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 .
Election/Restrictions
Newly submitted claims 21-28 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
That the originally elected claims clearly directed to a Tool assembly (see claim 1-12 preamble) and the Newly added claims 21-28 directed to “a vehicle assembly” (see claims 21-28). In this case, the newly added claims do not overlap in scope with that as originally elected “a service tool assembly” directed to equipment and /or components while the newly added “vehicle assembly” directed to is the process of joining vehicle parts which has separate field of search mode of operations functions or effects. Since a single search for a number of distinction (2) inventions would not be made by a single search. if the number of (2) inventions were searched concurrently the search would be burdensome because examination and search burden for these patentably distinct (2) inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-28 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 1-12 are objected to because of the reason provided from the previous Action dated 9/30/25.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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. This rejection is set forth from the previous Action under 112 rejections dated 9/30/25.
Claim(s) 1-12 as best understood is/are rejected under 35 U.S.C. 102a1 as being anticipated by Rawlinson et al this rejection is set forth from the previous Action dated 9/30/25 (see under 102 rejections).
Claim(s) 3 as best understood is/are rejected under 35 U.S.C. 103a as being unpatentable over Rawlinson et al. This rejection is set forth from the record dated 9/30/25.
Response to Arguments
Applicant's arguments filed on 12/26/25 have been fully considered but they are not persuasive. Because as best understood the prior art discloses the invention service tool of the present invention for reason provided from record.
The 112 rejections:
Applicant(s) contends that “The Examiner objects to and rejects the claims under § 112(b) because the preamble of independent claim 1 recites "A service tool assembly comprising:" and the body of the claim recites "a service tool." The Examiner contends that "it is unclear as to whether or not 'a service tool' (claim 1, line 2) as same as that in the preamble line 1," and further that the recitation of other structures is unclear because allegedly "the claims directed to the tool not the associated elements" (Non-Final at p. 3)”(see Applicant(s) under “Remarks”, page 1, ¶¶ [002-003]. This has been carefully evaluated and found to be persuasive, thus the previous claimed “a service tool” (claim 1, line 2) is a part of the claimed “the service tool assembly” and the 112 applied to claim 1, line 2 has been removed.
Further, regarding to “Applicant's Specification broadly labels the assembly illustrated in Figures 3A and 3B as "a service tool assembly 58," and explains that "service tool assembly 58 includes service tools 60 inserted through access holes 62 in a floor 63 of the electrified vehicle 20 and received in the threaded holes 56 of the battery pack 22." Applicant's Specification at paras. [0041 and 0043].” (see Applicant(s) under “Remarks” page 1, ¶¶ [9003-004]. This has been fully evaluated and not found to be persuasive because the scope of the claim directed to “the service tool assembly which means that it is a combination of multiple components such as a service tool 60 includes 64, 68, D1 or other related components, and the recites the service tool “to perform multi operations, e.g., extending through an access hole and the service tool “adapted to engage a threaded hole of a battery pack” is/are not a component of the tool and have not considered on the merits. Since perform the operations is not positive structure component of the claimed “service tool assembly”. Also, Applicant(s) should be aware that the features upon which applicant relies (i.e., ) is/are not components or parts of the makeup service tool assembly and the some of the rejection under 112 is remained for reason of record.
In response to applicant's argument that the references fail to show certain features of the service tool includes (see “Applicant's Specification at paras. [0041 and 0043] and Applicant's Specification at [0043]; Figs. 3A and 3B (see under “Remarks” page 1, end of ¶¶ [003-004]), it is noted that the features upon which applicant relies as noted above are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The prior art:
Applicant(s) contend that “claim 1 requires "the service tool is rotatable to translate the battery pack relative to the electrified vehicle." The Office Action appears to suggest that this limitation is taught by bolt 1402 of Rawlinson, but that is incorrect (see Non-Final at p. 4). “(see Applicant(s) “Remarks” page 2, about ¶¶ [002-003]. The Examiner disagrees because of the reason set forth under 112 and further, the claim clearly directed to “a service tool assembly “rather than the operations of the tool with outside environment (vehicle environment). Therefore, only structure elements or components of the tool is/are considered and it appears that the applied prior art discloses every aspect structure limitation as set forth in the pending rejected claims 1-12 (see rejection set forth under 102 and 103 provided in the previous Action dated 9/30/25).
Applicant's arguments do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Conclusion
THIS ACTION IS MADE FINAL. 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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/MINH N TRINH/ Primary Examiner, Art Unit 3729 mt