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 .
Status of the Claims
The amendment/remarks submitted 02/11/2026 have been entered and fully considered. Claims 1-22 are pending. Claims 1, 9, 13, and 19 are amended. Claims 1-22 are examined herein.
Specification
The amendment to the abstract is acceptable and 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: “switching provisions to enable” in claims 4 and 20; “the switching provisions are configured to” in claims 5 and 21; “provisions for data transfer” in claims 7-8, 15, and 19; and “wireless connectivity component” in claims 9 and 16.
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 USC § 112(b)
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.
Claims 1-12 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 limitation “wireless connectivity component” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 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)(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.
Claims 1-3 and 13-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2018/0277804 A1 (“Lee”).
Regarding claim 1, Lee discloses a battery pack charging system for a power tool (Abstract). The battery pack charging system comprises a battery pack 20 (Fig. 1). The battery pack 20 comprises a plurality of battery units (“at least one battery cell”) and a housing 22, the housing 22 defining an interior region (Fig. 1; [0031]).
The battery pack 20 further comprises a USB Type-C interface 26 disposed on the housing 22 of the battery pack 20 (Fig. 1; [0032]-[0034]). The interface 26 supports USB PD specification and/or a proprietary charging protocol ([0023], [0032]-[0034]). The battery pack 20 further comprises a USB PD controller and/or a controller for the proprietary protocol (“battery charging circuit including a microcontroller”) disposed within the interior region of the housing of the battery pack ([0032]-[0033]).
The battery pack charging system further comprises a battery charger 40 (“power source module”) inherently capable of delivering DC power to the interface 26 of the battery pack (Fig. 2; [0035]). The battery charger 40 receives alternating current (AC) voltage from the mains electricity and outputs power to the battery pack via USB PD or the proprietary protocol (DC power) ([0035]). Therefore, the battery charger 40 inherently comprises an AC/DC power circuit.
Regarding claim 2, Lee discloses the battery pack charging system of claim 1. Lee discloses the battery charger 40 is separate from the battery pack 20 (Fig. 3).
Regarding claim 3, Lee discloses the battery pack charging system of claim 1. Lee discloses the battery pack 20 further comprises a physical interface 24 (“battery terminal interface”) inherently capable of connection with a battery charger ([0031]-[0032]).
Regarding claim 13, Lee discloses a battery pack charging system for a power tool (Abstract). The battery pack charging system comprises a battery pack 20 (Fig. 1). The battery pack 20 comprises a housing 22 defining an interior region, and a plurality of battery units (“at least one battery cell”) disposed within the interior region of the housing 22 (Fig. 1; [0031]).
The battery pack 20 further comprises a USB Type-C interface 26 accessible along an exterior region of the housing 22 (Fig. 1; [0032]-[0034]). The battery pack 20 further comprises a physical interface 24 (“battery terminal interface”) inherently capable of connection with a battery charger or power tool ([0031]-[0032]).
The battery pack charging system further comprises a battery charger 40 (“power source module”) inherently capable of delivering DC power to the interface 26 of the battery pack (Fig. 2; [0035]). The battery charger 40 receives alternating current (AC) voltage from the mains electricity and outputs power to the battery pack via USB PD (DC power) ([0035]). Therefore, the battery charger 40 inherently comprises an AC/DC power circuit. The battery charger 40 further comprises a USB PD (power delivery) controller inherently capable of delivering power to the USB interface 26 of the battery pack 20 ([0035]).
Regarding claim 14, Lee discloses the battery pack charging system of claim 13. Lee discloses the physical interface 24 is separate from the USB Type-C interface 26 (Fig. 3).
Regarding claim 15, Lee discloses the battery pack charging system of claim 13. Lee discloses the battery pack 20 further comprises a USB PD controller ([0032]-[0033]) and the battery charger 40 further comprises a USB PD controller ([0035]). Therefore, the battery charger 40 inherently comprises provisions for data transfer between the battery pack 20 and the battery charger 40 via the USB PD specification.
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.
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.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0277804 A1 (“Lee”) in view of US 2014/0247015 A1 (“Hsu”).
Regarding claims 4-6, Lee discloses the battery pack charging system of claim 1. Lee discloses the battery pack 20 is able to be connected to a power tool or the battery charger (“external component”) ([0031]) but does not expressly disclose the battery pack further includes switching provisions to enable connection to an external component and one of the battery terminal interface and the USB charging port [claim 4].
