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 .
DETAILED ACTION
Response to Amendment
The Amendment filed 10 July 2026 has been entered. Claims 1-5 and 7-15 are pending. Applicant's amendments have overcome each and every objection and rejection under 35 USC 112 previously set forth in the Non-Final Office Action mailed 11 May 2026.
A substitute specification excluding the claims is required pursuant to 37 CFR 1.125(a) due to the numerous prior specification amendments and the lack of antecedent basis for claim terminology. Presently, the examiner is required to review seven different specification documents to determine whether there is an antecedent basis for claim terminology, which is unnecessarily time consuming. The examiner is particularly burdened in the present application in view of the present Office Action and the two preceding Office Actions each including specification objections due to a lack of antecedent basis for claim terminology. The Applicant is required to submit one substitute specification incorporating all prior specification amendments so that the examiner need only review a single version of the specification to determine whether there is an antecedent basis for claim terminology.
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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. The distances between all side surfaces of the battery held in the holding space and all inner surfaces of the main body are not illustrated in the present drawings as being greater than some ‘predetermined distance’. For example, the left and right side surfaces of the battery appear to contact inner surfaces of the main body in Fig. 2. Therefore, the features of claim 10 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Specification
Initially, as discussed in the Response to Amendment section above, a substitute specification incorporating all prior specification amendments is required so that the examiner does not have to review seven or more specification documents to ensure that there is an antecedent basis for claim terminology.
Next, the specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). The specification fails to include any antecedent basis for “a tip” of the electric working assembly and “an inner surface” of the main body, both as recited in claim 1. Moreover, it is also unclear whether there is a specification antecedent basis for each of the first, second, third, fourth, and fifth distances as recited in claim 1 (this issue is discussed in more detail in the Claim Rejections – 35 USC 112 section below). As such, correction of the following is required: the specification should be amended to provide a specification antecedent basis for “a tip” of the electric working assembly, “an inner surface” of the main body, and each of the first through fifth distances as now recited in claim 1. The same terminology used in the claims should be used to indicate the corresponding distance in the specification.
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.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 10 is/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 10 recites the “any distance between any side surface of the battery held in the holding space and any inner surface of the main body facing the any side surface of the battery is equal to or greater than a predetermined distance”, and this feature was not described in the specification as originally filed in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s) had possession of the claimed invention. This feature is newly added to the claims, since claim 10 previously only described one side surface of the battery and one inner surface of the main body. This feature is also not illustrated in the drawings or described in the written description as originally filed. As such, claim 10 as amended introduces new matter, and thus fails to comply with the written description requirement of 35 USC 112(a).
Claim(s) 1-5 and 7-15 is/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.
Claim 1 at lines 16-17 recites, “a tip of the electric working assembly faces toward a front side of the electric working machine along the front-rear direction”. The tip is part of the electric working machine. This recitation renders claim 1 indefinite because it is unclear whether the recitation includes a typographical error, or whether the recitation is intended to be inconsistent with the present disclosure. Consider Fig. 1 – as best understood in view of the Applicant failing to indicate the tip of the electric working assembly, the tip of the electric working assembly is the front-most portion of the electric working assembly. The tip of the electric working assembly thus faces toward the front direction. However, facing toward the front direction is different from facing toward “a front side of the electric working machine along the front-rear direction” as required by claim 1. The tip is at the front-most side of the electric working machine, and thus the tip faces away from the working machine, rather than “toward a front side of the electric working machine”. Does the Applicant intend claim 1 to be satisfied if the tip faces in a front direction, even if that direction is away from the electric working machine? Does the Applicant consider the tip as facing in some different direction than toward the front side relative to Fig. 1 of the present drawings? The recitation appears to mis-state the direction in which the tip faces, such that it is unclear how to interpret the recitation in a manner consistent with the present disclosure. As such, the recitation that the tip faces “toward a front side of the electric working machine” is indefinite in view of the present specification disclosing a tip that faces frontward away from the electric working machine.
