DETAILED ACTION
Claim Rejections - 35 USC § 112
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.
Claim 11 is 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.
The new limitation for claim 11, that when the portable vacuum cleaner is mounted to the upflow duct and the upflow duct extends upwardly from the surface cleaning head, a vertical axis, which extends through a location at which a driving handle of the vacuum cleaner is mounted to a remainder of the vacuum cleaner, is rearward of the air treatment chamber, the filter, and the suction motor is unclear because the term “extends upwardly” allows for a wide range of potential relative orientations (for instance, extending at 45 degrees relative to the ground or floor surface would still be considered to extend upwardly from the head). As best understood by the examiner, the limitation is considered to be intended to define that the upflow duct extends vertically upward from the surface cleaning head, and will be treated as such for the sake of the current Office Action.
Additionally, the limitation that the driving handle is wholly rearward of the air treatment chamber, the filter, and the suction motor is also unclear because the handle is not shown to be positioned “rearward” of those components, in the sense that it is not directly behind them. As best understood by the examiner, the limitation is considered to be intended to define that the handle is positioned rearward, in a horizontal direction, than the horizontal location of the air treatment chamber, the filter, and the suction motor, and will be treated as such for the sake of the current Office Action.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 3, 4, 6-12 and 14-22 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (6,766,558) in view of Hakan et al. (8,225,456; earliest priority 10 February 2003), Shaver et al. (2004/0216264), Fester (7,708,789) and Cockburn et al. (6,546,592).
Regarding claims 1, Matsumoto discloses a portable vacuum cleaner (Figs. 2-4) comprising a portable vacuum cleaner (1), a surface cleaning head (4) and an upflow duct (3), the upflow duct has an air inlet end at the connection to the head and an upper air outlet (at the connection to the portable vacuum cleaner), the portable vacuum cleaner comprising:
(a) an air flow passage extending from a dirty air inlet to a clean air outlet, a suction motor (1a) positioned in the air flow path;
(b) an air treatment chamber (5; disclosed as having the same internal components of the first embodiment in Col. 10, lines 1-5, which is represented by Figs. 1-19) positioned in the air flow passage upstream from the suction motor and comprising a first (lower) end, a second opposed (upper) end, a longitudinal axis extending an axial distance in an axial direction from the first end to the second end, an air treatment chamber air inlet (5a in Fig. 3) and an air treatment chamber air outlet (5b in Fig. 3), the first end is openable (as shown in Figs. 16-18) and comprises an openable first (lower) end wall and the second end comprises a second (upper) end wall and the air treatment chamber air outlet, which comprises a port (aperture through which pipe 10b extends in Fig. 3) in the second end wall;
(d) a body (1) including the suction motor, the suction motor is positioned in the air flow passage downstream from the filter, the suction motor having a motor axis and a motor inlet end (lower end); and,
(e) a handle (10a) provided on the body, and wherein the longitudinal axis and the motor axis extend in the same direction (all clearly shown in Fig. 25).
- Regarding the clause previously added to claim 1 (filed 8 December 2025), Matsumoto discloses that the upflow duct (3) is “coupled” to the portable vacuum cleaner (Col. 5, lines 22-24, relative to the first embodiment), which suggests that the portable vacuum cleaner may be removed from the upflow duct, and Matsumoto also discloses, when the portable vacuum cleaner is mounted to the upflow duct (Fig. 25) and the upflow duct extends upwardly from the surface cleaning head, the upper air outlet of the upflow duct is positioned a distance above the surface cleaning head that is greater than the axial distance (of the air treatment chamber) such that the portable vacuum cleaner will be solely supported by the upflow duct
- However, Matsumoto fails to disclose that a) the surface cleaning head comprises a pivoting connector, b) a filter between the air treatment chamber and the motor, c) fails to specifically disclose that the portable vacuum cleaner is removable and d) fails to the handle being connected to the body at first and second ends (newly added limitation on 2 April 2026).
