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 .
Claim Status
This Office action is in response to the Request for Continued Examination filed 2/13/2026. Claims 1-23 and 25 are currently pending. Claims 1, 20, and 23 have been amended. The cancellation of claim 24 is acknowledged. Claim 25 has been newly added.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/13/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-23 and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the limitation “wherein the U-shape is visible in a side-view of the handheld electric tool parallel to the insertion axis” comprises new matter not previously disclosed in the specification as originally filed. Fig. 2A shows a side-view of the handheld power tool with the insertion axis indicated as the broken line 11. As can be seen in Fig. 2A, the insertion axis is perpendicular to the direction of the side-view (which is into the Figure). However, the limitation “a side-view of the handheld electric tool parallel to the insertion axis” requires that the side-view and the insertion axis be parallel which means the insertion axis would be into the side of the tool, not the top of the tool. There is no embodiment disclosed in the specification in which the battery is inserted into the side of the tool. Perhaps it is possible that the top of the tool is interpreted instead to be a side of the tool. While the remarks dated 2/13/2026 make it clear that applicant is not interpreting the side of the tool to instead be the top of the tool, there is also no support in the specification for the housing being constructed in a U-shaped when the tool is viewed top-down. Fig. 3A depicts a top-down view of the tool in the region where the battery is inserted. As can be seen in Fig. 3A, there is no U-shaped section of the housing. At the very best, the housing in the region of the opening can be described as having a rounded triangular shape. Therefore, it cannot be concluded that the inventors had possession of the claimed invention at the time the invention was filed. Claims 2-23 and 25 are rejected for including the same limitation or depending from a claim comprising the limitation.
Regarding claim 25, the limitation “said base length is greater than said insertion opening width” comprises new matter not previously disclosed by applicant in the specification as originally filed. Figs. 2B shows the base indicated at 68 and the insertion opening width is the distance between the walls 63, 64. Since the walls 63, 64 extend upwards at an angle away from each other, it is clear that the insertion opening width is greater than the base length. Furthermore, there is no mention in the written description of the base length being greater than the insertion opening width. Therefore, it cannot be concluded that the inventors had possession of the claimed invention at the time the invention was filed.
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 25 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.
Regarding claim 12, the limitation “said insertion opening has an insertion opening width” is vague and indefinite because it is not clear is the limitation is referring to a new insertion opening width or the insertion opening width already recited in claim 1. In order to further prosecution, the limitation has been interpreted to be referring to the insertion opening width recited in claim 1.
In the interest of compact prosecution, the following rejection is set forth assuming applicant has written the limitation “wherein the U-shape is visible in a side-view of the handheld electric tool parallel to the insertion axis” instead as “wherein the U-shape is visible in a side-view of the handheld tool perpendicular to the insertion axis.” Note that no 112(b) rejection is being made because the limitation is not inconsistent with the rest of the limitations of the independent claims.
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, 7, 12, 13, 17-19, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Elfner (US 2015/0038064 A1) in view of Heinzelmann (US 2012/0067608 A1).