Claim 1 introduces various distances including “a first distance”, “a second distance”, “a third distance”, “a fourth distance”, and “a fifth distance”. Claim 1 is indefinite in view of the present specification because it is unclear how to interpret the claim in a manner consistent with the present specification. Initially considering the ‘second distance’ as recited in claim 1, this distance is required by claim 1 to be “directly adjacent the first opening”. The present specification identifies distance ‘C2’ as a ‘second distance’. It is unclear whether the Applicant considers the second distance ‘C2’ as disclosed in the present specification (e.g., as illustrated in Fig. 5 of the present drawings) to be “directly adjacent the first opening”, even though distance ‘C2’ is closer to the second opening ‘222’ than the first opening ‘221’, and even though various other identified distances (e.g., ‘C1’, ‘C11’, ‘C12’, and ‘C13’) are nearer to the first opening ‘221’ than the second distance ‘C2’. If the ‘second distance C2’ as disclosed in the present specification is intended by the Applicant to be “directly adjacent the first opening”, then the scope of “directly adjacent the first opening” is unclear since the phrase appears to encompass a distance spaced far from the first opening. Alternatively, does the Applicant consider distance ‘C13’ as disclosed in the present specification to be the ‘second distance’ as recited in claim 1, even though the present specification identifies distance ‘C2’, not the distance ‘C13’, as the ‘second distance’? One problem with this interpretation, though, is that Fig. 5 could be provided with additional distances between the distance ‘C13’ and the first opening, such that arguably even distance ‘C13’ is not “directly adjacent the first opening” as required by claim 1. In yet another interpretation, the ‘second distance’ as recited in claim 1 is some distance that is not even described in the present specification, but can instead be imagined in view of Fig. 5. The problem with this interpretation is that it assumes a lack of antecedent basis for claim terminology, when the present specification actually does describe a ‘second distance C2’. The scope of the requirement that the second distance is “directly adjacent to the first opening” changes depending on which of these interpretations is intended, such that the scope of claim 1 is indefinite.
Also in regards to the issue related to the various distances recited in claim 1, considering the ‘fourth distance’ as recited in claim 1, this distance is required by claim 1 to be “directly adjacent the second opening”. The present specification identifies distance ‘C22’ as ‘a distance’, rather than as a fourth distance. The present specification does not identify any particular distance as a ‘fourth distance’. It is unclear whether the Applicant considers the distance ‘C22’ as disclosed in the present specification (e.g., as illustrated in Fig. 5 of the present drawings) to be “directly adjacent the second opening”, even though various other non-identified distances are nearer to the second opening ‘222’ than the distance ‘C22’. If the ‘distance C22’ as disclosed in the present specification is intended by the Applicant to be “directly adjacent the second opening”, then the scope of “directly adjacent the first opening” is unclear since the phrase appears to encompass a distance spaced apart from the second opening with other distances therebetween. Alternatively, the ‘fourth distance’ as recited in claim 1 is some distance that is not even described in the present specification, but can instead be imagined in view of Fig. 5. The problem with this interpretation is that it assumes a lack of antecedent basis for claim terminology. The scope of the requirement that the fourth distance is “directly adjacent to the second opening” changes depending on which of these interpretations is intended, such that the scope of claim 1 is indefinite.
Still in regards to the issue related to the various distances recited in claim 1, considering the “first distance” as recited in claim 1, this distance is defined in claim 1 as “a narrowest distance, at a narrowest position, between the inner surface of the main body and the second surface of the battery”. As disclosed in the present specification, a ‘first distance’ is identified as distance ‘C1’, while no “inner surface” is identified in the present specification. However, the first distance ‘C1’ as disclosed in the present specification is not a narrowest distance between the main body and the second surface of the battery as can be seen in Fig. 5 of the present drawings – instead, a second distance ‘C2’ is identified that is a narrowest distance between the main body and the second surface of the battery. Still, it is unclear what surface illustrated in Fig. 5 the Applicant considers to be the ‘inner surface’ as recited in claim 1. As a result, it is unclear how to interpret claim 1 in a manner consistent with the present specification. Does the Applicant intend the ‘first distance’ as recited in claim 1 to correspond to the ‘second distance C2’ as identified in the specification, even though the specification also introduces a ‘first distance’? If this interpretation is intended, the Applicant should amend the specification and/or claim 1 to consistently refer to a same distance with a consistent name – i.e., claim 1 should not refer to a distance as a ‘first distance’ when the specification refers to the same distance as a ’second distance’. Alternatively, since no “inner surface” is identified in the present specification, potentially the “inner surface” as recited in claim 1 is intended to correspond to a subset of the surfaces of the main body located between the openings ‘221’ and ‘222’ as shown in Fig. 5 of the present drawings. That is, the ‘narrowest distance’ that defines the ‘first distance’ as recited in claim 1 can be the ‘first distance C1’ as disclosed in the present specification so long as the ‘inner surface’ as recited in claim 1 is selected to be a subset of the surfaces of the main body between the openings ‘221’ and ‘222’ in Fig. 5. Note also that interpreting claim 1 in view of claim 8 is further evidence of the indefiniteness of claim 1. Claim 8 prohibits “any distance between the second surface of the battery held in the holding space and any positions on the facing surface of the main body” from being less than the first distance. Thus, claim 8 suggests that there may be more than one “narrowest distance” (such as a first narrowest distance along a first section of the main body and a second narrowest distance along a different second section of the main body).