Hakan discloses a similar vacuum cleaner, also having a surface cleaning head, portable vacuum cleaner and upflow duct connecting the two, and teaches that the head is pivotally connected to the upflow duct, which is very old and well known in the art of vacuum cleaners to allow for tilting of the head relative to the handle for maneuvering of the vacuum cleaner along a floor surface. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the connection of the head to the upflow duct of Matsumoto with a similar pivoting connector, as is very well known in the art, to allow for tilting of the head relative to the handle for maneuvering of the vacuum cleaner.
Further, Fester discloses another similar vacuum cleaner having a cyclonic separator and discloses that a cylindrical filter is also provided downstream from the cyclonic separator, to function as well-known filter for further preventing any dust or debris from reaching the suction motor to prevent damage thereto. Fester further teaches that the cylindrical filter is aligned with the outlet of the cyclone chamber, similar to the chamber 5 of Matsumoto, and being understood to anyone of ordinary skill in the art that a cylindrical filter may provide substantially more surface area than a more basic flat filter. Therefore, it further would have been obvious to one of ordinary skill in the art at the time the invention was made to provide a similar filter between the cyclonic separator and the motor of Matsumoto, as taught by Fester, and to provide advantages of increased filter surface area, which will reduce clogging and maintain optimal airflow through the filter. Thus, when the filter taught by Fester is provided for Matsumoto, the filter will be positioned in the air flow passage downstream from the air treatment chamber air outlet wherein air exits thorough the port in the second end wall in the axial direction at a location upstream of the filter and will comprise a first end, an axially spaced apart second end, a sidewall that extends between the first end of the filter and the axially spaced apart second end, wherein the sidewall comprises a filter material (86) surrounding an open interior providing a filtered air flow path, the axially spaced apart second (lower) end is open whereby, after passing through the sidewall, air enters the filtered air flow path and passes through the open axially spaced apart second end. Further, when provided to the cleaner of Matsumoto, between the cyclonic chamber and the motor, in a similar chamber taught by Fester, the longitudinal axis and the motor axis will both extend through the open interior of the filter taught by Fester.
Although Matsumoto does not specifically disclose that the portable vacuum cleaner is removable from the upflow duct, Shaver discloses another very similar portable vacuum cleaner, that may be attached to a suction head via an upflow duct (Fig. 19D), or may be removed from the upflow duct for use as a handheld cleaner with a range of different accessories and connections for different applications (Figs. 19A-C and 19E-G). Therefore, it further would have been obvious to one of ordinary skill in the art at the time the invention was made to configure the portable vacuum cleaner of Matsumoto to be removable from the upflow duct, as taught y Shaver, to allow for use as a handheld cleaner with a range of different accessories and connections for different applications, to increase the functionality of the cleaner.
Regarding the handle (only applicable to claim 1), when the embodiment of Fig. 25 of Matsumoto is configured to be removable for use as a handheld cleaner, as taught by Shaver and discussed above, it would also be obvious for the removable handheld cleaner to optionally include other handles than those shown by Matsumoto, for instance similar to Shaver, or other known alternatives for handheld vacuum cleaner, like Cockburn. Both of Shaver and Cockburn disclose handles with a hand grip portion extending between first and second ends of the handle, each of the first and second ends being secured to the portable vacuum cleaner whereby an enclosed finger gap is provided between the hand grip portion and the end wall. Therefore, it further would have been obvious to one of ordinary skill in the art at the time the invention was made to provide alternative handles to the cleaner of Matsumoto when configured to optionally function as a handheld cleaner, wherein the handle (2) of Cockburn, when placed on a rear of the body ((4), similar to the location of Matsumoto Fig. 25, with the handle (10a) connected to a rear of the body (1), would provide the hand grip portion, connected to the body at first and second ends, with an enclosed finger gap, and in such a location that the longitudinal axis and the motor axis (of body 1 of Matsumoto) would each extend through the open interior of the filter (as discussed above), the finger gap (as provided by the handle of Cockburn), and the hand grip portion of the handle (due to the location of the handle and similar axes of Cockburn also passing through the finger gap and grip portion of the handle), and the hand grip portion is transverse to the longitudinal axis and the motor axis *by laying across the axis where it passes through the grip).
