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 accompanying the Request for Continued Examination filed 21 November 2025 has been entered. Claims 1-20 are pending, of which claims 3-10 and 17 are withdrawn from consideration. Applicant's amendments have overcome each and every objection and rejection under 35 USC 112 previously set forth in the Final Office Action mailed 21 August 2025, although the amendments necessitate a new objection to the specification set forth in the Specification section below.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
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). Correction of the following is required: the specification should be amended to provide an antecedent basis for a “shaft” of the accessory mounting portion as recited in claims 1, 14, and 15.
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.
Claim limitations identified below are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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:
“a liquid storage device” as recited in claims 1, 14, and 15 (first, “device” is a generic placeholder for “means” per MPEP 2181; second, the generic placeholder is modified by the functional language “configured to store a liquid”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – first, being “detachably mounted on the housing” is insufficient structure for storing a liquid and, second, the phrase “liquid storage” preceding the generic placeholder describes the function, not the structure, of the device); and
“a system control member” as recited in claim 15 (first, “member” is a generic placeholder for “means” per MPEP 2181; second, the generic placeholder is modified by the functional language “used for controlling a flow state of the liquid”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – first, being “disposed on a liquid flow path” is insufficient structure for controlling a flow state of the liquid, since this recitation is directed to a location rather than a structure, and, second, the phrase “system control” preceding the generic placeholder describes the function, not the structure, of the member).
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.
Further, “an accessory mounting portion” as recited in claims 1, 14, and 15 is not interpreted under 35 USC 112(f) because this ‘portion’ must have the structure of the shaft, and similarly “a liquid storage system” as recited in claims 1, 14, and 15 is not interpreted under 35 USC 112(f) because this ‘system’ must have the structure of the liquid storage device. Regarding “an accommodation portion” in claims 1, 14, and 15, this limitation is not interpreted under 35 USC 112(f) because it is part of the structure of a housing – a housing is sufficient structure for performing an accommodating function.
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) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2023/0116313 A1 to McDonald et al. in view of EP 2 236 234 A1 to Brazell et al. and GB 2 438 597 A to Watts.
Regarding claim 1, McDonald discloses a cutting tool 10 (see Fig. 1), comprising:
a housing (see the annotated Fig. 1 below indicating the housing) having a grip 35 and an accommodation part 20;
an electric motor 25 supported by the housing within the accommodation portion 20 (see Fig. 5, the Abstract, and paragraph 21);
an accessory mounting portion comprising a shaft 190 (see Fig. 5), the shaft 190 configured to be connected to a saw blade 12 (see Fig. 5, where the shaft 190 is in fact connected to the saw blade 12, such that the shaft 190 is necessarily ‘configured to be’ connected to the saw blade 12; note also that the accessory mounting portion is any portion that comprises a shaft);
a base plate 60 disposed at a bottom of the housing (see Fig. 1) and having a mounting hole 65 for the saw blade 12 to pass through (see Fig. 4 and paragraph 23); and
wherein the electric motor 25 is a brushless motor (see paragraph 21), and a rotational speed of the electric motor 25 is not lower than 7000 revolutions per minute when the cutting tool 10 is in a working state (see paragraph 30; note that the broadest reasonable interpretation of ‘a working state’ includes a state where the saw blade is rotating even if no load is applied to the saw blade – e.g., paragraph 51 of the present specification states, “The rotational speed of the motor 120 when the cutting tool 100 enters the working state refers to the rotational speed when the motor 120 enters the working state after completing a starting process,” and this disclosure indicates that the ‘working state’ occurs once the blade has rotated up to speed even without cutting a workpiece, such that the no-load rotational speed of McDonald is “in a working state” consistent with Applicant’s specification – there is no requirement that the ‘working state’ is when the cutting blade is actively cutting a workpiece; moreover, even if ‘a working state’ requires the saw blade to be cutting an object, this feature is still satisfied by McDonald so long as a sufficiently easy to cut object is provided because the motor of McDonald is able to rotate at up to 20,000 RPM and because easy to cut objects do not significantly lower the rotational speed from the no-load rotational speed).