Claim(s) 8 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8, as best understood in view of the indefiniteness issues raised above with respect to claim 1, fails to further limit claim 1. Claim 1 requires that the “first distance” is a narrowest distance between the inner surface of the main body and the second surface of the battery, and claim 1 also requires that the inner surface directly faces the second surface of the battery. If any distance between the inner surface of the main body and the second surface of the battery were less than the first distance, the first distance would not be a ‘narrowest distance’. However, claim 8 merely requires that “any distance between the second surface of the battery held in the holding space and any positions on the facing surface of the main body [the facing surface being included in the inner surface per claim 1] facing the second surface of the battery is equal to or greater than the first distance”. Since all other distances being ‘equal to or greater than the first distance’ is required for the first distance to be the narrowest distance, claim 8 does not further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-5 and 7-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2019/0262753 A1 to Miura et al. in view of US Pub. No. 2023/0112387 A1 to Kachi et al.
Regarding claim 1, Miura discloses an electric working machine 1, comprising:
a main body 10;
a motor 30 housed in the main body 10 (see Fig. 4 and paragraph 20), the motor 30 being configured to operate by electric power supplied from a battery 50 (see paragraph 19);
an electric working assembly (including guide bar 21 and saw chain 22) that is provided at the main body 10 (see Figs. 1 and 4), the electric working assembly having a saw chain 22, the saw chain 22 of the electric working assembly being configured to operate due to rotation of the motor 30 (see paragraph 39); and
a battery holder 16 that is provided in the main body 10 (see Fig. 1), the battery holder 16 having a holding space (see the space defined within the battery holder 16 in Figs. 2 and 3) in which the battery 50 is configured to be inserted in an insertion direction (compare Figs. 1 and 2; the insertion direction is approximately perpendicular to a plane defined at a top, open end of the battery holder 16 relative to Fig. 2), the battery holder 16 holding the battery 50 (see Fig. 1), wherein
the electric working machine 1 has a longitudinal structure formed by the main body 10 and the electric working assembly (the machine 1 has a longitudinal structure because the main body 10, including the handle 62, and the guide bar 21 extend longitudinally in a front-rear direction relative to the directional key of Fig. 1), the electric working machine 1 is elongated along a front-rear direction (see Fig. 1), and the front-rear direction is perpendicular to a left-right direction in a plan view (see the directional key in Fig. 1),
when the electric working machine 1 is placed on a base (e.g., relative to the directional key included in Fig. 1, which is an orientation of the machine 1 that is achievable by placing the machine 1 on a base):
a tip of the electric working assembly faces toward a front side of the electric working machine along the front-rear direction (see Fig. 1 – the tip of the electric working assembly is at a front end of the guide bar 21 and chain 22; the electric working assembly has an end point in at a front-most portion of the electric working assembly, and the tip is at the front-most portion of the electric working assembly, such that Miura discloses that the tip ‘faces toward a front side of the electric working machine’ to the same extent as the inventive tip); and
an end of the main body 10 faces toward a rear side of the electric working machine along the front-rear direction (see Fig. 1, where the end of the main body 10 can be either of the end of the portion receiving the lead line for reference character ‘11’ in Fig. 1, or alternatively a rear-most end of handle 62 of the main body 10, noting that a main body can have more than one ‘end’, since each individual portion of the main body 10 may have its own respective end),
the battery holder 16 includes a first opening (the first opening being an opening facing approximately in the ‘Up’ direction relative to Fig. 2) and a second opening 82 (see Figs. 2 and 3; either of the openings 82 can be considered as the ‘second opening’), and the holding space is formed continuously from the first opening to the second opening 82 (see Fig. 2, where there is a continuous empty space from the first opening to the second opening 82; indeed, in Fig. 3, even with the battery 50 in the holding space, there is still a continuous formation of the holding space from the first opening at the gap 81 to the second opening 82),
the battery 50 has a preceding surface located on an insertion-direction-forward side (see the annotated Fig. 3 below showing three options for ‘a preceding surface’; regarding the third option, note that a preceding surface can be curved and is not limited to a planar surface, and note also that the downward facing portion of the third option of the preceding surface is joined to the oblique portions of the third option of the preceding surface by curves, such that all three portions can properly be considered as ‘a preceding surface’; note also, in regards to first and second options of the preceding surface, that the battery 50 may have more than one ‘preceding surface’, since the broadest reasonable interpretation of a ‘preceding surface’ is any surface that precedes entry of the battery into the holder relative to any other surface of the battery, such as preceding entry of the following surface) and a following surface located on an insertion-direction-rearward side (see the annotated Fig. 3 below), a first surface facing a left side of the electric working machine 1 while the battery 50 is held in the holding space and connecting between the preceding surface and the following surface (see Fig. 3, where the first surface is a left-facing surface of the battery), and a second surface facing a right side of the electric working machine 1 while the battery 50 is held in the holding space and connecting between the preceding surface and the following surface (see Fig. 3, where the second surface is a right-facing surface of the battery 50),
