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
Reopening After Appeal
In view of the appeal brief filed on 9 April 2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/BOYER D ASHLEY/ Supervisory Patent Examiner, Art Unit 3724
Response to Amendment
The Amendment filed 9 February 2026 has been entered as was previously indicated in the Advisory Action mailed 13 February 2026. Claims 1-10 and 13-18 are pending, of which claim 5 is withdrawn from consideration. Applicant's amendments of 9 February 2026 have overcome each and every objection and rejection under 35 USC 112 previously set forth in the Final Office Action mailed 23 October 2025.
Claim Interpretation
Each of claims 1 and 17 recites, “a generally vertical direction” in which lubricant is transported through the check valve. The requirement that the lubricant is transported in “a generally vertical direction” is interpreted as being satisfied so long as there is at least one orientation of a tool in which lubricant is transported in a generally vertical direction. To elaborate, claims 1 and 17 are each directed to “A tool”, and the present specification discloses an embodiment of the tool in the form of a pole saw. A pole saw is positionable in a variety of different orientations, and the direction in which lubricant flows through the check valve depends on the orientation of the pole saw. For example, consider annotated Fig. 1 of the Applicant’s drawings provided below. The examiner has added a line to indicate an approximate direction in which lubricant flows through the check valve in view of Applicant’s Fig. 3. Critically, the direction in which lubricant flows through the check valve of the inventive pole saw is only “generally vertically” when the pole saw is tilted relative to the illustrated orientation. In other words, the longitudinal axis of the pole saw of Fig. 1 of the present drawings must be tilted at an angle relative to the horizontal direction in order for lubricant to flow through the check valve of the inventive pole saw in a generally vertical direction. It is not the case that lubricant always flows generally vertically through the check valve of the inventive pole saw regardless of the orientation of the tool. Therefore, since the inventive pole saw only satisfies the requirements of claims 1 and 17 for one particular orientation of the pole saw, the same interpretation is applicable to the prior art. Thus, prior art is interpreted as satisfying the ‘generally vertical direction’ requirement so long as the tool of the prior art is positionable in at least one orientation in which lubricant flows through the check valve in a generally vertical direction.
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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) 1-4, 6, 8-10, 13, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2024/0075649 A1 to Yu et al. in view of US Pat. No. 6,363,981 B1 to Butler et al. and Modular Check Valves by Industrial Specialties Mfg.
Regarding claim 1, Yu discloses a tool (see Figs. 1-3) comprising:
a powerhead (the powerhead including housing 1 and motor 2 within the housing 1; see Figs. 1-2 and paragraph 68); and
a tool unit (the tool unit including the guide bar, chain, and lubrication system identified below) powered by the powerhead (see paragraphs 68 and 90), the tool unit comprising:
a guide bar and a chain circumscribing a portion of the guide bar (see Fig. 2, where the guide bar and chain form cutting device 4);
a lubrication system 6 that provides lubricant to the chain (see Figs. 2-3 and paragraphs 68-69),
the lubrication system 6 comprising a reservoir 600 housing the lubricant (see Fig. 3 and paragraph 69), a pump 620, and a tubing configured to transport the lubricant from the pump 620 to an output configured to supply the lubricant to the guide bar and the chain (see the annotated Fig. 3 below; see also paragraph 69),
wherein the lubricant is transported through the tubing in a generally vertical direction (see Figs. 2-3 and Fig. 29, where Fig. 29 illustrates an orientation of the chainsaw of Yu in which the tubing extends vertically from the pump 620 to the output; also regarding the ‘generally vertical direction’ requirement, the tool of Yu has at least one orientation in which the tubing of Yu is vertical consistent with the discussion in the Claim Interpretation section above).
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Regarding claim 2, Yu discloses that the guide bar extends in a horizontal direction of the tool unit (see Figs. 1-2; in one interpretation, “extends in a horizontal direction” merely requires that a component of extension of the tool unit has to be in the horizontal direction; in another interpretation, the direction of extent of the guide bar of Yu can be interpreted as defining the horizontal direction, noting that the tool of Yu can be held in a variety of orientations including an orientation in which the guide bar extends perfectly horizontally), further wherein the vertical direction is generally perpendicular to the horizontal direction (see Figs. 2 and 3; in either of the above interpretations, a vertical direction can be defined as perpendicular to the horizontal direction, and Fig. 29 illustrates the tubing as being generally perpendicular to the guide bar).
Regarding claim 13, Yu discloses that the reservoir 600 extends from an inlet opening 602 to an outlet 6601 in the vertical direction (sees Figs. 2, 3, and 6), wherein the outlet 6601 is disposed in line with or lower than the inlet opening 602 in the vertical direction (see Figs. 3 and 6), further wherein the outlet 6601 comprises an outlet fitting configured to be inserted into a channel 630 to transport the lubricant from the reservoir 600 to the pump 620 (see Fig. 3 and paragraph 74).
Regarding claim 16, Yu discloses that the tool is a pole saw or a handheld chainsaw (see Fig. 1, where the tool is a pole saw including pole 5).
Regarding claim 17, Yu discloses a tool (see Figs. 1-3) comprising:
a powerhead (the powerhead including housing 1 and motor 2 within the housing 1; see Figs. 1-2 and paragraph 68); and
a tool unit 4 powered by the powerhead 2 (see paragraph 68);
a lubrication system 6 (see Fig. 3) comprising a reservoir 600 and a pump 620, wherein the lubrication system 6 is configured to transport a lubricant from the reservoir 600 to an output configured to supply the lubricant to the tool unit 2 (see Fig. 2 and the annotated Fig. 3 above; see also paragraph 68),
wherein the lubricant is transported through a tubing of the lubrication system 600 in a generally vertical direction (this feature is satisfied when the tool of Yu is oriented in the manner illustrated in Fig. 29 – see the discussion of ‘a generally vertical direction’ in the Claim Interpretation section above).
Yu fails to disclose: a check valve downstream of the pump and the reservoir, a first tubing configured to transport the lubricant from the pump to the check valve and a second tubing configured to transport the lubricant from the check valve to the output (instead, since Yu does not contemplate a check valve, Yu relies on a single tubing to transport the fluid from the pump to the output), and that the lubricant is transported through the check valve in a generally vertical direction from the first tubing to the second tubing, as required by claim 1. Yu further fails to disclose: wherein the check valve comprises a valve disposed between an inlet fitting and an outlet fitting of the check valve as required by claim 3; wherein the outlet fitting is positioned higher than the inlet fitting in the vertical direction as required by claim 4; that the valve comprises a valve stem as required by claim 6; wherein the check valve is a separate component from the pump as required by claim 8; wherein the check valve is positioned higher than the pump in the vertical direction as required by claim 9; and wherein the check valve is positioned nearer to the guide bar than the pump and the reservoir as required by claim 10. Yu fails to disclose that the lubrication system comprises a check valve, that the check valve is a separate component from the pump and the reservoir and is spaced apart from the pump and the reservoir, and wherein the lubricant is transported through the check valve in a generally vertical direction from a check valve inlet to a check valve outlet, as required by claim 17, and that the check valve is positioned downstream of the reservoir and the pump as required by claim 18.