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Regarding claim 2, McDonald discloses a power interface 50 configured to be connected to a power supply (the power interface 50 is configured to be connected to a power supply in the form of battery 55; see Fig. 1 and paragraph 21); wherein the power interface 50 is disposed at a rear end of the accommodation portion 20 (see Figs. 1 and 2; note that the broadest reasonable interpretation of “at” includes used as a function to indicate presence or occurrence in, on, or near, such that this limitation encompasses the power interface being disposed near to the rear end of the electric motor accommodation portion; also Fig. 2 of the present application illustrates an intervening structure between the power interface and the rear end of the electric motor accommodation portion as indicated in the annotated Fig. below; as a result, the broadest reasonable interpretation of “the power interface is disposed at a rear end of the electric motor accommodation portion” does not require a direct joining of the power interface to the rear end of the electric motor accommodation portion because such an interpretation is inconsistent with the definition of “at” and also because such an interpretation is not supported by the present specification; McDonald discloses the power interface being disposed at a rear end of the electric motor accommodation portion because the power interface is disposed nearer to the rear end of the electric motor accommodation portion than to the front end of the electric motor accommodation portion, and also because there is only a small intervening structure joining the power interface to the rear end of the electric motor accommodation portion), and the accessory mounting portion (including the shaft 190) is disposed at a side end of the accommodation portion 20 (a left side end relative to Fig. 5; see also Fig. 3).
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McDonald fails to disclose that the cutting tool comprises a liquid storage system comprising a liquid storage device, the liquid storage device configured to store a liquid and detachably mounted on the housing, and wherein a top of the liquid storage device is closer to the base plate than a top of the grip is to the base plate, and a distance between the top of the grip and the top of the liquid storage device is greater than or equal to 35 mm, as required by claim 1.
Brazell, though, teaches a cutting tool 10 comprising a liquid storage system comprising a liquid storage device 48 (see Fig. 1), the liquid storage device 48 configured to store a liquid (see Fig. 1 and paragraph 39) and detachably mounted on a shield 44 of a housing (see Fig. 1 and paragraphs 30 and 39). Brazell teaches that providing the cutting tool with a liquid storage system that comprises a liquid storage device configured to store a liquid and detachably mounted to a shield of a housing is advantageous because it can be desirable to cool the blade of the circular saw using a coolant such as water (see paragraph 2).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the cutting tool of McDonald with a liquid storage system comprising a liquid storage device configured to store a liquid and detachably mounted to the shield of the housing of McDonald in view of the teachings of Brazell. This modification is advantageous because it provides a structure for cooling the blade of the circular saw of McDonald, which is known to be desirable per Brazell.
Still, McDonald as modified by Brazell fails to disclose that a top of the liquid storage device is closer to the base plate than a top of the grip is to the base plate, and a distance between the top of the grip and the top of the liquid storage device is greater than or equal to 35 mm as required by claim 1.
Watts teaches that the volume of a liquid storage device 1 for a cutting tool can be selected from a wide range of values (see page 10, lines 6-7, disclosing a range of volumes whose greatest value is eight times the least value). The volume of a liquid storage device is a function of the dimensions of the liquid storage device, including the height of the liquid storage device. Moreover, the volume of a liquid storage device is a tradeoff between competing factors. The greater the volume of the liquid storage device, the longer duration of cutting is permitted between re-fills of the liquid storage device. On the other hand, the greater the volume of the liquid storage device, the heavier and more cumbersome both the liquid storage device and the cutting tool as a whole become. Considering the range of volumes taught by Watts, 0.5 liters of water weighs only 1.1 pounds, compared to 4 liters of water weight 8.8 pounds, such that there is nearly an 8 pound difference in weight between the least and greatest volumes.
Therefore, it would have been obvious to one of ordinary skill in the art to select a height of the liquid storage device of McDonald as modified by Brazell to be less than a height of the grip by an amount of at least 35 mm in view of the teachings of Watts in order to arrive at an optimal volume of the liquid storage device that balances weight and ease of movement of the cutting tool (favoring a lesser height and thus less volume) against the operating time between refills of the liquid storage device (favoring a greater height and thus greater volume). First, one of ordinary skill in the art has knowledge of geometry and understands that volume is a factor of height, such that altering a height of the liquid storage device is one of only three options for altering the volume of the liquid storage device (the other two options including altering the width and depth of the liquid storage device). Therefore, one of ordinary skill in the art is motivated to modify the height of the liquid storage device in order to alter the volume of the liquid storage device. Second, one of ordinary skill in the art understands that the volume of the liquid storage device is a tradeoff between (i) ease of handling of the cutting tool and the liquid storage device (favoring a small volume; e.g., potentially saving near 8 pounds in weight when moving from a volume of 4 liters to a volume of 1 liter) and (ii) the time between refilling of the liquid storage device (favoring a large volume). Indeed, in this case, a manufacturer is motivated to offer the cutting tool with multiple options for the volume of the liquid storage device, including a very small volume (e.g., 0.5 liter) when maneuverability is paramount, such as when performing cuts at a remote location that necessitates extended carrying of the cutting tool to the job site, and including a range of alternative larger volumes, so that a user can select a particular liquid storage device for a desired application. Therefore, it would have been obvious to one of ordinary skill in the art to select a height of the liquid storage device of McDonald, as modified, to be less than a height of the grip by an amount of at least 35 mm in view of the teachings of Watts in order to arrive at an optimal volume of the liquid storage device, at least in some particular use cases such as when remote operation of the device is prioritized.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over McDonald in view of Brazell and Watts as applied to claim 2 above, and further in view of US Pub. No. 2017/0001251 A1 to Chen et al.