the preceding surface faces forward (see Fig. 3, where the preceding surface faces ‘forward’ relative to the insertion direction; note that the claim only mentions the term ‘forward’ in the context of the insertion-direction-forward side, so it is proper to consider ‘forward’ as being defined with respect to the insertion direction consistent with lines 22-23 of the claim; line 17 of the claim introduces a different ‘front-rear direction’), and the following surface faces rearward (see Fig. 3, where the following surface faces ‘rearward’ relative to the insertion direction; note that the claim only mentions the term ‘rearward’ in the context of the insertion-direction-rearward side, so it is proper to consider ‘rearward’ as being defined with respect to the insertion direction consistent with lines 22-23 of the claim; line 17 of the claim introduces a different ‘front-rear direction’), and
while the battery 50 is held in the holding space:
the preceding surface of the battery 50 is located inward of the second opening 82 in the insertion direction (see the second annotated Fig. 3 below, where a vertical line along the plane of the page corresponds to the ‘insertion direction’, and this line, when moving upward along the plane of the page, passes through the second opening 82 prior to passing through the preceding surface; as such, when measuring along the insertion direction, the preceding surface of the battery 50 is inward of the second opening 82; the same is true for the other options of the preceding surface);
the second opening 82 is positioned at a location opposing the preceding surface of the battery 50 along the insertion direction (see the second annotated Fig. 3 below);
a passage path extending from the first opening toward the second opening 82 is formed in the holding space (see Fig. 3, where the passage path extends from gap 81 to the second opening 82 as can be seen in Fig. 3), such that chips or dust entering the holding space through the first opening (as contemplated at paragraph 60, which acknowledges that some dust particles enter through the gap 81 defined at the first opening) are discharged through the second opening 82 (see paragraph 61);
an inner surface of the main body 10 (the inner surface being a right surface of the main body 10 within the holding space relative to Fig. 3, where the inner surface extends from the first opening to the second opening within the holding space – i.e., the inner surface includes the surface receiving the tip of the lead line for reference character ‘16’ in Fig. 3) defines part of the holding space and directly faces the second surface of the battery along a left-right direction (see Fig. 3), and part of the inner surface is a facing surface adjacent to the first opening (see Fig. 3, where the facing surface a portion of the inner surface above the opening 16a);
a narrowest distance, at a narrowest position, between the inner surface of the main body and the second surface of the battery is defined as a first distance (see Fig. 3, where the first distance is measured in a left-right direction between the second surface and the inner surface at the opening 16a), and a crevice space in the holding space in a cross-sectional view along the left-right direction is enclosed by the narrowest position, part of the second surface of the battery 50, the facing surface, and the first opening (see Fig. 3, where the crevice space includes a space between the battery and the inner surface above the opening 16a);
a second distance between the facing surface of the main body 10 and the second surface of the battery 50, and directly adjacent to the first opening, is larger than the first distance (see the annotated Fig. below indicating the second distance; note that both of the battery 50 and the facing surfacing surface include curved chamfers at their respective upper ends, and the second distance is widened due to the curved chamfers compared to if no curved chamfers were provided);
a third distance between the facing surface of the main body 10 and the second surface of the battery 50, at a position between the narrowest position and the first opening along the insertion direction, is larger than the first distance and is smaller than the second distance (see the annotated Fig. below indicating the second distance; the third distance does not include the curved chamfers, and as a result the third distance is less than the second distance);
a fourth distance between the inner surface of the main body 10 and the second surface of the battery 50, and directly adjacent to the second opening, is larger than the first distance (see the annotated Fig. below indicating the fourth distance); and
a fifth distance between the inner surface of the main body 10 and the second surface of the battery 50, at a position between the narrowest position and the second opening along the insertion direction, is larger than the first distance and is smaller than the fourth distance (see the annotated Fig. below indicating the fourth distance; the fifth distance is a distance just slightly above the fourth distance).