Regarding claim 1, Elfner discloses a handheld electric tool (1 – Fig. 1) defining a longitudinal vertical plane (a plane extending up-down and left-right in Fig. 1 that passes through the center of 13), the handheld electric tool comprising: a housing (2 – Fig. 1) having an outer wall (the outer wall of 2 – Fig. 1); a receptacle (the receptacle of 2 in which 13 is disposed as seen in Fig. 1; para. 0035) for arranging a replaceable battery pack (13 – Fig. 1; para. 0035); the replaceable battery pack including an insertion section (the portion of 13 not exposed in Fig. 1) and a grip section (the portion of 13 exposed in Fig. 1); the replaceable battery pack being configured to be inserted along an insertion section axis (an axis that overlies the longitudinal axis of the receptacle of 2 – Fig. 1) into said receptacle (para. 0035); said receptacle including an insertion receiving region (the portion of the receptacle of 2 that does not expose a portion of 13 – Fig. 1) formed to be compatible with the insertion section of the replaceable battery pack and a grip section receiving region (the portion of the receptacle of 2 that exposes a portion of 13 – Fig. 1); said insertion receiving region of said receptacle being disposed inside said housing and defining an insertion opening formed in said outer wall of said housing through which said battery pack is configured to be inserted into the handheld electric tool (see Fig. 1, 2 delimits an opening); the insertion section of the replaceable battery pack when inserted into said receptacle being arranged within said outer wall of said housing (see Fig. 1, as defined above the insertion section is the portion of 13 not exposed and thus within the wall of the outer housing); the grip section of the replaceable battery pack when inserted into said receptacle being arranged outside said outer wall of said housing (see Fig. 1, as defined above the grip section is the portion of 13 exposed and thus outside the wall of the outer housing); said grip section receiving region being disposed outside of said housing (since this portion of the receptacle of 2 does not cover 13, it is outside of said housing); said outer wall of said housing being formed such that said outer wall delimits said grip section receiving region in a first section (see annotated Fig. 1) and in a second section (see annotated Fig. 1) in a radial direction with respect to the insertion axis; and, wherein said first section of said outer wall and said second section of said outer wall are arranged such that said outer wall forms two freely accessible free spaces on respective sides of said longitudinal vertical plane (see annotated Fig. 1, the vertical plane extends parallel to the plane of Fig. 1 and passes through the middle of 13, thus the first and second sections are on opposite sides of the plane) for laterally gripping said replaceable batter pack, such that the grip section of the replaceable battery pack is laterally exposed for an operator to grip via said spaces (see annotated Fig. 1) when the replaceable battery pack is inserted in said receptacle in order to remove the replaceable battery pack (see annotated Fig. 1), wherein said outer wall (the outer wall of 2 – Fig. 1) of said housing (2 – Fig. 1) is constructed in a region of said grip section receiving region (the portion of the receptacle of 2 that exposes a potion of 13 – Fig. 1) of said receptacle in a U-shaped manner (as can be seen in Fig. 1, the left and right sides of the grip section receiving region are higher than the center forming a U-shape); said first section (see annotated Fig. 1 below) and said second section (see annotated Fig. 1 below) of said outer wall form legs of the U-shape and a connecting section forms a base of the U-shape (as is clear from annotated Fig. 1 below); and, said insertion opening is arranged in said connecting section (see annotated Fig. 1 below), wherein the U-shape is visible in a side-view of the handheld electric tool perpendicular to the insertion axis (as seen in annotated Fig. 1 below). In this case it is noted that the battery pack is not a positively recited element of claim 1. Hence, each of the limitations directed to the battery pack simply require that they be capable of being used with the recited battery pack. Although Elfner discloses a specific battery pack, the tool of Elfner is fully capable of being used with a battery pack as set forth in claim 1.
However, Elfner does not disclose said grip section and said first and second section of said outer wall conjointly define respective gaps therebetween to permit ambient air to pass unimpeded laterally through said spaces and said gaps and so cool said battery pack.
Heinzelmann discloses a similar handheld electric tool comprising a housing having an outer wall (the outer wall of 2 – Fig. 1) and a receptacle (6 – Fig. 1) for arranging a battery pack (11 – Fig. 2), wherein the battery back and the outer wall define a gap on each side of the battery pack to permit ambient air to pass unimpeded laterally through gaps and so cool said /battery pack (para. 0037).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the electric tool of Elfner such that there is a gap between the battery pack and outer wall as taught by Heinzelmann in order to allow the battery pack to be air cooled. Note that the combination of Elfner and Heinzelmann would result in the grip section and the first and second section of said outer wall conjointly defining respective gaps therebetween.
