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 .
Response to Amendment
The amendment filed on 2025-09-29 has been entered. Claims 1-14 remain pending in this application. Claims 1, 3, 11, and 14 have been amended. No Claims have been canceled or newly added.
Claims 3 and 14 were amended to overcome the 32 USC 112(b) rejection made in paragraph 4 of the previous office action. These amendments are acceptable to overcome this rejection, however, these amendments introduce new matter. See rejection below.
Claim 11 was amended to overcome the 35 USC 112(b) rejection made in paragraph 5 of the previous office action. This amendment is acceptable and the rejection is withdrawn.
Response to Arguments
Applicant's arguments filed 2025-09-29 have been fully considered but they are not persuasive.
Applicant argues with regards to the amended claim 1 that the reference Shum teaches a jumper cable and that a jumper cable is not readily comparable to a circuit tester such that the implementation of the magnet in Shum to a circuit tester would not be obvious in view of the specific teachings of the reference and only hindsight reasoning can be used.
The examiner respectfully disagrees as only the magnet end of Shum was relied upon. One of ordinary skill in the art would recognize that replacing a connecting end of a cable, whether that cable be a wire or a jumper cable, with a magnet is obvious as it is well known to those of ordinary skill in the art that magnets connect to metal and therefore a cable connected to a magnet would make a connection. Further, one of ordinary skill in the art would recognize that a jumper cable and a wire to a circuit tester both are capable of conducting electricity and therefore the use of either would yield predictable results that are consistent with the size of the conductor, which one of ordinary skill in the art would know.
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 3 and 14 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 Claims 3 and 14, The limitation “wherein the electrical current is between 6.0 amps and 16.0 amps.” In lines 1-2 of claim 3 and line 39 of claim 14 is not supported in the specification. The specification states “In some embodiments, such as those designed for use in testing car batteries, the electrical current comprises between 6.0 volts and 16.0 volts. Other embodiments may be designed for different voltages of electrical current.” on page 7, lines 1-3. While the specification is ambiguous with regards to the use of current or voltage, the specification states that the embodiment used for testing car batteries and the value of 6 volts to 16 volts is consistent with the value of voltage used in car batteries. Therefore, one of ordinary skill in the art would not recognize that applicant had possession of the invention as claimed.
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, and 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Schloss (US-20150293148-A1) in view of CEN-TECH (See harbor freight tools NPL- “Owner’s Manual and Safety Instructions”) in view of Shum et al. (US-11996716-B1 – as cited in IDS) and further in view of Igarashi et al. (US-20060211280-A1).
Regarding Claim 1, Schloss teaches a circuit tester comprising: a housing having a first wall (Fig 1: front end, 106), a second wall (Fig 1: cap, 110), and a peripheral wall (Fig 1: handle, 105) extending between the first wall and the second wall to define an interior space (can be seen in Figure 1);
a probe being mounted to the housing (Fig 1: probe, 115), the probe having a circuit tip (can be seen in Figure 1) and a bulb end (unlabeled but can be seen at end of probe in Figure 1), the probe extending through the first wall wherein the circuit tip is positioned spaced from the first wall and the bulb end is positioned in the interior space (can be seen in Figure 1), the probe being electrically conductive (Para [0017] teaches the probe is conductive);
a lightbulb (Fig 1: LED, 207) being positioned within the interior space (Can be seen in Figure 1), the lightbulb being visible through the housing (Para [0007] teaches the handle is transparent so that light from the LED may be viewed through it);
a spring (Fig 1: spring, 125) being positioned in the interior space (can be seen in Fig 1), the spring being electrically coupled to the lightbulb (Para [0009] teaches current running through the entire device to light up the probe, therefore requiring the light and spring to be electrically connected), the spring being electrically conductive (Para [0027] teaches the spring is electrically conductive);
a wire (Fig 1: retractable coil chord, 135) having a housing end (Fig 1: unlabeled but can be seen attached to the handle cap, 110), the housing end being attached to the spring (Can be seen in Figure 1), the wire extending through the second wall (can be seen in Fig 1), the wire being electrically conductive (Para [0009] teaches current running through the entire device);
wherein the lightbulb emits light when the magnet is magnetically coupled to the metallic surface at a negative terminal (Para [0009]) and the circuit tip is contacting a positive terminal thereby closing an electric circuit (Para [0009]); and
wherein the probe, the spring, and the wire, between the positive terminal and the negative terminal thereby allowing an electrical current to flow between the positive terminal and the negative terminal to energize the lightbulb causing the lightbulb to emit light (Para [0009]).