Regarding claim 11, McDonald, as modified, discloses that the power supply is a battery pack 55, and a nominal voltage of the battery pack 55 is higher than or equal to 10 V and lower than or equal to 26 V (see paragraph 22 of McDonald).
Since McDonald discloses a nominal voltage of the battery pack instead of a rated voltage of the battery pack as recited in claim 11, McDonald, as modified, fails to disclose that the rated voltage is higher than or equal to 10 V and lower than or equal to 26 V as required by claim 11.
Chen discloses a battery pack for a circular saw having a rated voltage of 18V (see paragraph 21). Chen teaches that providing a battery pack with a rated voltage of 18V is capable of performing the exact same function as the battery pack of McDonald, as modified, which is power a brushless motor of a circular saw.
Each of McDonald, as modified, and Chen teaches a suitable battery pack for powering a cutting tool (in the form a circular saw) driven by a brushless motor. Each battery pack is therefore suitable for the same purpose. McDonald, as modified, differs from the claimed invention by the use of a battery pack having a rated voltage in the range recited in claim 11. Chen teaches a battery pack having a rated voltage of 18V, which voltage is in the recited range, that is suitable for powering a circular saw driven by a brushless motor. One of ordinary skill in the art could have modified the cutting tool of McDonald, as modified, by substituting the battery pack of Chen in place of the battery pack of McDonald, as modified, and the results of this substitution would have been predictable because Chen’s battery pack is suitable for the same purpose as the battery pack of McDonald, as modified. Thus, this modification is obvious under KSR Rationale B – simple substitution of one known, equivalent element for another to obtain predictable results. Here, Chen is evidence that one of ordinary skill in the art can configure a circular saw driven by a brushless motor having a rated voltage of 18 V, so this modification is within the capabilities of one of ordinary skill in the art.
Moreover, there are reasons to carry out this modification. Consider a power tool manufacturer that has already ordered several of the battery packs of Chen, or that has these battery packs on hand from use of a different style of power tool – this manufacturer is motivated to design cutting tools to be usable with the battery packs already available, which in this example is battery packs having a rated voltage of 18V. As such, a manufacturer that already possesses battery packs having a rated voltage of 18V as taught by Chen is motivated to continue to manufacture tools compatible with these battery packs. Similarly, consider a user that has purchased several of the battery packs as disclosed by Chen, and the user needs a new cutting tool – this user is motivated to select a tool compatible with the batteries already on hand. As such, compatibility with existing 18V rated voltage battery packs provides a motivation to modify the cutting tool of McDonald, as modified, to be used with a 18V rated battery pack.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over McDonald in view of Brazell and Watts as applied to claim 2 above, and further in view of US Pub. No. 2011/0185581 A1 to Xing et al.
Regarding claim 12, McDonald, as modified, discloses that the housing further comprises a shield disposed on a peripheral side of the saw blade 12 (see the annotated Fig. above; see also Fig. 5), the base plate 60 extends along a first plane (see Fig. 1), in a direction perpendicular to the first plane (i.e., an upward direction from the base plate 60 relative to Fig. 1, with the figure oriented with the reference characters upright), a top of the shield is close to the base plate 60 relative to the top of the grip 35 (this limitation is satisfied because the top of the shield is closer to the top of the grip than the base plate is to the top of the grip), and a height difference between the top of the grip 35 and the top of the shield in the direction perpendicular to the first plane is some undisclosed value (see Fig. 1).