Hsu discloses a battery comprising a battery cell 102, a connector 104, a universal serial bus (USB) 106, a first micro control unit 108, and a second micro control unit 110 (Abstract; Fig. 1). Hsu discloses determining whether a portable electronic device is connected to the battery through the connector 104 (S201). If so, the first micro control unit 108 is enabled so that a charge/discharge process is performed on the battery cell 102 through the portable electronic device and the second micro control unit 110 is disabled (S205; [0028], [0034]-[0035]). If not, the second micro control unit 110 is enabled so that the battery cell 102 is connected to the universal serial bus and the first micro control unit 108 is disabled (S211; [0030], [0034]-[0035]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Hsu with Lee because it amounts to combining prior art elements according to known methods to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). Moreover, when applied to Lee this allows for powering of the power tool when connected via the physical interface 24 (and disabling power to the USB Type-C interface 26) and powering of an external device when connected through USB Type-C interface 26 and disabling power to the physical interface 24).
Claims 7-8, 19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0277804 A1 (“Lee”) in view of US 2008/0238370 A1 (“Carrier”).
Regarding claim 7, Lee discloses the battery pack charging system of claim 1. Lee does not expressly disclose the battery pack further includes a battery memory and provisions for data transfer between a power tool and the battery memory.
Carrier discloses a battery pack 100 connectable to a power tool 170 (Fig. 1B). The battery pack comprises a battery electronic control unit 125 is responsible for the protection of the cells 105 for any fault condition exposed on the terminals (via charger 150, an attached tool, and/or due to user tampering) ([0040]). The battery electronic control unit 125 includes various types of memory that may execute one or more software or firmware programs. As an example, RAM may be used to store program variables during run time, FLASH memory may be used to store program code and calibration values, and EEPROM may be provided to store calibration values, data logging information, error codes, etc. ([0041]). The battery electronic control unit 125 can communicate with the power tool 170 via terminals 5 and 6 (Fig. 1B; [0057], [0059]). This allows for communication of a degree of trigger 181 to create a desired (or ordered) motor speed ([0057]) and communication of the power, voltage and/or current limits of the attached tool 170 ([0059]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Carrier with Lee to provide for the storage and execution of one or more software or firmware programs and to provide for communication between the power tool and battery electronic control unit.
Regarding claim 8, modified Lee discloses the battery pack charging system of claim 7. Carrier further discloses the charger 150 comprises a charger electronic control unit 155 that exchanges battery data, charger data, and control information with the battery electronic control unit 125 through serial data paths on terminals 5 and 6 (Fig. 1A; [0052]-[0053]). The charger electronic control unit 155 may be embodied in hardware or software as a digital microcontroller, microprocessor, analog circuit, digital signal processor, or by one or more digital ICs such as application specific integrated circuits (ASICs), for example ([0052]). Therefore, the electronic control unit 155 inherently comprises a memory. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include the teachings of Carrier to allow for the exchange of data, such as battery data, charger data, and control information, between the charger and the battery pack.
Regarding claim 19, Lee discloses a battery pack charging system for a power tool (Abstract). The battery pack charging system comprises a battery pack 20 (Fig. 1). The battery pack 20 comprises a housing 22 defining an interior region, and a plurality of battery units (“at least one battery cell”) disposed in the interior region (Fig. 1; [0031]).
The battery pack 20 further comprises a controller (“a battery charging circuit having a microcontroller”) such as a USB PD controller or a unique controller compatible with both the USB PD specification and the proprietary protocol ([0033]), a USB Type-C interface 26 accessible along the housing 22, and a physical interface 24 (“battery terminal interface”) (Fig. 1; [0032]-[0034]).
The battery pack charging system further comprises a battery charger 40 (“power source module”) inherently capable of delivering DC power to the interface 26 of the battery pack (Fig. 2; [0035]). The battery charger 40 receives alternating current (AC) voltage from the mains electricity and outputs power to the battery pack via USB PD or the proprietary protocol (DC power) ([0035]). Therefore, the battery charger 40 inherently comprises an AC/DC power circuit.
As discussed above, the battery pack 20 comprises a controller ([0032]-[0033]). Lee further discloses the battery charger 40 comprises a controller ([0035]). Therefore, the battery charger 40 inherently comprises provisions for data transfer between the battery pack 20 and the battery charger 40 via the USB PD specification or a proprietary protocol.
Lee discloses the battery pack charging system of claim 1. Lee discloses the battery charger 40 is separate from the battery pack 20 (Fig. 3).
Lee is silent regarding the battery pack comprising a memory and the power source module comprising a memory.
Carrier discloses a battery pack 100 connectable to a power tool 170 (Fig. 1B). The battery pack comprises a battery electronic control unit 125 is responsible for the protection of the cells 105 for any fault condition exposed on the terminals (via charger 150, an attached tool, and/or due to user tampering) ([0040]). The battery electronic control unit 125 includes various types of memory that may execute one or more software or firmware programs. As an example, RAM may be used to store program variables during run time, FLASH memory may be used to store program code and calibration values, and EEPROM may be provided to store calibration values, data logging information, error codes, etc. ([0041]).
