DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: there is no antecedent basis in the specification for a “third hollow portion” recited in claim 27.
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 16-29 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.
Independent claim 27 recites “the battery mounting portion is located radially outward of a side of the rod portion corresponding to the second hollow portion…the battery is below the second hollow portion, the battery overlaps with a third hollow portion, within the housing and in communication with the second hollow portion, in a longitudinal direction of the rod portion, the battery has a long side that is longest of all sides of the battery and the long side forms an angle with respect to a second imaginary straight line when the battery is mounted…the long side of the battery mounted to the battery mounting portion is parallel to the center axis of the rod portion” This particular orientation does not appear to be disclosed in the specification as originally filed. In this claim, the battery must be below the second hollow portion and overlapping with a third hollow portion (which is apparently within the housing of the handle portion; note that the phrase “third hollow portion” is not recited in the specification) in a longitudinal direction of the rod portion. This does not occur in the embodiment shown in figures 1-10, as it can be seen from fig 6 that no part of the battery 86 is below the lower part of the rod portion which includes the second hollow portion. The same is true of the embodiments of figures 11-16, which all show the battery above or at the same level as the rod portion, with no part extending below the rod portion. The embodiment of figures 17-18 does not show the battery and therefore do not provide support for the claimed battery orientation. In the embodiment of figures 19-20, while the figures may arguably show the battery 86 being below the second hollow portion (fig 20 shows the battery being slightly below the unlabeled rod portion), the battery in this orientation is not oriented such that a longest side of the battery “forms an angle with respect to” the second imaginary straight line K, and does not show the long side of the battery being parallel to the center axis of the rod portion, as required by the claim. As can be seen in both these figures, the longest side is parallel to the second imaginary straight line and perpendicular to the center axis of the rod portion. The embodiment of figures 21-22, which is the only embodiment which clearly shows the battery being below the second hollow portion as claimed, does not depict the battery overlapping with the third hollow portion in a longitudinal direction of the rod portion, as the entire battery is located below the housing of the handle and any third hollow portion associated therewith as shown in fig 22. It is also not clear from these figures whether the longest side of the battery is parallel to the center axis of the rod portion as required by the claim. Applicant’s written specification does not make up for these deficiencies, as there is no written description of the battery being below the second hollow portion, or overlapping with a third hollow portion in a longitudinal direction of the rod portion, let alone in particular combination with the battery mounting portion being radially outward of a side of the rod portion or with the claimed long side orientation. Note that in applicant’s remarks, applicant does not point to which of the several embodiments is being claimed, or identify where in the figures or specification this particular battery orientation is believed to be supported. In future amendments, examiner requests that the claimed embodiment be identified by figure or with reference to the original written specification in order to assist with understanding of the claims. Note that any amendment to independent claim 27 should be reviewed to ensure support in combination with the additional battery orientation limitations found in dependent claims 16, 19-21, and 23. For the reasons discussed above, claim 27 and claims 16-26 and 28-29 dependent therefrom were not described in the original specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 27, the claim recites “the battery overlaps with a third hollow portion, within the housing and in communication with the second hollow portion, in a longitudinal direction of the rod portion” in lines 16-18. This is confusingly worded and unclear. As currently worded, the claim may be reciting that the battery overlaps with a third hollow portion, overlaps within the housing and in communication with the second hollow portion, and overlaps in a longitudinal direction of the rod portion. It is unclear what it would mean for the battery to “overlap… within the housing and in communication with the second hollow portion”. It appears from applicant’s figures and specification (which does not mention the third hollow portion) that the battery is intended to overlap with a third hollow portion of the housing, rather than to overlap with a third hollow portion, in addition to overlapping within the second hollow portion. For the purposes of this examination, this claim limitation will be read as requiring a third hollow portion within the housing and in communication with the second hollow portion, wherein the battery overlaps with the third hollow portion in a longitudinal direction of the rod portion.
Claims 16-26 and 28-29 are rejected as indefinite due to their dependency upon rejected claim 27.
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.
Claim(s) 16-17 and 20-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sengewald (US 2008/0201877, previously cited) in view of Weiford (US 2008/0085664, previously cited) and Ito (US 2015/0328763, previously cited).
Regarding claim 27, Sengewald teaches a long rod polishing device comprising: a prismatic or columnar battery (180; fig 5); a battery mounting portion (fig 5; at end of device) to which the battery is mountable; an electric motor (178) driven by electric power from the battery ([0155]); a pad (98; labeled in fig 1; [0111]) having a polishing surface (bottom surface), the pad moving by a driving force from the electric motor ([0018]); a rod portion (22) having an end portion to which the pad is coupled (bottom end in fig 5); and a handle portion mounted to an end of the rod portion opposite to the pad (outside surface of motor 178 in fig 5; [0098] describes outer surface of motor forming a handle for a user to grip), the battery mounting portion is located radially outward of a side of the rod portion and the battery is below the rod portion (as shown in fig 5; battery extends radially outward above a top side of the rod portion and below the rod portion), the battery overlaps with the handle in a longitudinal direction of the rod portion (as can be seen in fig 5), the battery has a long side that is longest of all sides of the battery (back side as viewed in fig 5) and the long side forms an angle with respect to a second imaginary straight line (line central and vertical on pad, labeled 96 in fig 3) when the battery is mounted, the second imaginary straight line is perpendicular to both of a center axis (unlabeled axis central to rod portion 22) of the rod portion (pad is pivotable as described [0109] so as to allow a perpendicular arrangement) and a first imaginary straight line (pivot axis passing through element 86a as labeled in fig 4), and the first imaginary straight line is perpendicular to the center axis and parallel to the polishing surface of the pad (a shown in fig 4), the rod portion is thinner and longer than the handle portion (as can be seen in fig 5), and the pad is configured to change its posture around an axis parallel to the first imaginary straight line (pivotable as described [0109]).