Regarding claim 13, McDonald, as modified, discloses that the liquid storage device is at least partially located on the shield (this feature is satisfied by the modification of McDonald in view of Brazell as discussed above in regards to claim 1).
McDonald, as modified, however, fails to disclose that the height difference is greater than or equal to 100 mm as required by claim 12.
Regardless, whereas McDonald, as modified, teaches a grip configuration that is slightly behind the shield, Xing teaches a grip configuration that is located more above the shield (compare the grip positions in Fig. 3 of McDonald and Fig. 2 of Xing, where the grip 14 is above shield 31). Xing teaches that providing the grip above the shield is advantageous because it aids in creating better balance of the saw and makes the device easier to hold (see paragraph 29). Moving the grip to the top of the shield rather than slightly behind the shield increases the height difference between the top of the grip and the top of the shield, as is evident from compares Fig. 3 of McDonald with Fig. 2 of Xing.
It would have been obvious to one of ordinary skill in the art to provide grip of McDonald, as modified, to be in the position of the grip of Xing, which is above the shield, in order to improve the balance of the tool and make the tool easier to handle. Further, while this modification increases the height difference between the top of the grip and the top of the shield by moving the top of the handle to a higher location, the modification still does not explicitly disclose the magnitude of the height difference. Regardless, providing a height difference that is greater than or equal to 100 mm is merely a design choice based on the overall size of the cutting tool. Scaling up the size of the power tool (e.g., to accommodate particularly large users) increases the height difference, while scaling down the size of the power tool (e.g., to accommodate small users) decreases the height difference. Further, the greater the heigh difference, the more space that is available for a user’s hand, noting that the space accommodates a trigger (see trigger 45 in McDonald and trigger visible in Figs. 1-2 of Xing). Providing a height difference of greater than or equal to 100 mm is obvious because providing greater height difference allows clearance for a user to position his or her hand around the grip, allows clearance for the user to move his or her finger to compress and release the trigger, and allows for the grip to have sufficient girth to be comfortable in the user’s hand – all of these factors must be accommodated in selected the height difference between the top of the grip and the top of the shield. A design for user with large hands, for example, will require a large clearance between the shield and grip, will require a large clearance for the user to squeeze the trigger, and will require the grip to have a large girth to be comfortable in the user’s hands. As such, the recited height difference is obvious at least when designing the grip to be comfortable in the hands of a large user.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2023/0116313 A1 to McDonald et al. in view of EP 2 236 234 A1 to Brazell et al., US Pat. No. 4,589,208 to Iwasaki et al., and GB 2 438 597 A to Watts.
Regarding claim 14, McDonald discloses a cutting tool 10 (see Fig. 1), comprising:
a housing (see the annotated Fig. 1 above indicating the housing) having a grip 35 and an accommodation part 20;
an electric motor 25 supported by the housing within the accommodation portion 20 (see Fig. 5, the Abstract, and paragraph 21);
an accessory mounting portion comprising a shaft 190, the shaft 190 configured to be connected to a saw blade 12 (see Fig. 5, where the shaft 190 is in fact connected to the saw blade 12, such that the shaft 190 is necessarily ‘configured to be’ connected to the saw blade 12; note also that the accessory mounting portion is any portion that comprises a shaft);
a base plate 60 disposed at a bottom of the housing (see Fig. 1) and having a mounting hole 65 for the saw blade 12 to pass through (see Fig. 4 and paragraph 23);
a power interface 50 configured to be connected to a power supply device 55 (see Fig. 1 and paragraph 21);
wherein the electric motor 25 is a brushless motor (see paragraph 21).
McDonald fails to disclose that the cutting tool comprises a liquid storage system comprising a liquid storage device, the liquid storage device configured to store a liquid and detachably mounted on the housing, wherein a top of the liquid storage device is closer to the base plate than a top of the grip is to the base plate, and a distance between the top of the grip and the top of the liquid storage device is greater than or equal to 35 mm, as required by claim 14. Also, McDonald does not explicitly disclose that the power interface is detachably connected to the power supply device, so regardless of what Fig. 1 may suggest to one of ordinary skill in the art, for examination purposes the examiner interprets McDonald as failing to disclose that the power interface is configured to be detachably connected to the power supply device as required by claim 14.