Butler teaches a lubrication system for a chainsaw 109 (see the chainsaw of Fig. 1; the lubrication system is shown in Fig. 2). Butler teaches that the lubrication system includes a check valve 237 downstream of a pump 206 and a reservoir 203 (see Fig. 2; see also col. 4, lines 23-25 describing element 206 as being a pump), a first tubing section1 configured to transport lubricant from the pump 206 to the check valve 237 (see the annotated Fig. 2 below) and a second tubing section configured to transport the lubricant from the check valve 237 to an output (see the annotated Fig. 2 below), and that the lubricant is transported through the check valve 237 in a generally vertical direction from the first tubing section to the second tubing section (see Fig. 2; see also col. 2, lines 29-31 disclosing that Fig. 2 is a partial cross-sectional view of the lubrication system “as it would be positioned” in the tool – since Fig. 2 shows the system “as it would be positioned” in the tool, Fig. 2 can be relied upon for illustrating a vertical orientation of the check valve 237; lubricant is transported through the check valve 237 per col. 3, lines 43-45; also regarding the orientation of the check valve, see the orientation of the check valve applied to Yu upon modification of Yu as discussed below). [ Claim 1] Butler also teaches: that the check valve 237 is a separate component from the pump 206 (see Fig. 2, where the check valve 237 is separated from the pump 206 by the first tubing) [claim 8]; that the valve 237 is positioned higher than the pump 206 in the vertical direction (see Fig. 2 and col. 2, lines 29-31) [claim 9]; and that the check valve 237 is positioned nearer to the chain saw 109 than the pump 206 and the reservoir 203 (at least as measured in the vertical direction along the plane of the page of Fig. 2, with the figure oriented with the reference characters upright; moreover, this feature is satisfied upon the modification of Yu to include a check valve as explained below) [claim 10]. Butler teaches that the lubrication system comprises a check valve 237, that the check valve 237 is a separate component from the pump 206 and the reservoir 203 (see Fig. 2; the check valve 237 is separated from the pump 206 and the reservoir by tubings 227 and 232) and is spaced apart from the pump 206 and the reservoir 203 (see Fig. 2), and wherein the lubricant is transported through the check valve 237 in a generally vertical direction (see Fig. 2; see also col. 2, lines 29-31 disclosing that Fig. 2 is a partial cross-sectional view of the lubrication system “as it would be positioned” in the tool – since Fig. 2 shows the system “as it would be positioned” in the tool, Fig. 2 can be relied upon for illustrating a vertical orientation of the check valve 237; lubricant is transported through the check valve 237 per col. 3, lines 43-45; also regarding the orientation of the check valve, see the orientation of the check valve applied to Yu upon modification of Yu as discussed below). [Claim 17] Butler further teaches that the check valve 237 is positioned downstream of the reservoir 203 and the pump 206 (see Fig. 2). [Claim 18] Butler teaches that the check valve is advantageous in order to prevent drawing of the lubricant back into the tubing from the chain saw (see col. 3, lines 43-47).
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Therefore, it would have been obvious to one of ordinary skill in the art to provide the tool of Yu with a check valve downstream of the pump and reservoir, where the check valve is provided along the tubing of Yu to separate the tubing into a first tubing section that transports the lubricant from the pump to the check valve and a second tubing section that transports the lubricant from the check valve to the output, in view of the teachings of Butler. This modification is advantageous in order to prevent drawing of the lubricant back into the tubing from the chain saw. In carrying out this modification, it would have been obvious to one of ordinary skill in the art to position the check valve in a vertical orientation such that the lubricant is transported through the check valve in a generally vertical direction. First, Butler teaches that its check valve is vertically oriented (see Fig. 2 and col. 2, lines 29-31). Second, Yu teaches that its tubing that transports the lubricant from the pump to the guide bar extends in a vertical direction (see Fig. 29). Given that there is a motivation to provide the tool of Yu with a check valve in order to prevent drawing back of lubricant, it would have been obvious to one of ordinary skill in the art to provide the tool of Yu with the check valve in a vertical orientation along the tubing of Yu because the vertical orientation of the check valve is both taught by Butler and conforms to the existing tubing extension direction of Yu. Furthermore, providing Yu with the check valve in the vertical orientation is advantageous because the tubing of Yu need not be re-routed or otherwise diverted when provided with a check valve -- providing Yu with the check valve in a vertical orientation allows the tubing routing of Yu to remain as-is. Thus, providing Yu with the check valve in the vertical orientation is obvious in order to integrate the check valve into the tubing of Yu without having to re-route the tubing.
Further still, ever disregarding the discussion of the orientation of the check valve of Yu, as modified, in the prior paragraph, Yu, as modified to include a check valve in view of Butler, discloses that the lubricant is transported through the check valve in a generally vertical direction because the ‘generally vertical direction’ can be selected by choosing an orientation of the tool in which the check valve extends vertically. As explained in the Claim Interpretation section above, the lubricant being transported through the check valve in “a generally vertical direction” merely requires that there is at least one orientation of the tool in which the lubricant is transported through the check valve in a generally vertical direction. The tool of Yu, as modified, is a hand-held tool that can be positioned in any orientation, including an orientation in which the check valve is vertical. Claims 1 and 17 do not specify any orientation or frame of reference of the tool in which the transportation of the lubricant must be generally vertical. As such, the fact that the tool of Yu, as modified, can be oriented in at least one position in which the check valve is vertical is sufficient to satisfy the requirement that the lubricant is transported through the check valve in a generally vertical direction as required by claims 1 and 17.
Turning to the features of claim 10, Yu, as modified to include a check valve as taught by Butler, discloses that the check valve is positioned nearer to the guide bar than the pump and the reservoir as required by claim 10. In the modification of Yu in view of Butler, the tubing of Yu is provided with the check valve at a location between the pump 620 and the output at the end of the tubing. The guide bar of Yu is provided on a first side of the tubing in Fig. 3 of Yu adjacent the output, and both of the pump 620 and a portion of the reservoir 600 are on an opposing second side of the tubing from the outlet. As such, in Yu as modified to include a check valve along the tubing between the pump and the outlet, the check valve is closer to the guide bar than are the pump and the portion of the reservoir behind the tubing. As such, the check valve is nearer to the guide bar than the pump and the reservoir as required by claim 10. This interpretation is also consistent with the present specification, where the reservoir similarly includes an indentation that receives the check valve as described at paragraph 52.
As taught by Butler, the exact structure of the first tubing section, the check valve, and the second tubing section are not disclosed in great detail. As such, Yu, as modified, is considered as failing to disclose that the first tubing section that transports lubricant from the pump to the check valve is ‘a first tubing’ and that the second tubing section that transports the lubricant from the check valve to the output is ‘a second tubing’ as required by claim 1. Yu, as modified, further fails to disclose: wherein the check valve comprises a valve disposed between an inlet fitting and an outlet fitting of the check valve as required by claim 3; wherein the outlet fitting is positioned higher than the inlet fitting in the vertical direction as required by claim 4; and that the valve comprises a valve stem as required by claim 6. Also due to the lack of detail regarding the structure of check valve as disclosed by Butler, Yu, as modified, is considered as failing to disclose that the lubricant is transported through the check valve from a check valve inlet to a check valve outlet as required by claim 17.
Modular Check Valves teaches a check valve requiring a first tubing attached to one side of the check valve and a second tubing attached to an opposing side of the check valve (see the last image on page 2, where the left and right sides of the check valve include barbs for connection to respective tubings; see also the ‘CVIS-18-14-4-V-BLPP’ example described on page 5, which check valve is configured for connection to a 1/8” tubing on one side and a 1/4” tubing on an opposing side). [Claim 1] Modular Check Valves further teaches the check valve having a valve deposed between an inlet fitting and an outlet fitting of the check valve (see the last image on page 2, where the inlet and outlet fitting include the barbs at the respective ends of the check valve) [claim 3], where the outlet fitting is positioned further along the path of lubricant travel than the inlet fitting [relevant to claim 4], and where the valve comprises a stem valve (see the stem portion of the poppet at page 2) [claim 6]. Modular Check Valves also teaches that fluid is transported through the check valve from a check valve inlet to a check valve outlet (see the final image on page 2, where the inlet and outlet are at opposing sides of the check valve). [Claim 17] The valve structure disclosed by Modular Check Valves is advantageous because the valves are maintenance free and provide a minimum of 100,000 cycles (see the ‘Cycling’ section at page 3). Moreover, the valve structure disclosed by Modular Check Valves is advantageous because it is an off the shelf component that a manufacturer can source without having to design a valve from the ground up, thus simplifying manufacturing by sourcing an already available component.