Annotated Fig. 1
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Elfner and Heinzelmann further disclose (citations are to Elfner unless otherwise noted):
Claim 2, the replaceable battery pack is formed in an elongate manner (though not completely visible, it is clear that 13 – Fig. 1 is formed in an elongate manner since it must be inserted into the receptacle and has a depth dimension).
Claim 3, said first section (see annotated Fig. 1 above) of said outer wall is arranged at a side of said receptacle (the receptacle of 2 in which 13 is disposed as seen in Fig. 1) facing a tool (7 – Fig. 1) of the handheld electric tool (see Fig. 1) and said second section (see annotated Fig. 1 above) of said outer wall is arranged at a side of said receptacle facing away from said tool (see Fig. 1).
Claim 7, a tool (7 – Fig. 1); a rear handle (3 – Fig. 1) arranged at a side facing away from said tool (see Fig. 1); a front handle (4 – Fig. 1) arranged at a side facing said tool (see Fig. 1); and, said receptacle (the receptacle of 2 in which 13 is disposed as seen in Fig. 1), said first section (see annotated Fig. 1 above) of said outer wall and second section (see annotated Fig. 1 above) of said outer wall being arranged between said rear handle and said front handle (see Fig. 1).
Claim 12, said two freely accessible free spaces (see annotated Fig. 1 above) are located at different sides of a longitudinal plane defined by a longitudinal direction of the handheld electric tool and the insertion axis (see annotated Fig. 1 above, the freely accessible space are on the left and right sides of the tool).
Claim 13, a rear handle (3 – Fig. 1) extending along a handle longitudinal axis and the handle longitudinal axis being arranged at an angle with respect to the insertion axis (see Fig. 1).
Claim 17, the handle longitudinal axis intersects said receptacle (see Fig. 1, the handle longitudinal axis runs from roughly right to left which intersects the receptacle).
Claim 18, the handle longitudinal axis exclusively intersects said grip section receiving region of said receptacle (see note). Note that the handle is curved. In this case, the handle longitudinal axis is interpreted to be an axis on the curve of the handle that intersects the grip section receiving region and not the insertion receiving region.
Claim 19, the electric tool is a garden electric tool (the tool is implemented as a cut-off machine, para. 0033; a cut-off machine is interpreted to be a garden electric tool).
Claim 22, said insertion receiving region (the portion of the receptacle of 2 that does not expose of portion of 13 – Fig. 1) is closed at least at one of a periphery of said insertion receiving region and a base of said insertion receiving region towards an external environment of the handheld electric tool (see Fig. 1, the insertion receiving region is closed at a periphery since there is a wall and appears to be closed at the bottom as well).
Claim 23, this claim recites the same limitations set forth above and is rejected in the same manner with the additional note that said first section and said second sections of Elfner are separated from each other in a peripheral direction with respect to the insertion direction via free spaces (see annotated Fig. 1 above).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Elfner (US 2015/0038064 A1) in view of Heinzelmann (US 2012/0067608 A1) and Wackwitz (US 2013/0196203 A1).