First, Brazell teaches a cutting tool 10 comprising a liquid storage system comprising a liquid storage device 48 (see Fig. 1), the liquid storage device 48 configured to store a liquid (see Fig. 1 and paragraph 39) and detachably mounted on a shield 44 of a housing (see Fig. 1 and paragraphs 30 and 39). Brazell teaches that providing a liquid storage system that comprises a liquid storage device configured to store a liquid and detachably mounted to a shield of a housing is advantageous because it can be desirable to cool the blade of the circular saw using a coolant such as water (see paragraph 2).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the cutting tool of McDonald with a liquid storage system comprising a liquid storage device configured to store a liquid and detachably mounted to the shield of the housing of McDonald in view of the teachings of Brazell. This modification is advantageous because it provides a structure for cooling the blade of the circular saw of McDonald, which is known to be desirable per Brazell.
Second, Iwasaki teaches a power interface 1b that is configured to be detachably connected to a power supply device (see col. 3, lines 32-33). Configuring the power interface to be detachably connectable to a power supply device, such as a battery, is advantageous because this modification allows for removing a first battery from the cutting tool to replace with a fresh battery when the first battery runs out of power. Thus, the amount of down-time is reduced compared to having a non-removable battery where the tool experiences downtime during charging.
Therefore, it would have been obvious to one of ordinary skill in the art to configure the power interface of McDonald to be detachably connected to the power supply device in view of the teachings of Iwasaki. This modification allows for exchanging a first power supply device (here, a battery pack) with a replacement power supply device when the first power supply device runs out of power, thereby reducing tool downtime by enabling exchanging of one battery pack for another. This modification is further advantageous in case an initial battery pack becomes damaged, such as by overcharging, repeated use, etc., since this modification allows replacing the damaged battery pack with a healthy battery pack.
Still, McDonald as modified above fails to disclose that a top of the liquid storage device is closer to the base plate than a top of the grip is to the base plate, and a distance between the top of the grip and the top of the liquid storage device is greater than or equal to 35 mm as required by claim 14.
Watts teaches that the volume of a liquid storage device 1 for a cutting tool can be selected from a wide range of values (see page 10, lines 6-7, disclosing a range of volumes whose greatest value is eight times the least value). The volume of a liquid storage device is a function of the dimensions of the liquid storage device, including the height of the liquid storage device. Moreover, the volume of a liquid storage device is a tradeoff between competing factors. The greater the volume of the liquid storage device, the longer duration of cutting is permitted between re-fills of the liquid storage device. On the other hand, the greater the volume of the liquid storage device, the heavier and more cumbersome both the liquid storage device and the cutting tool as a whole become. Considering the range of volumes taught by Watts, 0.5 liters of water weighs only 1.1 pounds, compared to 4 liters of water weight 8.8 pounds, such that there is nearly an 8 pound difference in weight between the least and greatest volumes.
Therefore, it would have been obvious to one of ordinary skill in the art to select a height of the liquid storage device of McDonald, as modified, to be less than a height of the grip by an amount of at least 35 mm in view of the teachings of Watts in order to arrive at an optimal volume of the liquid storage device that balances weight and ease of movement of the cutting tool (favoring a lesser height and thus less volume) against the operating time between refills of the liquid storage device (favoring a greater height and thus greater volume). First, one of ordinary skill in the art has knowledge of geometry and understands that volume is a factor of height, such that altering a height of the liquid storage device is one of only three options for altering the volume of the liquid storage device (the other two options including altering the width and depth of the liquid storage device). Therefore, one of ordinary skill in the art is motivated to modify the height of the liquid storage device in order to alter the volume of the liquid storage device. Second, one of ordinary skill in the art understands that the volume of the liquid storage device is a tradeoff between (i) ease of handling of the cutting tool and the liquid storage device (favoring a small volume; e.g., potentially saving near 8 pounds in weight when moving from a volume of 4 liters to a volume of 1 liter) and (ii) the time between refilling of the liquid storage device (favoring a large volume). Indeed, in this case, a manufacturer is motivated to offer the cutting tool with multiple options for the volume of the liquid storage device, including a very small volume (e.g., 0.5 liter) when maneuverability is paramount, such as when performing cuts at a remote location that necessitates extended carrying of the cutting tool to the job site, and including a range of alternative larger volumes, so that a user can select a particular liquid storage device for a desired application. Therefore, it would have been obvious to one of ordinary skill in the art to select a height of the liquid storage device of McDonald, as modified, to be less than a height of the grip by an amount of at least 35 mm in view of the teachings of Watts in order to arrive at an optimal volume of the liquid storage device, at least in some particular use cases such as when remote operation of the device is prioritized.