Carrier further discloses the charger 150 comprises a charger electronic control unit 155 that exchanges battery data, charger data, and control information with the battery electronic control unit 125 through serial data paths on terminals 5 and 6 (Fig. 1A; [0052]-[0053]). The charger electronic control unit 155 may be embodied in hardware or software as a digital microcontroller, microprocessor, analog circuit, digital signal processor, or by one or more digital ICs such as application specific integrated circuits (ASICs), for example ([0052]). Therefore, the electronic control unit 155 inherently comprises a memory. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include the teachings of Carrier to provide for the storage and execution of one or more software or firmware programs and to provide for communication between the power tool and battery electronic control unit and to allow for the exchange of data, such as battery data, charger data, and control information, between the charger and the battery pack.
Regarding claim 22, modified Lee discloses the battery pack charging system of claim 19. Lee further discloses the physical interface 24 is used to detachably mount the battery pack 20 to a corresponding power tool or battery charger ([0031]).
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0277804 A1 (“Lee”) in view of US 2008/0238370 A1 (“Carrier”) as applied to claim 8 above, and further in view of US 2021/0273474 A1 (“Seibert”).
Regarding claims 9-12, modified Lee discloses the battery pack charging system of claim 8. Modified Lee does not expressly disclose the power source module further includes a wireless connectivity component for wirelessly transfer data.
Seibert discloses a method for charging battery packs for power tools with the aid of a charging device (Abstract; Fig. 1). A charging device 10 is provided with an interface 20, such as a radio interface (e.g., Bluetooth, WLAN, NFC, Zigbee, LoRa, GSM, UMTS, or the like) ([0029]). An external device 24 is provided with a corresponding counter interface 26 ([0029]). This allows information about the present charging mode in addition to further charging parameters and states of charge (i.e. a battery parameter received from battery memory) to be output via an interface to the external device for example, a smart phone, a tablet, a remote control, a PC, a laptop, or the like (“one or more host computers”) ([0020]-[0021]). This further allows the user to switch the charging mode with the aid of the external device ([0021], [0029], [0031]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Seibert with modified Lee to allow a user to wirelessly obtain information about the present charging mode in addition to further charging parameters and states of charge.
Claim interpretation: the instant claims contain limitations which further specify the functions of the devices/components (e.g. “wherein the data being wirelessly transferred relates to the power tool or use of the power tool” in claim 10). These limitations are inherently met by the prior art per the discussion above.
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0277804 A1 (“Lee”) in view of US 2021/0273474 A1 (“Seibert”).
Regarding claims 16-18, Lee discloses the battery pack charging system of claim 15. Lee does not expressly disclose the power source module further includes a wireless connectivity component for wirelessly transfer data received from the battery pack.
Seibert discloses a method for charging battery packs for power tools with the aid of a charging device (Abstract; Fig. 1). A charging device 10 is provided with an interface 20, such as a radio interface (e.g., Bluetooth, WLAN, NFC, Zigbee, LoRa, GSM, UMTS, or the like) ([0029]). An external device 24 is provided with a corresponding counter interface 26 ([0029]). This allows information about the present charging mode in addition to further charging parameters and states of charge (i.e. a battery parameter received from battery memory) to be output via an interface to the external device, for example, a smart phone, a tablet, a remote control, a PC, a laptop, or the like (“one or more host computers”) ([0020]-[0021]). This further allows the user to switch the charging mode with the aid of the external device ([0021], [0029], [0031]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Seibert with modified Lee to allow a user to wirelessly obtain information about the present charging mode in addition to further charging parameters and states of charge.
Claim interpretation: the instant claims contain limitations which further specify the functions of the devices/components (e.g. “wherein the data being wirelessly transferred relates to the power tool or use of the power tool” in claim 10). These limitations are inherently met by the prior art per the discussion above.
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0277804 A1 (“Lee”) in view of US 2008/0238370 A1 (“Carrier”) as applied to claim 19 above, and further in view of US 2014/0247015 A1 (“Hsu”).
Regarding claims 20-21, Lee discloses the battery pack charging system of claim 1. Lee discloses the battery pack 20 is able to be connected to a power tool or the battery charger (“external component”) ([0031]) but does not expressly disclose the battery pack further includes switching provisions to enable connection to an external component and one of the battery terminal interface and the USB charging port [claim 20].
Hsu discloses a battery comprising a battery cell 102, a connector 104, a universal serial bus (USB) 106, a first micro control unit 108, and a second micro control unit 110 (Abstract; Fig. 1). Hsu discloses determining whether a portable electronic device is connected to the battery through the connector 104 (S201). If so, the first micro control unit 108 is enabled so that a charge/discharge process is performed on the battery cell 102 through the portable electronic device and the second micro control unit 110 is disabled (S205; [0028], [0034]-[0035]). If not, the second micro control unit 110 is enabled so that the battery cell 102 is connected to the universal serial bus and the first micro control unit 108 is disabled (S211; [0030], [0034]-[0035]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Hsu with Lee because it amounts to combining prior art elements according to known methods to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). Moreover, when applied to Lee this allows for powering of the power tool when connected via the physical interface 24 (and disabling power to the USB Type-C interface 26) and powering of an external device when connected through USB Type-C interface 26 and disabling power to the physical interface 24).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. 11,552,362 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a patentably indistinct combination of claims of the Patent. For example, a combination of claims 1 and 5 reads on instant claim 1.