Regarding claim 20, Elfner discloses a system comprising: a replaceable battery pack (13 – Fig. 1); a handheld electric tool (1 – Fig. 1) defining a longitudinal vertical plane (a plane extending up-down and left-right in Fig. 1 that passes through the center of 13), and having a housing (2 – Fig. 1) and a receptacle (the receptacle of 2 in which 13 is disposed as seen in Fig. 1; para. 0035) for arranging said replaceable battery pack (para. 0035); said battery pack including an insertion section (the portion of 13 not exposed in Fig. 1) and a grip section (the portion of 13 exposed in Fig. 1); said battery pack being configured to be inserted along an insertion axis (an axis that overlies the longitudinal axis of the receptacle of 2 – Fig. 1) into said receptacle (para. 0035); said receptacle including an insertion receiving region (the portion of the receptacle of 2 that does not expose a portion of 13 – Fig. 1) formed to be compatible with the insertion section of said battery pack and a grip section receiving region (the portion of the receptacle of 2 that exposes a portion of 13 – Fig. 1); said insertion receiving region of said receptacle being disposed inside said housing (as noted above, this is the portion of the receptacle of 2 that does not expose a portion of 13 – Fig. 1, hence it is clearly disposed inside said housing); said insertion receiving region having an insertion opening formed in an outer wall of said housing through which said battery pack is configured to be inserted into the handheld electric tool (see Fig. 1, 2 delimits an opening); said battery pack has an insertion section (as noted above, the portion of 13 not exposed in Fig. 1) formed to be compatible with said insertion receiving region of said receptacle and a grip section (as noted above, the portion of 13 exposed in Fig. 1); said housing having an outer wall (the outer wall of 2 – Fig. 1); said insertion section of said battery pack when inserted into said receptacle being arranged within said outer wall of said housing (see Fig. 1, as defined above the insertion section is the portion of 13 not exposed and thus within the wall of the outer housing); said grip section of said battery pack when inserted into said receptacle being arranged outside said outer wall of said housing (see Fig. 1, as defined above the grip section is the portion of 13 exposed and thus outside the wall of the outer housing); said grip section receiving region being disposed outside of said housing (since this portion of the receptacle of 2 does not cover 13, it is outside of said housing); said outer wall of said housing being formed such that said outer wall delimits said grip section receiving region in a first section (see annotated Fig. 1 above) and in a second section (see annotated Fig. 1 above) in a radial direction with respect to the insertion axis; and, wherein said first section of said outer wall and said second section of said outer wall are arranged such that said outer wall forms two freely accessible free spaces on respective sides of said longitudinal vertical plane (see annotated Fig. 1, the vertical plane extends parallel to the plane of Fig. 1 and passes through the middle of 13, thus the first and second sections are on opposite sides of the plane) for laterally gripping said replaceable batter pack, such that the grip section of the replaceable battery pack is laterally exposed for an operator to grip via said spaces (see annotated Fig. 1 above) when the replaceable battery pack is inserted in said receptacle in order to remove the replaceable battery pack (see annotated Fig. 1 above), wherein said outer wall (the outer wall of 2 – Fig. 1) of said housing (2 – Fig. 1) is constructed in a region of said grip section receiving region (the portion of the receptacle of 2 that exposes a potion of 13 – Fig. 1) of said receptacle in a U-shaped manner (as can be seen in Fig. 1, the left and right sides of the grip section receiving region are higher than the center forming a U-shape); said first section (see annotated Fig. 1 above) and said second section (see annotated Fig. 1 above) of said outer wall form legs of the U-shape and a connecting section forms a base of the U-shape (as is clear from annotated Fig. 1 above); and, said insertion opening is arranged in said connecting section (see annotated Fig. 1 above), wherein the U-shape is visible in a side-view of the handheld electric tool perpendicular to the insertion axis (as seen in annotated Fig. 1 above).
However, Elfner does not disclose said grip section and said first and second section of said outer wall conjointly define respective gaps therebetween to permit ambient air to pass unimpeded laterally through said spaces and said gaps and so cool said battery pack.
Heinzelmann discloses a similar handheld electric tool comprising a housing having an outer wall (the outer wall of 2 – Fig. 1) and a receptacle (6 – Fig. 1) for arranging a battery pack (11 – Fig. 2), wherein the battery back and the outer wall define a gap on each side of the battery pack to permit ambient air to pass unimpeded laterally through gaps and so cool said battery pack (para. 0037).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the electric tool of Elfner such that there is a gap between the battery pack and outer wall as taught by Heinzelmann in order to allow the battery pack to be air cooled. Note that the combination of Elfner and Heinzelmann would result in the grip section and the first and second section of said outer wall conjointly defining respective gaps therebetween.
However, Elfner, as modified by Heinzelmann, does not disclose that a width of the grip section of the battery pack is greater than a width of said insertion section, so that said grip overhangs said insertion section.