Yu, as modified, only discloses the check valve schematically. Modular Check Valves, however, teaches a specific structure of a check valve, where Modular Check Valves teaches that its valves are customizable to fit the parameters of a particular application (see the ‘Features and Benefits’ section). It would have been obvious to one of ordinary skill in the art to select a check valve as taught by Modular Check Valves for use in place of the generic valve of Yu, as modified, because Modular Check Valves are commercially available valves that can be customized to fit parameters of a particular application. This modification is merely selection of a known, commercially available component for a generically disclosed version in Yu, as modified, thereby avoiding the need for a manufacturer to design and manufacture a custom check valve. Moreover, this is advantageous because the check valve of Modular Check Valves are maintenance free and provide a minimum of 100,000 cycles (see the ‘Cycling’ section at page 3), such that this modification provides a long lasting check valve. This modification includes providing the first tubing section of Yu, as modified, as a first tubing that extends from the pump to the check valve and providing the second tubing section of Yu, as modified, as a second tubing that extends from the check valve to the output because the check valve of Modular Check Valves requires connection to two tubings on opposing sides of the check valve.
Regarding claim 4, since Yu, prior to this modification, teaches that the check valve is arranged vertically and permits fluid flow to the chain bar in an upward direction (the check valve being provided along the tubing of Yu, as explained in the rejection of claim 1 above), this modification includes placing the outlet fitting higher than the inlet fitting the vertical direction as required by claim 4 so that fluid is properly able to flow to the chain bar from the pump.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Butler and Modular Check Valves as applied to claim 1 above, and further in view of US Pat. No. 4,353,163 to Overbury et al.
Yu, as modified, fails to disclose any particular material from which the first and second tubings are made, and thus fails to disclose that at least one of the first tubing and the second tubing are flexible tubing as required by claim 7.
Overbury, though, teaches a tubing 64 that is flexible tubing (see col. 2, lines 33-34).
Therefore, it would have been obvious to one of ordinary skill in the art to provide at least one of the first tubing and the second tubing of Yu, as modified, as a flexible tubing in view of the teachings of Overbury. This modification is advantageous to facilitate assembly of the tool and reduce the need for exact tolerances of the tubings. That is, by making the tubings flexible, the dimensions of the tubing need not conform to exact specifics, since some deviation in dimensions allows for flexing of the first and/or second tubings while still being able to assembly the lubrication system. Moreover, this modification simplifies assembly because the tubings can be moved to an optimal position as desired by an assembler during assembly of the tool – e.g., if it is more ergonomically friendly for a user to bend the first tubing to install the check valve and second tubing, such a movement is available. As further evidence of the obviousness of this rejection, Yu discloses that tubing 130 is flexible (see paragraph 71), such that Yu also provides evidence that a flexible material is a material known to be suitable from which to construction a tubing in a lubrication system of a pole saw.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Butler and Modular Check Valves as applied to claim 13 above, and further in view of DE 10 2018 210 203 A1 to Robert Bosch GmbH.
Regarding claim 15, Yu, as modified, discloses that the outlet fitting (of outlet 6601 of Yu) of the reservoir 600 extends in a direction that is oblique generally perpendicular to the vertical direction (see Fig. 12 of Yu).
At least for purposes of this rejection, in view of Figs. 3 and 12 of Yu appearing to show slightly different directions of extension of the outlet fitting, Yu, as modified, is considered as failing to disclose that the outlet fitting extends generally perpendicular to the vertical direction as required by claim 15.
Robert Bosch teaches that a fitting 28 of a reservoir 10 in a chainsaw (see Figs. 1 and 3) can be provided in a direction that is generally perpendicular to a vertical direction 29 of the reservoir 10 (see Figs. 1 and 3).
Yu, as modified, discloses the claimed invention except for the specific direction of extent of the outlet fitting being generally perpendicular to the vertical direction, whereas Robert Bosch does teach an outlet fitting that extends generally perpendicular to the vertical direction. It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify extension direction of the outlet fitting of Yu, as modified, since it has been held that rearranging parts of an invention involves only routine skill in the art, and since it is known to be within the level of ordinary skill in the art to have an outlet fitting extend generally perpendicular to the vertical direction as evidenced by Robert Bosch. In re Japikse, 86 USPQ 70. Whether the outlet fitting extends in the direction disclosed by Yu or the direction taught by Robert Bosch makes no difference in the functionality of the outlet fitting, at least based on the current record, such that one of skill in the art can select from either of the outlet fitting extension directions of Yu and Robert Bosch without any change in the operation of the tool. Furthermore, one of ordinary skill in the art, in awareness that different extension directions for the outlet fitting are available, would be motivated to select from any of the known extension directions based on whichever direction is most suitable in view of the remainder of the structure of the tool. For example, housing space constraints related to the positioning of other components in the housing of the tool might dictate which of the available outlet extension directions is more suitable for some particular tool.
Claim(s) 1-4, 6, 8, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2014/0037482 A1 to Hirai in view of US Pat. No. 6,363,981 B1 to Butler et al. and Modular Check Valves by Industrial Specialties Mfg.
Regarding claim 1, Hirai discloses a tool 1 (see Figs. 1-2) comprising:
a powerhead (the powerhead including housing 2 and the engine or motor within the housing 2; see paragraphs 34 and 36); and
a tool unit (the tool unit including the guide bar, chain, and lubrication system identified below) powered by the powerhead 2 (see paragraphs 36 and 39), the tool unit comprising:
a guide bar 11 and a chain 12 circumscribing a portion of the guide bar 11 (see Figs. 1-2);
a lubrication system (including components identified in the next paragraph) that provides lubricant 15 to the chain 12 (see Fig. 2 and paragraph 38),
the lubrication system comprising a reservoir 14 housing the lubricant 15 (see Fig. 2 and paragraph 38), a pump 20, and a tubing 18 configured to transport the lubricant 15 from the pump 20 to an output 18a configured to supply the lubricant 15 to the guide bar 11 and the chain 12 (see Fig. 2 and paragraphs 38 and 40),
wherein the lubricant is transported through the tubing 18 in a generally vertical direction (see Fig. 2, where the tubing 18 extends vertically from the pump 18 to the output 18a; note that at least at two locations along the tubing 18 the lubricant is transported in the vertical direction; also, the tool of Hirai is a handheld tool that can be oriented such that the tubing extends vertically consistent with the Claim Interpretation section above).
Regarding claim 2, Hirai discloses that the guide bar 11 extends in a horizontal direction of the tool unit (see Fig. 1, where the horizontal direction is along the indicated ‘Back-Front’ axis), further wherein the vertical direction is generally perpendicular to the horizontal direction (see Fig. 1, showing a vertical ‘Up-Down’ direction being perpendicular to the ‘Back-Front’ direction).
Regarding claim 16, Hirai discloses that the tool 1 is a handheld chainsaw (see Fig. 1; noting the presence of handle 3, thus satisfying the ‘handheld’ requirement).