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Regarding claim 2, Miura discloses that the second opening 82 is positioned lower than the first opening along the insertion direction (see Fig. 1, where the second opening 82 is lower than the first opening in view of the ‘Up’ and ‘Down’ direction in the figure; the insertion direction is nearly aligned with the ‘Up’ and ‘Down’ direction in Fig. 1).
Regarding claim 3, Miura discloses the second opening 82 is positioned outward of the preceding surface of the battery 50 along the insertion direction (see Fig. 3 – a vertical line along the plane of the page passes through the preceding surface before the second opening 82).
Regarding claim 4, Miura discloses that the second opening 82 has a shape and a size that do not allow the battery 50 to pass therethrough (see Fig. 1; the battery 50 is unable to pass through the second opening 82).
Regarding claim 5, Miura discloses that the main body 10 partially aligns with the preceding surface of the battery 50 in the plan view (see the surface labeled 16b in Fig. 3 – this surface aligns with a portion of each of the options for the preceding surface).
Regarding claim 7, Miura discloses that the electric working assembly further includes a rear handle 62 and a guide bar 21 on which [i.e., on the guide bar 21] the saw chain 22 is provided (see Fig. 1), wherein the guide bar 21 is provided on one of a right side and a left side of a center of the rear handle 62 in the left-right direction (a right side; see Figs. 1 and 4 and paragraph 38), and the second opening 82 is provided on the other of the right side and the left side of the center of the rear handle 62 in the left-right direction (see the second opening 82 on the ‘left’ side of the handle 62 in Fig. 5; note also that even the ‘third option’ for the second opening satisfies this requirement since the third option includes the second opening being provided on both right and left sides of the center).
Regarding claim 8, Miura discloses that in the crevice space, any distance between the second surface of the battery 50 held in the holding space and any positions on the facing surface of the main body 10 facing the second surface of the battery 50 is equal to or greater than the first distance (see Fig. 3; the first distance is the narrowest distance between the second surface and the inner surface, so all other distances are at least equal to the first distance).
Regarding claim 9, Miura discloses that the main body 10 is configured to provide a non-slip property on the inner surface forming the crevice space (see the annotated Fig. 3 below; the horizontal projection within the circled area provides a ‘non-slip property’ because the horizontal projection provides an upward facing surface against which a user’s finger or thumb can press, which surface reduces the likelihood of the user’s finger of thumb slipping further downward).
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Regarding claim 10, Miura discloses the holding space is formed from the first opening to the second opening 82 in such a manner that any distance between any side surface of the battery 50 held in the holding space and any inner surface of the main body 10 facing the any side surface (the distance can be, e.g., the distance measured in the left-right direction between the second surface of the battery 50 and the inner surface of the main body 10 at a height of the tip of the lead line for reference character ‘16’ in Fig. 3) is equal to or greater than the predetermined distance (no requirement is made regarding the magnitude of the predetermined distance, such that the distance described in the prior parenthesis is greater than some predetermined distance). Note that claim 10 is interpreted as not requiring that every distance between every side surface and a corresponding inner surface is greater than or equal to the predetermined distance.
Regarding claim 11, Miura discloses that the main body 10 includes a first guide configured to guide the first surface of the battery 50 (see the annotated portion of Fig. 3 below) and a second guide configured to guide the second surface of the battery 50 during insertion of the battery 50 into the holding space of the battery holder 16 (see the annotated portion of Fig. 3 below).
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Regarding claim 12, Miura discloses that the main body 10 includes a third opening 82 (i.e., there are two openings 82; one of these openings is the ‘second opening’ introduced in claim 1, and the other of these two openings 82 is the ‘third opening’ of claim 12) through which one of the left side outer surface and the right side outer surface of the battery 50 is exposed to an outside (see Fig. 1).
Regarding claim 13, Miura discloses that the battery 50 is configured to be moved in a direction opposite to the insertion direction by applying a force to the preceding surface of the battery 50 through the second opening 50 along a direction opposite to the insertion direction (see Fig. 3 and paragraph 62).