Claims 2-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,552,362 B2 in view of US 2018/0277804 A1 (“Lee”) and US 2008/0238370 A1 (“Carrier”). Lee discloses a battery pack separate from the power source module and the battery pack having a battery terminal interface for connecting with a power tool or a battery charger. Carrier discloses a battery pack comprising a battery memory and provisions for data transfer.
Claims 1-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24-27, 30-38, and 40-45 of copending Application No. 19/030,095 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a patentably indistinct combination of claims of the reference application. For example, a combination of claims 24 and 26 reads on instant claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
In view of the amendment to claims 1, 9, 13, and 19, the objections to the claims have been withdrawn.
In view of the amendment to claim 1, the rejection of claims 1-12 under 35 USC 112(a) has been withdrawn.
Regarding the interpretation of “wireless connectivity component” under 35 USC 112(f), applicant argues the term does not invoke § 112(f). Applicant’s argument is not persuasive. Claim 9 recites “a wireless connectivity component for wirelessly transferring data.” The claim recites a generic placeholder (a term that is simply a substitute for the term “means”): “component for.” See MPEP 2181(I)(A). The generic placeholder is modified by functional language: “wirelessly transferring data.” See MPEP 2181(I)(B). The generic placeholder is not be modified by sufficiently definite structure, material, or acts for achieving the specified function. See MPEP 2181(I)(C). It is noted that the phrase “wireless connectivity” is merely descriptive and does not recite or imply definite structure, material, or acts for achieving the specified function.
Applicant argues that the specification provides sufficient corresponding structure linked to the claimed function of wirelessly transferring data to satisfy the definiteness requirement. Applicant cites elements 116 and 216 in Figs. 6 and 8, and Fig. 11 and the associated description in support. Applicant’s argument is not persuasive. Applicant merely states that “A person of ordinary skill in the art would readily understand such a wireless connectivity component to include known wireless communication hardware (e.g., transceivers and associated circuitry) suitable for performing the recited data transfer functions.” If there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112(b). “A bare statement that known techniques or methods can be used does not disclose structure” in the context of a means plus function limitation. Biomedino, LLC v. Waters Technology Corp., 490 F.3d 946, 952, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007). See MPEP 2182(II)(A).
Applicant argues that Lee does not disclose “power source module for delivering DC power to the USB charging port of the battery pack, the power source module including an AC/DC power circuit.” The Office respectfully disagrees. Lee discloses battery charger 40 (“power source module”) connected to a power line 48, such that the battery charger 40 receives an alternating current (AC) voltage from the mains electricity. The battery charger 40 further includes a USB PD controller (or a control with a proprietary protocol), and the USB PD controller is connected to other power delivery component (such as transformer, voltage converter, battery monitoring module, etc.) in the battery charger 40 ([0035]). The battery charger 40 outputs DC power at voltage levels such as 5V, 9V, 15V and 20V (DC power). Therefore, the battery charger 40 (“power source module”) inherently comprises an AC/DC power circuit.
Terminal Disclaimer
The terminal disclaimer filed on 02/11/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,552,362 B2 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because:
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).
See the terminal disclaimer review decision dated 03/11/2026 for further details. The nonstatutory double patenting rejection over U.S. Patent No. 11,552,362 B2 is maintained. The provisional nonstatutory double patenting rejection over Application No. 19/030,095 is not held in abeyance and is maintained. See MPEP 804(I)(B)(1). Applicant is further directed to MPEP 804(I)(B)(1)(b)(i).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2014/0247015 A1 (“Hsu”) discloses a battery including a battery cell, a connector, a universal serial bus, a first micro control unit and a second micro control unit. The connector has an enable pin for determining whether the battery is electrically connected to a portable electronic device through the connector. The first micro control unit is coupled to the enable pin and the second micro control unit is coupled to the universal serial bus. When it is determined that the battery is connected to the portable electronic device, the first micro control unit is enabled to perform a charge/discharge process on the battery cell through the portable electronic device. When it is determined that the battery is not connected to the portable electronic device, the second micro control unit is enabled to electrically connect the battery cell to the universal serial bus. (Abstract; Figs. 1, 2).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Scott Carrico whose telephone number is (571)270-5504. The examiner can normally be reached Monday-Friday 9:15AM-6PM ET.
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Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727
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