Regarding claim 17, Hirai discloses a tool 1 (see Figs. 1-2) comprising:
a powerhead (the powerhead including housing 2 and the engine or motor within the housing 2; see paragraphs 34 and 36); and
a tool unit (the tool unit including the guide bar 11 and the chain 12) powered by the powerhead 2 (see paragraph 36);
a lubrication system (see Fig. 2) comprising a reservoir 14 and a pump 20, wherein the lubrication system is configured to transport a lubricant 15 from the reservoir 14 to an output 18a configured to supply the lubricant 15 to the tool unit (see Fig. 2 and paragraphs 38 and 40),
wherein the lubricant is transported through a tubing 18 of the lubrication system in a generally vertical direction (this feature is satisfied when the tool of Hirai is oriented in the manner illustrated in Fig. 2 – see the discussion of ‘a generally vertical direction’ in the Claim Interpretation section above).
Hirai fails to disclose: a check valve downstream of the pump and the reservoir, a first tubing configured to transport the lubricant from the pump to the check valve and a second tubing configured to transport the lubricant from the check valve to the output, and that the lubricant is transported through the check valve in a generally vertical direction from the first tubing to the second tubing, as required by claim 1. Hirai further fails to disclose: wherein the check valve comprises a valve disposed between an inlet fitting and an outlet fitting of the check valve as required by claim 3; wherein the outlet fitting is positioned higher than the inlet fitting in the vertical direction as required by claim 4; that the valve comprises a valve stem as required by claim 6; and that the check valve is a separate component from the pump as required by claim 8. Hirai fails to disclose that the lubrication system comprises a check valve, that the check valve is a separate component from the pump and the reservoir and is spaced apart from the pump and the reservoir, and wherein the lubricant is transported through the check valve in a generally vertical direction from a check valve inlet to a check valve outlet, as required by claim 17, and that the check valve is positioned downstream of the reservoir and the pump as required by claim 18.
Butler teaches a lubrication system for a chainsaw 109 (see the chainsaw of Fig. 1; the lubrication system is shown in Fig. 2). Butler teaches that the lubrication system includes a check valve 237 downstream of a pump 206 and a reservoir 203 (see Fig. 2; see also col. 4, lines 23-25 describing element 206 as being a pump), a first tubing section2 configured to transport lubricant from the pump 206 to the check valve 237 (see the annotated Fig. 2 below) and a second tubing section configured to transport the lubricant from the check valve 237 to an output (see the annotated Fig. 2 below), and that the lubricant is transported through the check valve 237 in a generally vertical direction from the first tubing section to the second tubing section (see Fig. 2; see also col. 2, lines 29-31 disclosing that Fig. 2 is a partial cross-sectional view of the lubrication system “as it would be positioned” in the tool – since Fig. 2 shows the system “as it would be positioned” in the tool, Fig. 2 can be relied upon for illustrating a vertical orientation of the check valve 237; lubricant is transported through the check valve 237 per col. 3, lines 43-45; also regarding the orientation of the check valve, see the orientation of the check valve applied to Hirai upon modification of Hirai as discussed below). [ Claim 1] Butler also teaches: that the check valve 237 is a separate component from the pump 206 (see Fig. 2, where the check valve 237 is separated from the pump 206 by the first tubing) [claim 8]. Butler teaches that the lubrication system comprises a check valve 237, that the check valve 237 is a separate component from the pump 206 and the reservoir 203 (see Fig. 2; the check valve 237 is separated from the pump 206 and the reservoir by tubings 227 and 232) and is spaced apart from the pump 206 and the reservoir 203 (see Fig. 2), and wherein the lubricant is transported through the check valve 237 in a generally vertical direction (see Fig. 2; see also col. 2, lines 29-31 disclosing that Fig. 2 is a partial cross-sectional view of the lubrication system “as it would be positioned” in the tool – since Fig. 2 shows the system “as it would be positioned” in the tool, Fig. 2 can be relied upon for illustrating a vertical orientation of the check valve 237; lubricant is transported through the check valve 237 per col. 3, lines 43-45; also regarding the orientation of the check valve, see the orientation of the check valve applied to Hirai upon modification of Hirai as discussed below). [Claim 17] Butler further teaches that the check valve 237 is positioned downstream of the reservoir 203 and the pump 206 (see Fig. 2). [Claim 18] Butler teaches that the check valve is advantageous in order to prevent drawing of the lubricant back into the tubing from the chain saw (see col. 3, lines 43-47).
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Therefore, it would have been obvious to one of ordinary skill in the art to provide the tool of Hirai with a check valve downstream of the pump and reservoir, where the check valve is provided along the tubing of Hirai to separate the tubing into a first tubing section that transports the lubricant from the pump to the check valve and a second tubing section that transports the lubricant from the check valve to the output, in view of the teachings of Butler. This modification is advantageous in order to prevent drawing of the lubricant back into the tubing from the chain saw. In carrying out this modification, it would have been obvious to one of ordinary skill in the art to position the check valve in a generally vertical orientation such that the lubricant is transported through the check valve in a generally vertical direction. First, Butler teaches that its check valve is vertically oriented (see Fig. 2 and col. 2, lines 29-31). Second, Hirai teaches that its tubing that transports the lubricant from the pump to the guide bar extends in a generally vertical direction (see Fig. 2). Given that there is a motivation to provide the tool of Hirai with a check valve in order to prevent drawing back of lubricant, it would have been obvious to one of ordinary skill in the art to provide the tool of Hirai with the check valve in a generally vertical orientation along the tubing of Hirai because a vertical orientation of the check valve is taught by Butler and conforms to the existing generally vertical tubing extension direction of Hirai. Furthermore, providing Hirai with the check valve in the generally vertical orientation is advantageous because the tubing of Hirai need not be re-routed or otherwise diverted when provided with a check valve -- providing Hirai with the check valve in a generally vertical orientation allows the tubing routing of Hirai to remain as-is. Thus, providing Hirai with the check valve in the generally vertical orientation is obvious in order to integrate the check valve into the tubing of Hirai without having to re-route the tubing.
Further still, ever disregarding the discussion of the orientation of the check valve of Hirai, as modified, in the prior paragraph, Hirai, as modified to include a check valve in view of Butler, discloses that the lubricant is transported through the check valve in a generally vertical direction. As explained in the Claim Interpretation section above, the lubricant being transported through the check valve in “a generally vertical direction” merely requires that there is at least one orientation of the tool in which the lubricant is transported through the check valve in a generally vertical direction. The tool of Hirai, as modified, is a hand-held tool that can be positioned in any orientation, including an orientation in which the check valve is vertical. Claims 1 and 17 do not specify any orientation or frame of reference of the tool in which the transportation of the lubricant must be generally vertical. As such, the fact that the tool of Hirai, as modified, can be oriented in at least one position in which the check valve is vertical is sufficient to satisfy the requirement that the lubricant is transported through the check valve in a generally vertical direction as required by claims 1 and 17.
As taught by Butler, the exact structure of the first tubing section, the check valve, and the second tubing section are not disclosed in great detail. As such, Hirai, as modified, is considered as failing to disclose that the first tubing section that transports lubricant from the pump to the check valve is ‘a first tubing’ and that the second tubing section that transports the lubricant from the check valve to the output is ‘a second tubing’ as required by claim 1. Hirai, as modified, further fails to disclose: wherein the check valve comprises a valve disposed between an inlet fitting and an outlet fitting of the check valve as required by claim 3; wherein the outlet fitting is positioned higher than the inlet fitting in the vertical direction as required by claim 4; and that the valve comprises a valve stem as required by claim 6. Also due to the lack of detail regarding the structure of check valve as disclosed by Butler, Hirai, as modified, is considered as failing to disclose that the lubricant is transported through the check valve from a check valve inlet to a check valve outlet as required by claim 17.