Regarding claims 9 and 11 (11 is substantial duplicate of claim 1, with the addition of the limitations of claim 9), Fester further discloses that the filter is positioned in a filter housing (cyclone insert 80) and an annular space is located between the filter housing and the filter (clearly seen in Fig. 4).
Additionally, relating to the amended claim limitations of claim 11 (dated 2 April 2026), the handles disclosed by Matsumoto, in Figs. 10 and 25 (assumed to have the same relative structure in both Figs. with substantially more detail for the handle in Fig. 10), appear to read on the new limitations that when the portable vacuum cleaner is mounted to the upflow duct and the upflow duct extends upwardly from the surface cleaning head, a vertical axis (X), which extends
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through a location at which a driving handle (considered to only be portion 10a, located rearward of controls 10g) of the vacuum cleaner is mounted to a remainder of the vacuum cleaner, is rearward of the air treatment chamber, the filter, and the suction motor, and the driving handle is wholly rearward of the air treatment chamber, the filter, and the suction motor (as shown by the space between lines X and Y).
Additionally/alternatively, Matsumoto also discloses an alternate handle location in Figs. 23 and 24, which offsets the handle mounting position to rearward of the body (or location of body 1 for embodiment of Fig. 25), such that the alternative location would also position the handle to meet all of the new limitations of claim 11.
Regarding claim 3, Matsumoto further provides the first end of the air treatment chamber with a radial center, with the motor axis extending through the radial center (clearly shown to be axially aligned in Fig. 25).
Regarding claims 4 and 12, Matsumoto further discloses that the motor axis is co-axial with the longitudinal axis (clearly shown to be axially aligned in Fig. 25).
Regarding claims 6 and 14, although Matsumoto fails to disclose a location of an outlet of the portable vacuum cleaner body, Matsumoto does disclose that the body has a first end and an axially spaced apart second end, the axially spaced apart second end has an end face and the handle is provided on the end face (as shown in Fig. 25). Hakan and Shaver both further discloses, on very similar handheld portable vacuum cleaners, that the outlet is positioned on the housing at a location rearward of the motor, which is in the direction of airflow out of the motor. Therefore, it further would have been obvious to one of ordinary skill in the art at the time the invention was made to position the outlet of the body of Matsumoto in a similar location, as taught by Hakan and Shaver, being known in the art and to simplify the airflow from the motor, which will locate the outlet at the axially spaced apart second end.
Regarding claims 7 and 15, Matsumoto, as modified by Shaver, further discloses that the portable vacuum cleaner is operable both when mounted to the upflow duct and when removed from the upflow duct.
Regarding claims 8 and 16, Matsumoto, as modified by Shaver, further discloses that the portable vacuum cleaner is removably mountable to the upflow duct at the upper air outlet.
Regarding claims 10 and 17, Matsumoto further discloses that the air treatment chamber comprises a cyclone.
Regarding claims 18 and 19, Matsumoto, as modified by Fester, further discloses that, in operation to clean a floor, the suction motor is positioned above the filter.
Regarding claim 20, Matsumoto, as modified by Fester, further discloses that the motor inlet end faces the axially spaced apart second end of the filter (best seen in Fig. 11A).
Regarding claims 21 and 22, the filter taught by Fester, and applied to the cleaner of Matsumoto as discussed supra, is configured such that after exiting the port in the second end wall, air travels outwardly into the annular space between the filter housing and the sidewall of the filter.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 7 May 2024 and 11 December 2024 have been considered by the examiner. However, the examiner notes that the IDS documents include an extensive number of references, many/most of which have little to no relevance to the specifics of the claimed invention of the current application. Although the examiner has reviewed the applicant’s submitted references, the examiner does request that the applicant submit additional disclosure of any particularly relevant references to the current claimed invention for more focused review by the examiner.
Response to Arguments
Applicant’s arguments, see Remarks, filed 2 April 2026, with respect to the prior art rejections of all pending claims under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Cockburn, as applied above, to read on the new limitations of claim 1. Additionally, the previously applied Matsumoto reference also makes obvious the claim amendments for claim 11.
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 BRYAN R MULLER whose telephone number is (571)272-4489. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN R MULLER/Primary Examiner, Art Unit 3723 3 June 2026
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