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 .
Request for Continued Examination
A request for continued examination under 37 C.F.R. § 1.114, including the fee set forth in 37 C.F.R. § 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 C.F.R. § 1.114, and the fee set forth in 37 C.F.R. § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 C.F.R. § 1.114. Applicant’s submission filed on 07/03/2025 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. § 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. § 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“at least one positive connecting element which is configured to cooperate with the collar-like and free-standing outer region of the protective hood so as to at least contribute to a connection between the at least one attachment hood and the protective hood” (claim 1).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If Applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, Applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
Claim Rejections – 35 U.S.C. § 112
The following is a quotation 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 1 and 12-17 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. § 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 fails to comply with the written description requirement because the limitation “wherein the lever element is configured as an eccentric lever that rotates in a direction toward the tensioning hook element to tension the hook element against the first circumferential end” is not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor at the time the application was filed, had possession of the claimed invention. The specification does not describe the actual operation of the eccentric lever other than what is shown in Fig. 1-3. That is, there is no disclosure of how lever 72a (Figs. 1-3; see Spec. p. 6, line 26–p. 7, line 18; Spec. p. 17, line 27–p. 18, line 11) operates to accomplish the recited tensioning function for tensioning hook 74a. For example, it is unknown whether lever 72a rotates clockwise about a pivot to cause tension to hook 74a, rotates away counterclockwise about a pivot to cause tension to hook 74a, or merely slides along the circumferential surface of the attachment hood to cause tension to hook 74a. It would appear that each of these movements could be possible; but the issue is that none of these are described in the specification. See Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) (“Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement.”); MPEP § 2163.03(V). Claims 12-17 are rejected on the basis they incorporate this limitation of claim 1.
Claim Rejections – 35 U.S.C. § 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.
Claims 1 and 12-17 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by US 20210260722 A1 (“Otani”).
Regarding claim 1, Otani discloses a hand-held power tool device for a hand-held power tool (Figs. 10-11, 12A-C, 13A-D; see Fig. 1; ¶ 0123, device 8B for powered angle grinder 1), comprising:
a protective hood defining a circumferential direction and including a collar-like and free-standing outer region that runs in the circumferential direction (Figs. 10-11, 12A-C, 13A-D, protective hood 10 has a circumferential direction and has a collar-like and free-standing outer region 11);
the collar-like and free-standing outer region having a side edge forming a first circumferential end of the protective hood and a second circumferential end of the protective hood (Figs. 10-11, 12A-C, 13A-D, side edge including first circumferential end (near reference 13 in Fig. 12C) and second circumferential end (near reference 38B in Fig. 12C));
and at least one attachment hood configured to connect to the protective hood for at least partially covering a working tool of the hand-held power tool (Figs. 10-11, 12A-C, 13A-D, attachment hood 30B connects to protective hood 10 to partially cover the working tool 6 of power tool 1 (see Fig. 1)),
wherein the at least one attachment hood has at least one positive connecting element which is configured to cooperate with the collar-like and free-standing outer region of the protective hood so as to at least contribute to a connection between the at least one attachment hood and the protective hood (Figs. 10-11, 12A-C, 13A-D, positive connecting element 38B; this limitation is interpreted under § 112(f), which includes a projection, and equivalents thereof (Spec. p. 17, lines 15-20; Fig. 2, element 18a)),
wherein the at least one attachment hood has at least one fixing unit configured to fix an angular position of the at least one attachment hood relative to the protective hood; wherein the at least one fixing unit has at least one fixing element which is configured as a clamping lever (Figs. 10-11, 12A-C, 13A-D, fixing unit 40B with fixing element 42B/44B/46B/48B (“clamping lever”) fixes the angular position of the attachment hood 30B relative to the protective hood 10; Examiner notes that the recited structure of “a clamping lever” takes the limitation “at least one fixing element” out of a § 112(f) interpretation);
wherein the clamping lever includes a tensioning hook element and a lever element (Figs. 10-11, 12A-C, 13A-D, clamping lever includes tensioning hook 44B and lever 42B/46B/48B),
wherein the clamping lever is configured such that, to fix the angular position of the at least one attachment hood relative to the protective hood, the lever element tensions the tensioning hook element against the first circumferential end of the protective hood (Figs. 10-11, 12A-C, 13A-D, lever 42B/46B/48B tensions the tensioning hook 44B against the first circumferential end (near reference 13 in Fig. 12C)),
and wherein the lever element is configured as an eccentric lever that rotates in a direction toward the tensioning hook element to tension the hook element against the first circumferential end (Figs. 12B-C, lever 42B/46B/48B rotates towards the hook 44b (towards the right side of the page as shown) to cause the tension).
Regarding claim 12, Otani discloses the hand-held power tool device of claim 1 as applied above and further discloses a hand-held power tool comprising the hand-held power tool device as claimed in claim 1 (Figs. 10-11, 12A-C, 13A-D; see Fig. 1; ¶ 0123, powered angle grinder 1 with device 8B).
Regarding claim 13, Otani discloses the hand-held power tool device of claim 1 as applied above and further discloses an accessory for a hand-held power tool comprising the hand-held power tool device as claimed in claim 1 (Figs. 10-11, 12A-C, 13A-D; see Fig. 1; ¶ 0123, powered angle grinder 1 with device 8B).
Regarding claim 14, Otani discloses the hand-held power tool device of claim 1 as applied above and further discloses wherein the hand-held power tool is an angle grinder (Figs. 10-11, 12A-C, 13A-D; see Fig. 1; ¶ 0123, powered angle grinder 1 with device 8B).
Regarding claim 15, Otani discloses the hand-held power tool device of claim 1 as applied above and further discloses wherein the at least one positive connecting element is arranged at an opposite circumferential end of the at least one attachment hood from the clamping lever (Figs. 10-11, 12A-C, 13A-D, positive connecting element 38B is arranged at an opposite circumferential end from the clamping lever 42B/44B/46B/48B).
Regarding claim 16, Otani discloses the hand-held power tool device of claim 15 as applied above and further discloses wherein the at least one positive connecting element includes a projection extending radially inwardly from the at least one attachment hood that is configured to engage the second circumferential end of the side edge of the protective hood (Figs. 10-11, 12A-C, 13A-D, positive connecting element 38B includes a projection that extends radially inwardly from the outer surface 31B of the attachment hood 30B and engages the second circumferential end of the protective hood (near reference 38B); Examiner notes that the recited structure of “a projection” takes the limitation “at least one positive connecting element...” out of a § 112(f) interpretation);
Regarding claim 17, Otani discloses the hand-held power tool device of claim 16 as applied above and further discloses wherein the at least one attachment hood further comprises a holding lip configured to cooperate with a main protective surface of the protective hood (Figs. 10-11, 12A-C, 13A-D; ¶¶ 0141-0144, holding lip 34B contacts the outer surface 11 of protective hood 10).
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 2 and 4-7 have been canceled. Claims 1, 3, and 8-17 are pending. Claims 3 and 8-11 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention. Claims 1 and 12-17 are rejected.
Drawings – The objections to the drawings are withdrawn in view of Applicant’s amendments.
Specification – The objection to the specification is withdrawn in view of Applicant’s amendments.
Claims – The objections to the claims are withdrawn in view of Applicant’s amendments. In light of Applicant’s claim amendments, the § 112(a) rejection is hereby withdrawn. However, see new § 112(a) rejection due to the amendments.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive. Regarding Applicant’s arguments for claim 1 (Reply at 10-11), Otani anticipates claim 1 including the amended portion as set forth in the rejection of claim 1 above.
Applicant does not present any further arguments concerning the remaining claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723