Modular Check Valves teaches a check valve requiring a first tubing attached to one side of the check valve and a second tubing attached to an opposing side of the check valve (see the last image on page 2, where the left and right sides of the check valve include barbs for connection to respective tubings; see also the ‘CVIS-18-14-4-V-BLPP’ example described on page 5, which check valve is configured for connection to a 1/8” tubing on one side and a 1/4” tubing on an opposing side). [Claim 1] Modular Check Valves further teaches the check valve having a valve deposed between an inlet fitting and an outlet fitting of the check valve (see the last image on page 2, where the inlet and outlet fitting include the barbs at the respective ends of the check valve) [claim 3], where the outlet fitting is positioned further along the path of lubricant travel than the inlet fitting [relevant to claim 4], and where the valve comprises a stem valve (see the stem portion of the poppet at page 2) [claim 6]. Modular Check Valves also teaches that fluid is transported through the check valve from a check valve inlet to a check valve outlet (see the final image on page 2, where the inlet and outlet are at opposing sides of the check valve). [Claim 17] The valve structure disclosed by Modular Check Valves is advantageous because the valves are maintenance free and provide a minimum of 100,000 cycles (see the ‘Cycling’ section at page 3). Moreover, the valve structure disclosed by Modular Check Valves is advantageous because it is an off the shelf component that a manufacturer can source without having to design a valve from the ground up, thus simplifying manufacturing by sourcing an already available component.
Hirai, as modified, only discloses the check valve schematically. Modular Check Valves, however, teaches a specific structure of a check valve, where Modular Check Valves teaches that its valves are customizable to fit the parameters of a particular application (see the ‘Features and Benefits’ section). It would have been obvious to one of ordinary skill in the art to select a check valve as taught by Modular Check Valves for use in place of the generic valve of Hirai, as modified, because Modular Check Valves are commercially available valves that can be customized to fit parameters of a particular application. Using a check valve as taught by Modular Check Valves in the tool of Hirai, as modified, allows for the selection of an off-the-shelf component and avoids the need to design and custom manufacture a check valve. Further, this modification is merely selection of a known, commercially available component for a generically disclosed version in Hirai, as modified. Further still, this is advantageous because the check valve of Modular Check Valves are maintenance free and provide a minimum of 100,000 cycles (see the ‘Cycling’ section at page 3), such that this modification provides a long lasting check valve. This modification includes providing the first tubing section of Hirai, as modified, as a first tubing that extends from the pump to the check valve and providing the second tubing section of Hirai, as modified, as a second tubing that extends from the check valve to the output because the check valve of Modular Check Valves requires connection to two tubings on opposing sides of the check valve. Finally, since Hirai, prior to this modification, teaches that the check valve is arranged generally vertically and permits fluid flow to the chain bar in an upward direction (the check valve being provided along the tubing of Hirai, as explained in the rejection of claim 1 above), this modification includes placing the outlet fitting higher than the inlet fitting the vertical direction as required by claim 4 so that fluid is properly able to flow to the chain bar from the pump.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirai in view of Butler and Modular Check Valves as applied to claim 1 above, and further in view of US Pat. No. 4,353,163 to Overbury et al.
Regarding claim 13, Hirai, as modified, discloses that the reservoir 14 extends to an outlet (see the outlet of reservoir 14 to which channel 17 is attached in Fig. 2 of Hirai), wherein the outlet is joined to a channel 17 to transport the lubricant from the reservoir 14 to the pump 20 (see Fig. 2).
Hirai, as modified, does not fully illustrate the geometry its reservoir (e.g., in Fig. 2 of Hirai, the reservoir 14 is only partially shown in cross-section). As a result, Hirai fails to disclose that the reservoir extends from an inlet opening to the outlet in the vertical direction, wherein the outlet is disposed in line with or lower than the inlet in the vertical direction, and wherein the outlet comprises an outlet fitting configuring to be inserted into the channel as required by claim 13.
Overbury, though, teaches that a reservoir 56 that extends from an inlet opening (formed in neck 68; see Fig. 3 and col. 2, lines 41-46) to an outlet 66 in a vertical direction (see Figs. 2 and 3; the inlet opening is at the top of the reservoir and the outlet 66 is at the bottom of the reservoir), wherein the outlet 66 is disposed in line with or lower than the inlet opening in the vertical direction (see Figs. 2 and 3; the inlet opening is at the top of the reservoir and the outlet 66 is at the bottom of the reservoir), further wherein the outlet 66 comprises an outlet fitting (see Fig. 2) configured to be inserted into a channel (the tubing 62 as described at col. 2, lines 32, which is mislabeled in Fig. 2 with reference character ‘66’) to transport a lubricant 69 from the reservoir 56 to the pump 58 (see Fig. 2).
It would have been obvious to one of ordinary skill in the art to provide the reservoir of Hirai, as modified, with an inlet opening spaced above the inlet of the reservoir in the vertical direction, wherein the outlet is disposed in line with or lower than the inlet in the vertical direction, in view of the teachings of Overbury. Providing the reservoir of Hirai, as modified, with an inlet opening at a top of the reservoir of Hirai, as modified, as taught by Overbury is advantageous to allow for filling the reservoir with lubricant (see Overbury at col. 2, lines 45-46), such that the reservoir can be re-filled when the reservoir becomes low or empty of lubricant. Further, it would have been obvious to one of ordinary skill in the art to provide the outlet of the reservoir of Hirai, as modified, with an outlet fitting configured to be inserted into the channel as taught by Overbury because this feature provides a structure for attaching the channel to the reservoir, which feature is desired by Hirai. The outlet fitting is thus advantageous for joining the channel to the reservoir.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirai in view of Butler and Overbury as applied to claim 13 above, and further in view of US Pat. No. 2,184,461 to Mall.
Harai, as modified, fails to disclose that the channel is formed from a rigid material as required by claim 14. However, the channel of Hirai, as modified, serves as a conduit for transporting a lubricant within a lubrication system.
Mall teaches that a channel 172 in an oil lubrication system that serves as a conduit for transporting lubricant (see Figs. 3a and 7 and page 2, lines 69-71), where the channel is formed from a rigid material (in particular, from copper tubing; see page 3, line 1).
Hirai, as modified, discloses the claimed invention except for the channel being formed from a rigid material, whereas Mall teaches a channel in an oil lubrication system that is formed of a rigid material. It would have been obvious to one having ordinary skill in the art at the time the invention was made to form the channel of Hirai, as modified, from copper as taught by Mall, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, and Mall is evidence that copper is a suitable material for a channel in an oil lubrication system of a chain saw. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed in the Appeal Brief of 9 April 2026 have been fully considered but they are not persuasive. Although the present action presents new grounds of rejection under 35 USC 103, the examiner addresses Applicant’s arguments from the Appeal Brief that remain applicable to the present rejections.
Regarding the rejection of claim 1 under 35 USC 103 relying on a modification of Yu in view of Butler, the Applicant argues at page 6 of the Appeal Brief that Butler fails to disclose “a second tubing configured to transport the lubricant from the check valve to an output configured to supply the lubricant to the guide bar and chain”. First, to the extent that this argument is directed to Butler failing to disclose an output configured to supply the lubricant to the guide bar and chain, this argument is not persuasive because it is against Butler alone, rather than against Yu as modified to include a check valve. Yu, prior to any modification, discloses a tubing that transports lubricant to an output configured to supply the lubricant to a guide bar and chain. Butler is relied upon for its teaching of a check valve. Yu, modified to include a check valve as taught by Butler, thus discloses the transportation of the lubricant from the check valve to the output to supply the lubricant to the guide bar and chain. As such, Applicant’s argument against Butler alone is unpersuasive. To the extent that the argument is against Butler disclosing a second tubing, this argument is moot in view of the present rejection of claim 1 as being unpatentable over Yu in view of Butler and Modular Check Valves. Modular Check Valves teaches a check valve having a first tubing attached to one side of the check valve and a second tubing attached to a second side of the check valve. Thus, Applicant’s arguments hypothesizing that Butler may disclose a roller valve that is positioned around the tubing (such that a single tubing extends from the pump to the outlet) are moot because the use of a check valve of Modular Check Valves precludes this situation.