Schloss does not teach:
the lightbulb physically contacting the bulb end,
a magnet end,
a magnet being coupled to the magnet end, wherein the magnet is electrically coupled to the spring and the lightbulb, the magnet being configured for magnetic coupling to a metallic surface;
the magnet being part of the circuit to complete the electrical circuit.
However, CEN-TECH teaches the lightbulb physically contacting the bulb end (last page of NPL shows exploded view of circuit tester, it is clear from this photo that the bulb will contact the end of the probe end). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the connection of Schloss to have the physical contact CEN-TECH. A motivation for this change is to ensure a good electrical connection and elimination of any parts between the LED and probe to reduce failure locations.
The combination of Schloss in view of CEN-TECH does not teach a magnet end, and
a magnet being coupled to the magnet end, wherein the magnet is electrically coupled to the spring and the lightbulb, the magnet being configured for magnetic coupling to a metallic surface;
However, Shum teaches a magnet end (Figs 3 and 4), and
a magnet being coupled to the magnet end (Figs 3 and 4), the magnet being configured for magnetic coupling to a metallic surface (col 1 lines 64-67 through col 2 lines 1-6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the end of Schloss in view of CEN-TECH to have a magnet as taught by Shum. A motivation for doing so is for a user to easily place the negative end on a metal part for an improved electrical connection as taught by Shum (see the abstract).
The combination of Schloss in view of CEN-TECH in view of Shum teaches a magnet with a conductor that conducts electricity to connect the circuit. The combination does not explicitly teach the magnet being part of the circuit to complete the electrical circuit. However, Igarashi teaches the magnet being part of the circuit to complete the electrical circuit (Para [0157] teaches a conductive magnet), which necessarily means the magnet is electrically coupled to the spring and the lightbulb. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the magnet of the combination to be electrically conductive as taught by Igarashi. One of ordinary skill in the art would recognize that a magnet with a conductor and a magnet that is electrically conductive are both known equivalents for providing electrical conductivity. It would have been obvious for one of ordinary skill in the art to substitute one known equivalent item (magnet with conductor) for another known equivalent (conductive magnet) resulting in the predictable result of connecting a circuit.
Regarding Claim 2, Schloss further teaches wherein the negative terminal grounds the electric circuit and wherein the positive terminal provides the electrical current (Schloss - Para [0006]).
Regarding Claim 3, the combination of Schloss in view of CEN-TECH in view of Shum in view of Igarashi, as presented with respect to claim 1, teaches wherein the electrical current is between 6.0 amps and 16.0 amps (Shum - col 1 lines 64-67 through col 2 lines 1-6 teach device intended to be used with jump starting a vehicle. This use is consistent with the teachings of the specification on page 7 lines 1-3 which states the parameters above are for embodiments used for testing car batteries). These features are necessarily taught by the combination.
Regarding Claim 5, the combination of Schloss in view of CEN-TECH in view of Shum in view of Igarashi, as presented with respect to claim 1, teaches wherein the magnet is electrically conductive whereby the electrical current flows through the magnet (Igarashi - Para [0157] teaches a conductive magnet). These features are necessarily taught by the combination.
Regarding Claim 6, Schloss further teaches the housing further comprising a transparent plastic material (Schloss - Para [0007]).
Regarding Claim 7, Schloss further teaches wherein the circuit tip is pointed (Schloss - can be seen in Fig 1).
Regarding Claim 8, Schloss further teaches the lightbulb further comprising a light emitting diode (Schloss - Para [0007]).
Regarding Claim 9, Schloss further teaches wherein the spring extends between the lightbulb and the second wall (Schloss - Can be seen in Fig 1). These features are necessarily taught by the combination.
Regarding Claim 10, the combination of Schloss in view of CEN-TECH in view of Shum in view of Igarashi, as presented with respect to claim 1, teaches wherein the spring is configured to increase a resistance of the electrical current when the electrical current is flowing through the spring (A spring will inherently have more resistance than a straight connection of similar materials as a spring is longer than a straight connection). These features are inherent to the combination.
Regarding Claim 11, the combination of Schloss in view of CEN-TECH in view of Shum in view of Igarashi, as presented with respect to claim 1, teaches wherein the wire has a constant cross-sectional area thereby maintaining the resistance of the electrical current when the electrical current flows through the wire (Shum - Figure 3 shows cable with a constant cross-sectional area). These features are necessarily taught by the combination.
