see [0014]) or “The drive 8, the transmission 10, the input shaft 11 and the output shaft 12 are positioned in relation to one another and in the housing 10 such that a torque generated by the drive 8 is transmitted to the output shaft 12. The output shaft 12 transmits the torque to the transmission 10, which in turn passes on a torque to the input shaft 11. The tool fitting 7 is driven by way of the input shaft 11 by the transmission of the torque” (see [0024]). Nowhere in the specification discloses clearly the newly added limitations “wherein the second performance parameter value corresponds to the power tool operating at a torque lower than at the first performance parameter value” which is considered as a new matter.
Regarding claim 22, the specification merely discloses “For safety reasons, the delivery of the electrical energy from the rechargeable battery is ended when the rechargeable battery cells reach or exceed a critical temperature threshold value” (see [0003]), or “In order to prevent the delivery of electrical energy from the rechargeable battery to the power tool being ended due to a critical temperature threshold value of the rechargeable battery cells 23 being reached too early, the power of the power tool is reduced accordingly” (see [0040]). Nowhere in the specification discloses clearly the newly added limitations “wherein the predetermined temperature threshold value is lower than the critical temperature threshold value” which is considered as a new matter.
Regarding claim 23, the specification merely discloses “In a charged state, the voltage of a rechargeable battery cell is 4.2 volts and in a discharged state it is 2.5 volts” (see [0038]), or “setting a first performance parameter value of the power tool to a second performance parameter value of the power tool for setting a current intensity value if the recorded temperature value corresponds to a predetermined temperature threshold value and the recorded voltage value corresponds to a predetermined voltage threshold value” (see [0006]). Nowhere in the specification discloses clearly the newly added limitations “wherein the predetermined voltage threshold value is higher than the discharged state voltage threshold value” which is considered as a new matter.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 5, 7-9, 18-19, and 21 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Pub. No.: US 2011/0304287 (hereinafter as Yang).
Regarding claim 5, Yang discloses a method for the open-loop and closed-loop control of a power tool (fig. 1 and [0020]) with at least one rechargeable battery (fig. 1, 15), a drive (fig. 5, 11) and at least one control device (fig. 5, 4), the rechargeable battery serving as an energy supply for the power tool (fig. 1 and [0020]), the method comprising the steps of:
- recording at least one temperature value of the rechargeable battery (“Battery Temperature is below C?” see fig. 7) by a temperature measuring device (fig. 5, 3 and “The battery detection circuit 3 comprises the detection of the voltage, current and battery temperature of the battery 12” see [0030]);
- recording at least one first voltage value of the rechargeable battery (“Battery Voltage is above A1?” see fig. 7) by a voltage measuring device (fig. 5, 3 and “The battery detection circuit 3 comprises the detection of the voltage, current and battery temperature of the battery 12” see [0030]); and
- setting a first performance parameter value of the power tool (“Motor operates” fig. 7) to a second performance parameter value (“Motor does not rotate” fig. 7) of the power tool for setting a current intensity value (“Discharge current” [0041]) if the recorded temperature value corresponds to a predetermined temperature threshold value (“C” fig. 7) and the recorded voltage value corresponds to a predetermined voltage threshold value (“A1” fig. 7).
Regarding claim 7, Yang discloses the method as recited in claim 5 wherein the first and second performance parameter values are speed values of the drive (“Motor operates” and “Motor does not rotate” fig. 7) or torque values of the drive.
Regarding claim 8, Yang discloses a system comprising a power tool and at least one rechargeable battery (fig. 1 and [0020]) for supplying the power tool with electrical energy for carrying out the method as recited in claim 5.
Regarding claim 9, Yang discloses the method as recited in claim 5 wherein if the at least one temperature value rises above a critical temperature threshold value higher (“Battery Temperature is below C?” see fig. 7) and the at least one first voltage value falls below a discharged state voltage threshold value (“Battery Voltage is above A1?” see fig. 7), the at least one control device stops delivery of electrical energy to the power tool (“Motor does not rotate” fig. 7).
Regarding claim 18, Yang discloses the method as recited in claim 5, wherein the at least one rechargeable battery has a plurality of energy storage cells (“battery pack” see [0025]), a temperature measuring device (fig. 6, 31 and [0031]), a voltage measuring device (fig. 6, 29 and [0031]), and a memory device (“CPU... MCU… ARM” see [0030]), the temperature measuring device and the voltage measuring device being separate devices (fig. 6).
Regarding claim 19, Yang discloses the method as recited in claim 5, wherein the second performance parameter value (“Motor does not rotate” and fig. 7) corresponds to the power tool operating at a speed (Arguably the speed gradually reduces from max to zero) lower than at the first performance parameter value (“Motor operates” and fig. 7).
Regarding claim 21, Yang discloses the method as recited in claim 5 wherein the second performance parameter value (“Motor does not rotate” and fig. 7) corresponds to the power tool operating at a torque (Reasonably understood as rotational speed of the motor as torque is the force producing a rotational motion while rotational speed is the rate of rotation due to that force) lower than at the first performance parameter value (“Motor operates” and fig. 7).
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) 6 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang in view of Pub. No.: US 2018/0048249 (hereinafter as Ikeda, and previously cited).