Next, also regarding the rejection of claim 1 under 35 USC 103 relying on a modification of Yu in view of Butler the Applicant argues at page 6 of the Appeal Brief that Butler fails to disclose or teach that its check valve is oriented to transport lubricant in a generally vertical direction. The Applicant states that Butler is silent regarding the actual orientation of its check valve. This argument is not persuasive for several reasons. First, Butler is not silent regarding the orientation of its check valve. Instead, Butler at col. 2, lines 29-31 states that Fig. 2 is a diagrammatic partial cross-sectional view of Butler’s invention “as it would be positioned” in a tool. The fact that Butler explicitly describes the components of Fig. 2 as being illustrated as they would be positioned is sufficient to rely on the orientations of the components as illustrated in Fig. 2 of Butler. The check valve as shown in Fig. 2 of Butler is vertically positioned. Therefore, Butler teaches a vertically positioned check valve. Since the Applicant’s argument fails to address the disclosure of Butler at col. 2, lines 29-31 in asserting that Butler is silent with respect to the orientation of the check, Applicant’s argument is not persuasive. The second reason that Applicant’s argument is not persuasive is that the argument is against Butler alone, rather than against Yu as modified to include a check valve along the tubing of Yu in view of the teachings of Butler. One of ordinary skill in the art, being motivated to provide the tubing of Yu with a check valve as taught by Butler in order to prevent backflow of lubricant, would seek to provide the tubing of Yu with the check valve in the easiest manner possible, including as little re-design of the tool of Yu as possible. Since the tubing of Yu extends generally vertically, the natural and most straight-forward orientation of the check valve is to align the check valve with the tubing by positioning the check valve at a vertical orientation that matches the orientation of the tubing already present in Yu. By providing Yu with the check valve oriented vertically, the tubing of Yu need not be re-routed. Thus, the combined teachings of Yu and Butler render obvious positioning the check valve in the generally vertical orientation. Finally, Applicant’s argument is also not persuasive because the argument fails to contemplate that the check valve need only transport lubricant vertically in at least one orientation of the tool. The tool of Yu, as modified to include a check valve, is a hand-held tool that can be positioned at a variety of orientations. Just as the inventive pole saw disclosed in the present application includes the check valve transporting lubricant generally vertically only when the pole saw is tilted at some particular angle, the tool of Yu as modified to include a check valve as taught by Butler has at least one orientation in which the check valve is vertical (even if the check valve is not aligned with the tubing of Yu, despite this being the most obvious orientation of the check valve). Thus, even if, as suggested by the Applicant at page 6 of the Appeal Brief, one of ordinary skill in the art decides to orient the check valve perpendicular to the tubing, the entire tool is regardless positionable such that the check valve transports lubricant in a generally vertical direction. That is, regardless of the orientation of the check valve relative to the tubing, the entire tool of Yu as modified to include a check valve is positionable in at least one orientation in which the check valve transports lubricant generally vertically. This interpretation is consistent with the present application, where some particular orientation of the tool is required for the check valve to transport lubricant vertically. Since the Applicant’s argument that Butler fails to disclose a vertically oriented check valve fails to acknowledge that Butler explicitly teaches Fig. 2 illustrating a check valve “as it would be positioned” in the tool, fails to contemplate the combined teachings of references including the orientation of the tubing of Yu, and fails to contemplate that the ‘generally vertical’ requirement must only be satisfied for one particular orientation of the tool, the Applicant’s argument is not persuasive.
Next, also regarding the rejection of claim 1 under 35 USC 103 relying on a modification of Yu in view of Butler, the Applicant argues at page 7 of the Appeal Brief that “the Office Action confusingly references the modification of the Hirai reference in the rejection of independent claim 1 as unpatentable over Yu in view of Butler”. The citations to the Hirai reference in the rejection of claim 1 as being unpatentable over Yu in view of Butler were a typographical error that has been remedied in the present action. Going forward, the examiner invites the Applicant to contact the examiner by telephone to clarify any points of confusion the Applicant may have.
Continuing, also regarding the rejection of claim 1 under 35 USC 103 relying on a modification of Yu in view of Butler, the Applicant argues at page 8 of the Appeal Brief that Butler is not analogous art. In support of this argument, the Applicant asserts that the field of invention is limited to hand-held tools such as a pole saw, chain saw, or other outdoor tool. The Applicant’s argument is not persuasive. First, as explained in MPEP 2141.01(a)(I), in order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103 , the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). While the Applicant argues that the field of endeavor is limited to handheld tools, this argument is not commensurate with the scope of the claimed invention – the claimed invention is not limited to a handheld tool. Instead, the claimed invention is more broadly described as, “A tool”, with there being no ‘handheld’ requirement anywhere in claim 1. Since the claimed invention is not limited to a handheld tool, the Applicant’s proposed field of endeavor is overly narrow and improperly limited by the Applicant’s specification. Butler is analogous art because Butler is in the same field of endeavor as the claimed invention. The field of endeavor of the claimed invention is a powered tool with a lubrication system, and Butler is in the same field of endeavor due to Butler being directed to a lubrication system for a chain saw (see the ‘Technical Field’ section of Butler). Not only is Butler in the same field of endeavor as the claimed invention, but Butler is reasonably pertinent to the problem of providing lubricant to a chain of a chain saw as identified in the present specification at paragraph 22 because Butler teaches a check valve for preventing backflow of lubricant provided to a chainsaw. Therefore, Butler is both in the same field of endeavor as the claimed invention and also reasonably pertinent to the problem of providing lubricant to a chain of a chain saw as faced by the present inventor. Applicant’s argument that Butler is not analogous art is not persuasive.
Turning to the rejection of claim 1 as being unpatentable under 35 USC 103 relying on a modification of Hirai in view of Butler, the Applicant makes the same argument against Butler as addressed above. In particular, the Applicant argues at page 10 of the Appeal Brief that Butler fails to disclose “a second tubing configured to transport the lubricant from the check valve to an output configured to supply the lubricant to the guide bar and chain”. First, to the extent that this argument is directed to Butler failing to disclose an output configured to supply the lubricant to the guide bar and chain, this argument is not persuasive because it is against Butler alone, rather than against Hirai as modified to include a check valve. Hirai, prior to any modification, discloses a tubing that transports lubricant to an output configured to supply the lubricant to a guide bar and chain. Butler is relied upon for its teaching of a check valve. Hirai, modified to include a check valve as taught by Butler, thus discloses the transportation of the lubricant from the check valve to the output to supply the lubricant to the guide bar and chain. As such, Applicant’s argument against Butler alone is unpersuasive. To the extent that the argument is against Butler disclosing a second tubing, this argument is moot in view of the present rejection of claim 1 as being unpatentable over Hirai in view of Butler and Modular Check Valves. Modular Check Valves teaches a check valve having a first tubing attached to one side of the check valve and a second tubing attached to a second side of the check valve. Thus, Applicant’s arguments hypothesizing that Butler may disclose a roller valve that is positioned around the tubing (such that a single tubing extends from the pump to the outlet) are moot because the use of a check valve of Modular Check Valves precludes this situation.