Claim(s) 15-16 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2023/0116313 A1 to McDonald et al. in view of EP 2 236 234 A1 to Brazell et al. and GB 2 438 597 A to Watts.
Regarding claim 15, McDonald discloses a cutting tool 10 (see Fig. 1), comprising:
a housing (see the annotated Fig. 1 above indicating the housing) having a grip 35 and an accommodation part 20;
an electric motor 25 supported by the housing within the accommodation portion 20 (see Fig. 5, the Abstract, and paragraph 21);
an accessory mounting portion comprising a shaft 190, the shaft 190 configured to be connected to a saw blade 12 (see Fig. 5, where the shaft 190 is in fact connected to the saw blade 12, such that the shaft 190 is necessarily ‘configured to be’ connected to the saw blade 12; note also that the accessory mounting portion is any portion that comprises a shaft);
a base plate 60 disposed at a bottom of the housing (see Fig. 1) and having a mounting hole 65 for the saw blade 12 to pass through (see Fig. 4 and paragraph 23).
Regarding claim 16, McDonald discloses that a battery pack interface 50 is disposed at a rear end of the accommodation portion 20 (see Fig. 1; see also the discussion of the broadest reasonable interpretation of ‘disposed at’ in claim 2 above), and the accessory mounting portion (i.e., the shaft 190) is disposed at a side end of the accommodation portion 20 (see Figs. 3 and 5).
Regarding claim 19, McDonald discloses that the shaft 190 is rotatable about a first axis (an axis passing through the shaft 190 in a left-right direction relative to Fig. 5).
Regarding claim 20, McDonald discloses that the base plate 60 extends along a first plane (see Fig. 5, where, with the figure oriented with the reference characters facing upright, the ‘first plane’ extends in a left-right direction along the plane of the page), and that there is a direction perpendicular to the plane (this direction being approximately in a vertical direction relative to Fig. 5).
McDonald fails to disclose that the cutting tool comprises a liquid storage system comprising a liquid storage device, the liquid storage device configured to store a liquid and detachably mounted on the housing, and a system control member disposed on a liquid flow path of the liquid storage system and used for controlled a flow state of the liquid in the liquid storage device, wherein a top of the liquid storage device is closer to the base plate than a top of the grip is to the base plate, and a distance between the top of the grip and the top of the liquid storage device is greater than or equal to 35 mm, as required by claim 15. McDonald also fails to disclose: that the liquid storage device is at least partially disposed above the accessory mounting portion as required by claim 18; when the liquid storage device is mounted on the housing, a projection of the liquid storage device along the first axis is within a projection of an outer contour of the housing as required by claim 19; and that the top of the liquid storage device is closer to the base plate relative to the top of the grip in the direction perpendicular to the first plane as required by claim 20.
Brazell teaches a cutting tool 10 comprising a liquid storage system comprising a liquid storage device 48 (see Fig. 1), the liquid storage device 48 configured to store a liquid (see Fig. 1 and paragraph 39) and detachably mounted on a shield 44 of a housing (see Fig. 1 and paragraphs 30 and 39), and Brazell further teaches a system control member (valve 130; a valve is the corresponding structure of the system control member disclosed in the present application) disposed on a liquid flow path of the liquid storage system (see Fig. 4) and used for controlled a flow state of the liquid in the liquid storage device (see Fig. 4 and paragraph 44). [Claim 15] Brazell also teaches: that the liquid storage device 48 is at least partially disposed above an accessory mounting portion (including shaft 34; see Fig. 1) [claim 18]; and that when the liquid storage device 48 is mounted on the housing (as shown in Fig. 1), a projection of the liquid storage device 48 along a first axis about which the shaft 34 rotates is within a projection of an outer contour of the housing (this feature is satisfied because the liquid storage device 48 at least partially overlaps with the outer contour of the housing when projected onto the rotational axis of the shaft 34 as can be seen in Fig. 1) [claim 19]. Brazell teaches that providing a liquid storage system that comprises a liquid storage device configured to store a liquid and detachably mounted to a shield of a housing is advantageous because it can be desirable to cool the blade of the circular saw using a coolant such as water (see paragraph 2). Moreover, providing the system control member is advantageous because a user can operate the system control member to control the flow of coolant to the blade (see paragraph 44), which is advantageous for reasons including that a user is able to stop the flow of coolant when the cutting tool is not being used to avoid waste of the coolant.