Wackwitz teaches a battery pack (14 – Fig. 3) including an insertion section (60 – Fig. 3) and a grip section (62 – Fig. 3), wherein a width of said grip section is greater than a width of said insertion section, so that said grip section overhangs said insertion section (see Fig. 3, the width of 60 is clearly wider than the width of 62), wherein an insertion opening (the opening of 16 – Fig. 2) of a tool disclosed by Wackwitz is smaller than the width of the grip section (as is clearly seen in Fig. 1 where 62 presses against 30) and said grip section when inserted into a receptable of the tool being arranged outside an outer wall and overhanging the insertion opening (again as is clearly seen in Fig. 1 where 62 presses against 30). One of ordinary skill in the art, upon reading the teaching of Wackwitz, would have recognized that providing the grip section with a greater width than the insertion section such that the grip section overhangs the insertion opening provides the benefits of allowing larger hands to more easily handle and pull out the battery pack.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the battery pack of Elfner such the width of the grip section is larger than the width of the insertion section and overhangs the insertion opening as suggested by Wackwitz in order to allow larger hands to more easily handle and pull out the battery pack.
Claims 4-6, 8-11, 14-16, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Elfner (US 2015/0038064 A1) in view of Heinzelmann (US 2012/0067608 A1).
Regarding claims 4-6, 8-11, 14-16, Elfner and Heinzelmann disclose essentially all of the elements of the claim invention in claim 1 or 13.
However, Elfner and Heinzelmann do not expressly disclose the peripheral angle of the first section with respect to the insertion axis, the peripheral angle of the second section with respect to the insertion axis, the extent of the first and second sections, the overall height of the receptacle, the maximum insertion height of the insertion receiving region, the angle of the handle longitudinal axis with respect to the insertion axis, or the angular spacing of the first and second sections with respect to each other.
In this case, it is first noted that Elfner discloses the general conditions of the claim since Elfner discloses the first section delimits the grip section as seen in Fig. 1, the second section delimits the grip section as seen in Fig. 1, the first and second section have extents since they extend in the direction of the insertion axis, the receptacle has an overall height, the insertion receiving region has a maximum insertion height, that there is an angle between the handle longitudinal axis and the insertion axis, and there is an angular spacing between the first and second sections. Second, one of ordinary skill in the art would have recognized that each of those elements are result effective variables since the respective peripheral angles of the first and second sections with respect to the insertion axis impact the fit of the battery in the receptacle, the extent of the first and second sections impact the accessibility of the battery pack in the receptacle, the ratio of the maximum insertion height to the overall height impacts how well the battery is retained within the receptacle, the angle between the handle longitudinal axis and the insertion axis impacts the convenience with which the battery is inserted into the receptacle, and the angular spacing between the first and second sections impacts how secure the battery stays in the receptacle.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention to have designed the handheld electric tool of Elfner and Heinzelmann to be within the parameters recited in claims 4-6, 8-11, 14-16, and 21, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or functional ranges involves mere routine skill in the art. In re Aller, 105 USPQ 233.
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but they are not persuasive.
Regarding the independent claims, applicant argues that Elfner and Heinzelmann do not disclose the limitation of an outer wall having a U-shape in a side-view of the handheld electric tool parallel to the insertion axis. Furthermore, Elfner does not disclose the limitations of claim 25.
However, as discussed above in the 112(a) rejection above, this is new matter not previously disclosed by applicant. If applicant takes the position that the U-shape is visible from a side-view perpendicular to the insertion direction, then Elfner still anticipates this limitation. As seen in Second Annotated Fig. 1 below, there is a U-shape having a base and legs in the region of grip section receiving region. Furthermore, as also noted above in the 112(a) rejection of claim 25, the subject matter of claim 25 is new matter and thus fails to meet the written description requirement. Therefore, applicant’s argument is found to be not persuasive.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
4/10/2026
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