Next, also regarding the rejection of claim 1 under 35 USC 103 relying on a modification of Hirai in view of Butler, the Applicant argues at pages 10-11 of the Appeal Brief that Butler fails to disclose or teach that its check valve is oriented to transport lubricant in a generally vertical direction. The Applicant states that Butler is silent regarding the actual orientation of its check valve. This argument is not persuasive for several reasons. First, Butler is not silent regarding the orientation of its check valve. Instead, Butler at col. 2, lines 29-31 states that Fig. 2 is a diagrammatic partial cross-sectional view of Butler’s invention “as it would be positioned” in a tool. The fact that Butler explicitly describes the components of Fig. 2 as being illustrated as they would be positioned is sufficient to rely on the orientations of the components as illustrated in Fig. 2 of Butler. The check valve as shown in Fig. 2 of Butler is vertically positioned. Therefore, Butler teaches a vertically positioned check valve. Since the Applicant’s argument fails to address the disclosure of Butler at col. 2, lines 29-31 in asserting that Butler is silent with respect to the orientation of the check, Applicant’s argument is not persuasive. The second reason that Applicant’s argument is not persuasive is that the argument is against Butler alone, rather than against Hirai as modified to include a check valve along the tubing of Hirai in view of the teachings of Butler. One of ordinary skill in the art, being motivated to provide the tubing of Hirai with a check valve as taught by Butler in order to prevent backflow of lubricant, would seek to provide the tubing of Hirai with the check valve in the easiest manner possible, including as little re-design of the tool of Hirai as possible. Since the tubing of Hirai extends generally vertically, the natural and most straight-forward orientation of the check valve is to align the check valve with the tubing by positioning the check valve at a vertical orientation that matches the orientation of the tubing already present in Hirai. By providing Hirai with the check valve oriented vertically, the tubing of Hirai need not be re-routed. Thus, the combined teachings of Hirai and Butler render obvious positioning the check valve in the generally vertical orientation. Finally, Applicant’s argument is also not persuasive because the argument fails to contemplate that the check valve need only transport lubricant vertically in at least one orientation of the tool. The tool of Hirai, as modified to include a check valve, is a hand-held tool that can be positioned at a variety of orientations. Just as the inventive pole saw disclosed in the present application includes the check valve transporting lubricant generally vertically only when the pole saw is tilted at some particular angle, the tool of Hirai as modified to include a check valve as taught by Butler has at least one orientation in which the check valve is vertical (even if the check valve is not aligned with the tubing of Hirai, despite this being the most obvious orientation of the check valve). Thus, even if, as suggested by the Applicant at page 11 of the Appeal Brief, one of ordinary skill in the art decides to orient the check valve perpendicular to the tubing, the entire tool of Hirai as modified is regardless positionable such that the check valve transports lubricant in a generally vertical direction. That is, regardless of the orientation of the check valve relative to the tubing, the entire tool of Hirai as modified to include a check valve is positionable in at least one orientation in which the check valve transports lubricant generally vertically. This interpretation is consistent with the present application, where some particular orientation of the tool is required for the check valve to transport lubricant vertically. Since the Applicant’s argument that Butler fails to disclose a vertically oriented check valve fails to acknowledge that Butler explicitly teaches Fig. 2 illustrating a check valve “as it would be positioned” in the tool, fails to contemplate the combined teachings of references including the orientation of the tubing of Hirai, and fails to contemplate that the ‘generally vertical’ requirement must only be satisfied for one particular orientation of the tool, the Applicant’s argument is not persuasive.
Further regarding the rejection of claim 1 under 35 USC 103 relying on a modification of Hirai in view of Butler, the Applicant argues at page 12 of the Appeal Brief that Butler is not analogous art. This argument is not persuasive for the same reasons already discussed above.
Moving to claim 17, regarding the rejection of claim 17 under 35 USC 103 relying on a modification of Yu in view of Butler, the Applicant argues at pages 12-13 of the Appeal Brief that Butler fails to disclose or teach that “the lubricant is transported through the check valve in a generally vertical direction from the check valve inlet to the check valve outlet”. The Applicant asserts that Butler is silent regarding the orientation of its check valve. This argument is not persuasive for several reasons. First, Butler is not silent regarding the orientation of its check valve. Instead, Butler at col. 2, lines 29-31 states that Fig. 2 is a diagrammatic partial cross-sectional view of Butler’s invention “as it would be positioned” in a tool. The fact that Butler explicitly describes the components of Fig. 2 as being illustrated as they would be positioned is sufficient to rely on the orientations of the components as illustrated in Fig. 2 of Butler. The check valve as shown in Fig. 2 of Butler is vertically positioned. Therefore, Butler teaches a vertically positioned check valve. Since the Applicant’s argument fails to address the disclosure of Butler at col. 2, lines 29-31 in asserting that Butler is silent with respect to the orientation of the check, Applicant’s argument is not persuasive. The second reason that Applicant’s argument is not persuasive is that the argument is against Butler alone, rather than against Yu as modified to include a check valve along the tubing of Yu in view of the teachings of Butler. One of ordinary skill in the art, being motivated to provide the tubing of Yu with a check valve as taught by Butler in order to prevent backflow of lubricant, would seek to provide the tubing of Yu with the check valve in the easiest manner possible, including as little re-design of the tool of Yu as possible. Since the tubing of Yu extends generally vertically, the natural and most straight-forward orientation of the check valve is to align the check valve with the tubing by positioning the check valve at a vertical orientation that matches the orientation of the tubing already present in Yu. By providing Yu with the check valve oriented vertically, the tubing of Yu need not be re-routed. Thus, the combined teachings of Yu and Butler render obvious positioning the check valve in the generally vertical orientation. Finally, Applicant’s argument is also not persuasive because the argument fails to contemplate that the check valve need only transport lubricant vertically in at least one orientation of the tool. The tool of Yu, as modified to include a check valve, is a hand-held tool that can be positioned at a variety of orientations. Just as the inventive pole saw disclosed in the present application includes the check valve transporting lubricant generally vertically only when the pole saw is tilted at some particular angle, the tool of Yu as modified to include a check valve as taught by Butler has at least one orientation in which the check valve is vertical (even if the check valve is not aligned with the tubing of Yu, despite this being the most obvious orientation of the check valve). Thus, even if, as suggested by the Applicant at page 13 of the Appeal Brief, one of ordinary skill in the art decides to orient the check valve perpendicular to the tubing, the entire tool is regardless positionable such that the check valve transports lubricant in a generally vertical direction. That is, regardless of the orientation of the check valve relative to the tubing, the entire tool of Yu as modified to include a check valve is positionable in at least one orientation in which the check valve transports lubricant generally vertically. This interpretation is consistent with the present application, where some particular orientation of the tool is required for the check valve to transport lubricant vertically. Since the Applicant’s argument that Butler fails to disclose a vertically oriented check valve fails to acknowledge that Butler explicitly teaches Fig. 2 illustrating a check valve “as it would be positioned” in the tool, fails to contemplate the combined teachings of references including the orientation of the tubing of Yu, and fails to contemplate that the ‘generally vertical’ requirement must only be satisfied for one particular orientation of the tool, the Applicant’s argument is not persuasive.
Further regarding the rejection of claim 17 under 35 USC 103 relying on a modification of Yu in view of Butler, the Applicant argues at page 13 of the Appeal Brief that “the Office Action confusingly references the modification of the Hirai reference in the rejection of independent claim 1 [sic, claim 17] as unpatentable over Yu in view of Butler”. The citations to the Hirai reference in the rejection of claim 17 as being unpatentable over Yu in view of Butler were a typographical error that has been remedied in the present action.