Regarding claim 6, Yang discloses the method as recited in claim 5 further comprising:
- storing the set current intensity value in a memory device (“a predefined value B” must be stored in a memory, in order for CPU to compare it with “the discharge current of the battery” to determine “is above or equal” (see [0041] and fig. 7);
- sending the current intensity value from the memory device to the control device of the power tool (the CPU must receive “a predefined value B” from a memory, in order for CPU to compare it with “the discharge current of the battery” to determine “is above or equal” (see [0041] and fig. 7); and
- setting the current intensity value by setting at least one performance parameter value (“Discharge current is below B?” fig. 7) of the power tool when the rechargeable battery exceeds a predetermined charge value (“calculates capacity” fig. 7 and [0042]). Yang is silent the memory device being a memory of the rechargeable battery.
However, Ikeda suggests a memory device (fig. 1, 33) of the rechargeable battery (fig. 1, 12). Before the effective filing date of the invention, it would be obvious to a person of ordinary skill in the art to use Yang with Ikeda’s suggestion for the purpose of storing all data (e.g. temperature, electrical parameters) of the battery in its own memory, that would the rechargeable battery independently in terms of checking/testing/measuring.
Regarding claim 11, Yang and Ikeda disclose the method as recited in claim 6. Yang further discloses wherein a power output of the drive is selected at the beginning of use of the rechargeable battery when fully charged (“full capacity” see [0049]) so that a slowest possible temperature rise is achieved ([0040]), the selection of the power output being a function of the recorded at least one temperature value ([0039]-[0040]) and the least one first voltage value ([0037]-[0038]).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang in view of Pub. No.: US 2017/0149256 (hereinafter as Srinivasan, and previously cited).
Regarding claim 10, Yang discloses the method of claim 9, but silent wherein the critical temperature threshold value is 70° C. However, Srinivasan suggests that the critical temperature threshold value is 70° C. Before the effective filing date of the invention, it would be obvious to a person of ordinary skill in the art to use Yang with Srinivasan’s suggestion for the purpose of improving the safety and the life of the battery.
Claim(s) 12-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang in view of Pub. No.: US 2017/0355072 (hereinafter as Mao).
Regarding claim 12, Yang discloses the method as recited in claim 5, but silent wherein the power tool is a battery-operated screwdriver. However, Mao suggests wherein the power tool is a battery-operated screwdriver (fig. 1 and [0019]). Before the effective filing date of the invention, it would be obvious to a person of ordinary skill in the art to use Yang with Mao’s suggestion for the purpose of enhancing the use of the power tool.
Regarding claim 13, Yang discloses the method as recited in claim 5, and further shows wherein the power tool has a housing, a handle, a base part, a tool fitting, and an activation switch (fig. 1 gives all the details), but does not show wherein the power tool has a transmission, an input shaft, an output shaft. However, Mao shows also wherein the power tool has a housing (fig. 1, 11 and [0021]), a handle (fig. 1, 112 and [0021]), a base part (fig. 1, base and [0021]), a tool fitting (fig. 1, 18 and [0020]), and an activation switch (fig. 4, 13 and [0021]); and further shows a transmission (fig. 4, 20 and [0023]), an input shaft (fig. 4, 15 and [0023]), an output shaft (fig. 4, 121 and [0024]), and an activation switch (fig. 4, 13 and [0021]). Before the effective filing date of the invention, it would be obvious to a person of ordinary skill in the art to use Yang with Mao’s showing for the purpose of providing the structure details of the power tool.
Regarding claim 14, Yang and Mao disclose the method as recited in claim 13, Mao further discloses wherein the drive, the transmission, the input shaft, and the output shaft are positioned in relation to one another (figs 1-4) such that a torque generated by the drive transmits to the output shaft, the output shaft transmitting the torque to the transmission, the transmission transmitting the torque to the input shaft ([0020]).
Regarding claim 15, Yang and Mao disclose the method as recited in claim 13, Yang further discloses wherein the housing has an upper side and an underside, the handle having a first end and a second end, the first end of the handle being fixed to the underside of the housing, the base part having an upper end and a lower end, the upper end of the base part being fixed to the second end of the handle (fig. 1).
Regarding claim 16, Yang and Mao disclose the method as recited in claim 15, Yang further discloses wherein the lower end of the base part has a mechanical, electrical, and electronic interface, the mechanical, electrical, and electronic interface being connectable to the at least one rechargeable battery (fig. 4 and [0026]).
Regarding claim 17, Yang and Mao disclose the method as recited in claim 13, Yang further discloses wherein the at least one control device controls the current intensity value, the at least one control device being positioned in the base part (fig. 5, and “The power tool control circuit is the circuit which is positioned in the battery pack” see [0029]), the at least one control device having a microcontroller ([0030]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20190070720 teaches “a current, a current limitation, a voltage, a voltage limitation, a rotational speed, a rotational speed limitation, a torque, a torque limitation, a power, a power limitation, a number of impacts, a limitation of a number of impacts, and/or a function of a component integrated into the hand-held power tool” (see [0012].)
US 20140379136 discloses “The hand power tool parameters of the hand power tool 10 include, for example, tilt information, a voltage of the battery unit 26, a characteristic of a torque and a rotational speed during the work operation, a temperature of the drive unit 20 and of the battery unit 26” (see [0030].)
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 HUY Q PHAN whose telephone number is (571)272-7924. The examiner can normally be reached M-F 9am-5pm.
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, Patricia Bianco can be reached at (571)272-4940. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUY Q PHAN/Supervisory Patent Examiner, Art Unit 2858
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