Therefore, it would have been obvious to one of ordinary skill in the art to provide the cutting tool of McDonald with a liquid storage system comprising a liquid storage device configured to store a liquid and detachably mounted to the shield of the housing of McDonald, as well as to provide a system control member, in view of the teachings of Brazell. This modification is advantageous because it provides a structure for cooling the blade of the circular saw of McDonald, which is known to be desirable per Brazell, and also because the system control member allows a user to turn on or off the flow of coolant. Turning off the flow of coolant is advantageous for preventing waste of the coolant when the cutting tool is not in use, or when a cut does not need coolant.
Still, McDonald as modified above fails to disclose that a top of the liquid storage device is closer to the base plate than a top of the grip is to the base plate, and a distance between the top of the grip and the top of the liquid storage device is greater than or equal to 35 mm, as required by claim 15. McDonald as modified above also fails to disclose that the top of the liquid storage device is closer to the base plate relative to the top of the grip in the direction perpendicular to the first plane as required by claim 20.
Watts teaches that the volume of a liquid storage device 1 for a cutting tool can be selected from a wide range of values (see page 10, lines 6-7, disclosing a range of volumes whose greatest value is eight times the least value). The volume of a liquid storage device is a function of the dimensions of the liquid storage device, including the height of the liquid storage device. Moreover, the volume of a liquid storage device is a tradeoff between competing factors. The greater the volume of the liquid storage device, the longer duration of cutting is permitted between re-fills of the liquid storage device. On the other hand, the greater the volume of the liquid storage device, the heavier and more cumbersome both the liquid storage device and the cutting tool as a whole become. Considering the range of volumes taught by Watts, 0.5 liters of water weighs only 1.1 pounds, compared to 4 liters of water weight 8.8 pounds, such that there is nearly an 8 pound difference in weight between the least and greatest volumes.
Therefore, it would have been obvious to one of ordinary skill in the art to select a height of the liquid storage device of McDonald, as modified, to be less than a height of the grip by an amount of at least 35 mm in view of the teachings of Watts in order to arrive at an optimal volume of the liquid storage device that balances weight and ease of movement of the cutting tool (favoring a lesser height and thus less volume) against the operating time between refills of the liquid storage device (favoring a greater height and thus greater volume). First, one of ordinary skill in the art has knowledge of geometry and understands that volume is a factor of height, such that altering a height of the liquid storage device is one of only three options for altering the volume of the liquid storage device (the other two options including altering the width and depth of the liquid storage device). Therefore, one of ordinary skill in the art is motivated to modify the height of the liquid storage device in order to alter the volume of the liquid storage device. Second, one of ordinary skill in the art understands that the volume of the liquid storage device is a tradeoff between (i) ease of handling of the cutting tool and the liquid storage device (favoring a small volume; e.g., potentially saving near 8 pounds in weight when moving from a volume of 4 liters to a volume of 1 liter) and (ii) the time between refilling of the liquid storage device (favoring a large volume). Indeed, in this case, a manufacturer is motivated to offer the cutting tool with multiple options for the volume of the liquid storage device, including a very small volume (e.g., 0.5 liter) when maneuverability is paramount, such as when performing cuts at a remote location that necessitates extended carrying of the cutting tool to the job site, and including a range of alternative larger volumes, so that a user can select a particular liquid storage device for a desired application. Therefore, it would have been obvious to one of ordinary skill in the art to select a height of the liquid storage device of McDonald, as modified, to be less than a height of the grip by an amount of at least 35 mm in view of the teachings of Watts in order to arrive at an optimal volume of the liquid storage device, at least in some particular use cases such as when remote operation of the device is prioritized. As a result of this modification, the top of the liquid storage device is closer to the base plate relative to the top of the grip in the direction perpendicular to the first plane as required by claim 20, since the top of the liquid storage device is at least 35 mm less than the top of the grip.
Response to Arguments
Applicant’s arguments with respect to the rejections of claim(s) 1, 14, and 15 under 35 USC 103, have been considered but are moot in view of the rejections above. The Applicant’s arguments fail to address the teachings of Watts, which teaches that the volume of a liquid storage device can be varied substantially. Since the Applicant’s arguments do not address the modifications in view of Watts as set forth in the rejections of claims 1, 14, and 15, the arguments are not persuasive.
Conclusion
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/EVAN H MACFARLANE/Examiner, Art Unit 3724