Also regarding the rejection of claim 17 under 35 USC 103 relying on a modification of Yu in view of Butler, the Applicant argues at pages 14-15 of the Appeal Brief that Butler is not analogous art. This argument is not persuasive for the same reasons already discussed above.
Turning to the rejection of claim 17 as being unpatentable under 35 USC 103 relying on a modification of Hirai in view of Butler, the Applicant makes the same argument against Butler as addressed above. In particular, the Applicant argues at pages 15-16 of the Appeal Brief that Butler fails to disclose “that the lubricant is transported through the check valve in a generally vertical direction from the check valve inlet to a check valve outlet”. The Applicant asserts that Butler is silent regarding the orientation of its check valve. This argument is not persuasive for several reasons. First, Butler is not silent regarding the orientation of its check valve. Instead, Butler at col. 2, lines 29-31 states that Fig. 2 is a diagrammatic partial cross-sectional view of Butler’s invention “as it would be positioned” in a tool. The fact that Butler explicitly describes the components of Fig. 2 as being illustrated as they would be positioned is sufficient to rely on the orientations of the components as illustrated in Fig. 2 of Butler. The check valve as shown in Fig. 2 of Butler is vertically positioned. Therefore, Butler teaches a vertically positioned check valve. Since the Applicant’s argument fails to address the disclosure of Butler at col. 2, lines 29-31 in asserting that Butler is silent with respect to the orientation of the check, Applicant’s argument is not persuasive. The second reason that Applicant’s argument is not persuasive is that the argument is against Butler alone, rather than against Hirai as modified to include a check valve along the tubing of Hirai in view of the teachings of Butler. One of ordinary skill in the art, being motivated to provide the tubing of Hirai with a check valve as taught by Butler in order to prevent backflow of lubricant, would seek to provide the tubing of Hirai with the check valve in the easiest manner possible, including as little re-design of the tool of Hirai as possible. Since the tubing of Hirai extends generally vertically, the natural and most straight-forward orientation of the check valve is to align the check valve with the tubing by positioning the check valve at a vertical orientation that matches the orientation of the tubing already present in Hirai. By providing Hirai with the check valve oriented vertically, the tubing of Hirai need not be re-routed. Thus, the combined teachings of Hirai and Butler render obvious positioning the check valve in the generally vertical orientation. Finally, Applicant’s argument is also not persuasive because the argument fails to contemplate that the check valve need only transport lubricant vertically in at least one orientation of the tool. The tool of Hirai, as modified to include a check valve, is a hand-held tool that can be positioned at a variety of orientations. Just as the inventive pole saw disclosed in the present application includes the check valve transporting lubricant generally vertically only when the pole saw is tilted at some particular angle, the tool of Hirai as modified to include a check valve as taught by Butler has at least one orientation in which the check valve is vertical (even if the check valve is not aligned with the tubing of Hirai, despite this being the most obvious orientation of the check valve). Thus, even if, as suggested by the Applicant at page 16 of the Appeal Brief, one of ordinary skill in the art decides to orient the check valve perpendicular to the tubing, the entire tool is regardless positionable such that the check valve transports lubricant in a generally vertical direction. That is, regardless of the orientation of the check valve relative to the tubing, the entire tool of Hirai as modified to include a check valve is positionable in at least one orientation in which the check valve transports lubricant generally vertically. This interpretation is consistent with the present application, where some particular orientation of the tool is required for the check valve to transport lubricant vertically. Since the Applicant’s argument that Butler fails to disclose a vertically oriented check valve fails to acknowledge that Butler explicitly teaches Fig. 2 illustrating a check valve “as it would be positioned” in the tool, fails to contemplate the combined teachings of references including the orientation of the tubing of Hirai, and fails to contemplate that the ‘generally vertical’ requirement must only be satisfied for one particular orientation of the tool, the Applicant’s argument is not persuasive.
Further regarding the rejection of claim 17 under 35 USC 103 relying on a modification of Hirai in view of Butler, the Applicant argues at page 17 of the Appeal Brief that Butler is not analogous art. This argument is not persuasive for the same reasons already discussed above.
Turning to the rejection of claim 3 under 35 USC 103 as being unpatentable over Yu as modified by references including Modular Check Valves, the Applicant asserts at pages 17-18 of the Appeal Brief, “Appellant respectively submits that the check valve with barb fittings taught by Modular Check Valves could not be incorporated into the lubrication discharge conduit 227 of Butler without severing the fluid discharge conduit 227.” This argument is not persuasive. First, the valve of Modular Check Valves is incorporated into Yu, as modified, (in one rejection above) or into Hirai, as modified, (in another rejection above), not into Butler. Second, the valve of Modular Check Valves includes a first tubing at one side of the valve and a second tubing at a second side of the valve such that there is a complete fluid flow path. The two tubings are thus in fluid communication with each other via the valve, and there is no issue with the severing of any tubings. As such, Applicant’s argument against some hypothetical tubing severing is not persuasive.
Turning to the rejection of claim 4 under 35 USC 103 as being unpatentable over Yu as modified by references including Modular Check Valves, the Applicant asserts at pages 18-19 of the Appeal Brief, “Modular Check Valves is completely silent as to providing an outlet fitting higher than the inlet fitting in the vertical direction”. This argument is not persuasive. First, the valve of Modular Check Valves is incorporated into Yu, as modified, (in one rejection above) or into Hirai, as modified, (in another rejection above). The combination of references teaches the orientation of the check valve for the reasons discussed herein. Applicant’s argument is against Modular Check Valves alone, rather than against the combination of references. Second, claim 4 need only be satisfied for one particular orientation of the tool of Yu, as modified, or Hirai, as modified. Each of these tools is positionable in a variety of orientations, including at least one orientation in which the check valve is vertically oriented in the manner required by claim 4. The Applicant’s own inventive tool as disclosed in the present specification is only satisfied for one particular orientation of the tool, and thus the prior art should only be held to the same standard as required of the Applicant’s own inventive tool. The Applicant further makes hypothetical arguments against Modular Check Valves, including potential issues related to a pressure required to actuate the valves. This argument is not persuasive because one of ordinary skill in the art is able to select a valve that performs the desired function of preventing backflow.
Turning to the rejection of claim 10, the Applicant asserts that the drawings of Yu are not to scale. This argument is not persuasive. The rejection does not rely on the scale of the drawings of Yu. Instead, the rejection relies on the structure illustrated in the drawings of Yu, in particular the relative positions of the tubing with respect to the reservoir, pump, and guide bar. Yu is modified to include a check valve along the tubing, and thus the position of the check valve in Yu, as modified, is discernable from the drawings of Yu. The Applicant’s argument confuses relative positions with scale, and is therefore not persuasive.
Conclusion
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/EVAN H MACFARLANE/Examiner, Art Unit 3724
1 Even though Butler at col. 3, lines 43-45 teaches that the check valve 237 is in “fluid communication” with the tubing, and even though Butler at Fig. 2 illustrates the check valve 237 as separating a first tubing below the check valve 237 from a second tubing above the check valve 237, for the purposes of this rejection Butler is not relied upon for teaching that the tubing below the check valve is a different tubing from the tubing above the check valve. As such, the discussion of Butler refers to ‘a first tubing section’ and ‘a second tubing section’ rather than a first tubing and a second tubing.
2 Even though Butler at col. 3, lines 43-45 teaches that the check valve 237 is in “fluid communication” with the tubing, and even though Butler at Fig. 2 illustrates the check valve 237 as separating a first tubing below the check valve 237 from a second tubing above the check valve 237, for the purposes of this rejection Butler is not relied upon for teaching that the tubing below the check valve is a different tubing from the tubing above the check valve. As such, the discussion of Butler refers to ‘a first tubing section’ and ‘a second tubing section’.
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