Regarding Claim 12, Schloss further teaches a plate being mounted to the second wall within the interior space, the plate being electrically coupled to the spring and the wire, the plate being electrically conductive whereby the electrical current flows through the plate between the spring and the wire (Schloss - The plate is unlabeled but can be seen in Figure 1 between the wire and the spring. The plate must be electrically conductive based on teaching in Para [0009] which requires current through the entire device).
Regarding Claim 13, Schloss further teaches an insulation covering the wire, the insulation preventing conduction of electricity along the wire where the insulation is covering the wire (Schloss - insulation can be seen going over part of the ground device of 140 and continuing down the length of the wire).
Claims 4 is rejected under 35 U.S.C. 103 as being unpatentable over Schloss in view of CEN-TECH in view of Shum et al. in view of Igarashi et al. and further in view of Myers et al. (US-5572143-B2).
Regarding Claim 4, the combination of Schloss in view of CEN-TECH in view of Shum in view of Igarashi does not teach the electrical current comprising an alternating current. However, Myers teaches the electrical current further comprising an alternating current (col 2 lines 60-63 teaches testing AC current). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the current of the combination to allow for AC current as taught by Myers. A motivation for this change is to allow both AC and DC current to increase the possible use cases for the product.
Claims 14 is rejected under 35 U.S.C. 103 as being unpatentable over Schloss in view of CEN-TECH in view of Shum et al. in view of Igarashi et al. in view of Myers et al. and further in view of Eid et al. (US-20150185247-A1)
Regarding Claim 14, Schloss teaches a circuit tester comprising:
a housing having a first wall (Fig 1: front end, 106), a second wall (Fig 1: cap, 110), and a peripheral wall (Fig 1: handle, 105) extending between the first wall and the second wall to define an interior space (can be seen in Figure 1), the housing comprising a transparent plastic material (Para [0007]);
a probe being mounted to the housing (Fig 1: probe, 115), the probe having a circuit tip (can be seen in Figure 1) and a bulb end (unlabeled but can be seen at end of probe in Figure 1), the probe extending through the first wall wherein the circuit tip is positioned spaced from the first wall and the bulb end is positioned in the interior space (can be seen in Figure 1), the circuit tip being pointed (can be seen in Fig 1), the probe being electrically conductive (Para [0017] teaches the probe is conductive);
a lightbulb (Fig 1: LED, 207), the lightbulb being positioned within the interior space (Can be seen in Figure 1), the lightbulb being visible through the housing (Para [0007] teaches the handle is transparent so that light from the LED may be viewed through it), the lightbulb comprising a light emitting diode (Para [0007]);
a spring (Fig 1: spring, 125) being positioned in the interior space (can be seen in Fig 1), the spring being electrically coupled to the lightbulb (Para [0009] teaches current running through the entire device to light up the probe, therefore requiring the light and spring to be electrically connected), the spring being electrically conductive the spring being electrically conductive (Para [0027] teaches the spring is electrically conductive), the spring extending between the lightbulb and the second wall (Can be seen in Fig 1), the spring being configured to increase a resistance of an electrical current when the electrical current flows through the spring (A spring will inherently have more resistance than a straight connection of similar materials as a spring is longer than a straight connection);
a plate being mounted to the second wall within the interior space, the plate being electrically coupled to the spring, the plate being electrically conductive whereby the electrical current flows through the plate (The plate is unlabeled but can be seen in Figure 1 between the wire and the spring. The plate must be electrically conductive based on teaching in Para [0009] which requires current through the entire device);
a wire (Fig 1: retractable coil chord, 135) having a housing end (Fig 1: unlabeled but can be seen attached to the handle cap, 110), the housing end being attached to the plate (Can be seen in figure 1), the wire extending through the second wall (can be seen in Fig 1), the wire being electrically conductive (Para [0009] teaches current running through the entire device) whereby the electrical current flows through the wire,
an insulation covering the wire, the insulation preventing conduction of electricity along the wire where the insulation is covering the wire (insulation can be seen going over part of the ground device of 140 and continuing down the length of the wire);
wherein the lightbulb emits light when the wire is connected at a ground source and the circuit tip is contacting a positive terminal thereby closing an electric circuit, the negative terminal grounding the electric circuit, the positive terminal providing the electrical current (Para [0006] and Para [0009]); and
wherein the probe, the spring, and the wire, complete the electrical circuit between the positive terminal and the negative terminal thereby allowing the electrical current to flow between the positive terminal and the ground source to power the lightbulb causing the lightbulb to emit light (Para [0009]).