Regarding claim 14, Miura discloses that the passage path is also configured as an air passage through which air passes from the first opening toward the second opening 82 (see Fig. 3, where there are two arrows adjacent gaps 81 indicating air passes from the first opening in a downward direction, where the downward direction is ‘toward the second opening’), thereby suppressing heat accumulation of the battery 50 held in the holding space (see paragraph 43, describing a ‘cooling’ ability; cooling takes place so long as the ambient air introduced into the holding space is cooler than the battery 50, such as if the machine is used in a cold outdoor environment).
Regarding claim 15, Miura discloses that the main body 10 includes an air intake port 82 (the air intake port 82 being the other one of openings 82 besides the second opening 82; note that there are two openings 82, such that one of the openings 82 is the second opening and the other is the air intake port) configured to introduce cooling air into the main body 10 (see Fig. 3 and paragraphs 43 and 60); the air intake port is different from each of the first opening and the second opening (see Fig. 3, where there are three different openings; e.g., the air intake port is different from the second opening due to being on an opposing side of a centerline of the machine).
In general, in view battery holder of Miura being oriented such that the first and second surfaces of the battery of Miura face in left and right directions, rather than toward the front and rear sides of the electric working machine, Miura differs from the claimed invention due to the orientation of the battery holder. That is, if the battery holder of Miura were rotated 90 degrees about a vertical axis, then the first and second surfaces of the battery of Miura, inserted into the battery holder as rotated, would face toward the front and rear sides of the electric working machine. Miura, though, contemplates various orientations of the battery holder, including an orientation in which the air filter 70 is at a front side of the battery holder (see paragraph 64).
Turning to the claim language, Miura fails to disclose that the first surface faces the front side of the electric working machine, that the second surface faces the rear side of the electric working machine, that the inner surface faces the second surface along the front-rear direction, and that the cross-sectional view of along the front-rear direction, as required by claim 1.
Kachi teaches a battery holder 24a (see Fig. 4 of Kachi) rotated 90 degrees in comparison to the battery holder 16 of Miura. As disclosed by Kachi, a battery pack attachment portion 24b that slidingly attaches to the battery B is formed at a lateral side of the battery holder 24a (see Kachi at Fig. 4), in contrast to a battery pack attachment portion that slidably attaches to the battery 50 being formed at a front side of the battery holder 16 as disclosed by Miura (see Miura at Fig. 2). Moreover, first and second surfaces of the battery B of Kachi, which surfaces are on sides of the battery approximately perpendicular to the slidably-received side of the battery B, face toward front and rear sides of the battery (see Fig. 4 of Kachi, where the first surface of the battery B faces forward and the second surface of the battery B faces rearward). Therefore, Kachi provides evidence that a battery holder oriented at a 90 degree rotation about a vertical axis compared to that of Miura is suitable.
Therefore, it would have been obvious to one of ordinary skill in the art to rotate the battery holder of Miura 90 degrees about a vertical axis so that the battery holder of Miura, as modified, receives the battery with the first surface facing the front side of the electric working machine, with the second surface facing the rear side of the electric working machine, and with the inner surface of the main body facing the second surface along the front-rear direction, in view of the teachings of Kachi. This modification is merely a reorientation of the battery holder. Miura discloses the claimed invention except for the battery holder oriented so that the battery holder receives the battery with the first surface of the battery facing the front side and with the second surface of the battery facing the rear side. It would have been obvious to one having ordinary skill in the art at the time the invention was made to reorient the battery holder by rotating the battery holder 90 degrees about a vertical axis so that the first surface of the battery faces the front side and the second surface faces the rear side in view of the teaches of Kachi, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Moreover, Miura provides further evidence for the obviousness of this modification, in that this modification results in the air filter of Miura being at a front side of the battery holder – this position of the air filter is already contemplated by Miura at paragraph 64. Further still, an advantage of this modification is that a more direct airflow path is provided between the battery holder and the motor receiving chamber of Miura. Rather than airflow having to make two turns to travel from within the battery holder to the motor receiving chamber, this modification allows a direct path for airflow from the battery holder to the motor receiving chamber, which increases airflow and enhances motor cooling. Further still, yet another advantage of this modification is that the overall form factor of the electric working machine can be reduce since the width dimension can be reduced in view of the airflow communication path along the left side of the battery holder is no longer required. Finally, Miura, as thus modified, discloses that the cross-section view is along the front-rear direction as required by claim 1, in view of the battery holder being re-oriented as explained above.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 under 35 USC 102 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 EVAN H MACFARLANE whose telephone number is (303)297-4242. The examiner can normally be reached Monday-Friday, 7:30AM to 4:00PM MT.
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/EVAN H MACFARLANE/Examiner, Art Unit 3724
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