Schloss does not teach:
the lightbulb being mounted to the housing,
the lightbulb physically contacting the bulb end,
The wire having a magnet end,
the wire having a constant cross-sectional area whereby the wire maintains the resistance of the electrical current when the electrical current flows through the wire,
a magnet being soldered to the magnet end wherein the magnet is electrically coupled to the spring and the lightbulb, the magnet being configured for magnetic coupling to a metallic surface, the magnet being electrically conductive whereby the electrical current flows through the magnet and the magnet completes the electrical circuit
the lightbulb emits light when the magnet is magnetically coupled to the metallic surface,
the electrical current being an alternating current,
the electrical current comprising between 6.0 and 12.0 amps,
However, CEN-TECH teaches the lightbulb being mounted to the housing (The lightbulb is mounted to the housing via the spring and probe end),
the lightbulb physically contacting the bulb end (last page of NPL shows exploded view of circuit tester, it is clear from this photo that the bulb will contact the probe end). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the connection of Schloss to have the physical contact CEN-TECH. A motivation for this change is to ensure a good electrical connection and elimination of any parts between the LED and probe to reduce failure locations.
The combination of Schloss in view of CEN-TECH does not teach:
The wire having a magnet end wherein the magnet is electrically coupled to the spring and the lightbulb,
The wire having a constant cross-sectional area whereby the wire maintains the resistance of the electrical current when the electrical current flows through the wire,
The magnet being configured for magnetic coupling to a metallic surface,
Coupling the magnet at a ground source,
The electrical current comprising between 6.0 and 12.0 amps.
However, Shum teaches the wire having a magnet end (Figure 3 shows magnet end that is attached to the magnet of Figure 4),
the wire having a constant cross-sectional area whereby the wire maintains the resistance of the electrical current when the electrical current flows through the wire (Figure 3 shows a cable with a constant cross-sectional area for electricity to flow through).
the magnet being configured for magnetic coupling to a metallic surface (col 1 lines 64-67 through col 2 lines 1-6),
coupling the magnet at a ground source (col 1 lines 64-67 through col 2 lines 1-6),
the electrical current comprising between 6.0 and 12.0 amps (col 1 lines 64-67 through col 2 lines 1-6 teach device intended to be used with jump starting a vehicle. This use is consistent with the teachings of the specification on page 7 lines 1-3 which states the parameters above are for embodiments used for testing car batteries), Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the wire of Schloss in view of CEN-TECH to have a magnet as taught by Shum. A motivation for doing so is for a user to easily place the negative end on a metal part for an improved electrical connection as taught by Shum (see the abstract).
The combination of Schloss in view of CEN-TECH in view of Shum teaches a magnet with a conductor that conducts electricity to connect the circuit. The combination does not explicitly teach the magnet being part of the circuit to complete the electrical circuit.
However, Igarashi teaches:
The magnet being electrically conductive whereby the electrical current flows through the magnet (Para [0157] teaches a conductive magnet), and therefore completing the circuit wherein the magnet is electrically coupled to the spring and the lightbulb. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the magnet of the combination to be electrically conductive as taught by Igarashi. One of ordinary skill in the art would recognize that a magnet with a conductor and a magnet that is electrically conductive are both known equivalents for providing electrical conductivity. It would have been obvious for one of ordinary skill in the art to substitute one known equivalent item (magnet with conductor) for another known equivalent (conductive magnet) resulting in the predictable result of connecting a circuit.
The combination of Schloss in view of CEN-TECH in view of Shum in view of Igarashi does not teach:
The electrical current being an alternating current.
However, Myers teaches the electrical current being an alternating current (col 2 lines 60-63 teaches testing AC current). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the current of the combination to allow for AC current as taught by Myers. A motivation for this change is to allow both AC and DC current to increase the possible use cases for the product.
The combination of Schloss in view of CEN-TECH in view of Shum in view of Igarashi in view of Myers does not teach:
the magnet being soldered.
However, Eid teaches the magnet being soldered (Para [0029]-[0030] teach attaching a magnet with solder to make an electrical and mechanical connection). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the magnet connection of the combination to be connected with solder as taught by Eid. A motivation for this change is to create an electrical and mechanical connection as taught by Eid in paragraphs [0029]-[0030].
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH J BARRON whose telephone number is (571)272-0902. The examiner can normally be reached M-F 09:30-17:30 ET.
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, Lee Rodak can be reached at (571) 270-5628. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEREMIAH J BARRON/Examiner, Art Unit 2858
/LEE E RODAK/Supervisory Patent Examiner, Art Unit 2858