Sengewald does not teach a first hollow portion and second hollow portion inside the rod portion configured for passage of dust and lead wires, wherein the first hollow portion is above the second hollow portion. Weiford teaches a long rod polishing device including a rod portion (80; fig 1), wherein inside the rod portion are two hollow portions (shown in fig 3) with a first hollow portion (84) configured for passage of dust ([0054]) and a second hollow portion (86) containing lead wires ([0055]; “electric cord”). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the rod portion of Sengewald with first and second hollow portions configured for passage of dust and containing lead wires (resulting the battery mounting portion of Sengewald extending radially outward of a side of the rod portion corresponding to the second hollow portion due to its extension above and below the rod portion), as forming separate passages for dust and lead wires allows the dust to be kept separate from other components in the rod, which prevents malfunction due to dust exposure as taught by Weiford ([0055]). While figure 3 of Weiford shows the first hollow portion below the second hollow portion (instead of above as claimed), figure 1 of Weiford appears to show the first hollow portion being above the second hollow portion, as the wider part of the rod portion is above the narrow part which houses the second hollow portion. Furthermore, it has been held that a mere rearrangement of parts is an obvious modification for a person of ordinary skill (MPEP 2144.04 VI. C.). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrange the first hollow portion above the second hollow portion when applying the hollow portions of Weiford to the rod portion of Sengewald, as such an orientation is implied by Weiford (in fig 1) and would not modify the operation of the device as compared to the opposite orientation. This orientation results in the second hollow portion occupying a lower part of the rod portion and when applied to Sengewald, results in the battery being below and overlapping with the second hollow portion as claimed.
Sengewald does not teach the handle portion comprising a housing extending outward of all of a periphery of the rod portion, and including a third hollow portion within the housing and in communication with the second hollow portion. Weiford further teaches a long rod polishing device including a handle portion comprising a housing (24) mounted to an end of the rod portion (80) opposite to a pad (16) and extending outward of all of a periphery of the rod portion (as shown in fig 2), and including a third hollow portion within the housing (interior of housing 24) and in communication with the second hollow portion (as described in [0055], second hollow portion 86 communicates with motor 22 which is within the third hollow portion of the housing 24). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to use a handle comprising a housing with a third hollow portion within the housing in communication with the second hollow portion, as this achieves the predictable result of allowing the handle to contain electrical elements while allowing connectivity through the handle as taught by Weiford ([0032], [0055]). When the housing with a third hollow portion of Weiford is used as the handle portion in Sengewald, this results in the battery overlapping with the third hollow portion as claimed, as the battery of Sengewald overlaps with the handle portion as described above.
Sengewald does not teach the long side of the battery mounted to the battery mounting portion is parallel to the center axis of the rod portion (central axis of the rod is perpendicular to back surface of battery as shown in fig 5). Ito teaches a polishing device wherein a battery (31) can alternatively be arranged perpendicular or parallel to a center axis of a rod portion of the tool (see alternative positions in figs 25 and 27 relative to rod portion 11). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to reposition the battery mounting portion such that a longest side of the battery of Sengewald is parallel to a center axis of the rod portion, as these arrangements are obvious alternatives to each other as taught by Ito, the parallel arrangement selectable for the advantage of reducing the vertical footprint of the tool as taught by Ito ([0113]).
Regarding claim 16, Sengewald, as modified, teaches all the limitations of claim 27 as described above. Sengewald does not teach a plurality of batteries are mountable to the battery mounting portion. Ito further teaches a plurality of batteries are mountable to a battery mounting portion (as shown in fig 27). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the battery mounting portion of Sengewald such that a plurality of batteries are mountable to the battery mounting portion, as this allows higher voltage applications for high electrical output as taught by Ito ([0008-0009]).
Regarding claim 17, Sengewald, as modified, teaches all the limitations of claim 27 as described above. Sengewald further teaches the electric motor and the pad are held to a head portion housing (100; as shown in figs 3 and 5; pad directly held to head; motor held to head through rod portion), and the pad is configured to change the posture around the axis parallel to the first imaginary straight line via the head portion housing ([0108]; about elements 86a, 86b of head shown in fig 4).
Regarding claim 20, Sengewald, as modified, teaches all the limitations of claim 27 as described above. Sengewald is silent as to how the battery is mounted to the battery mounting portion. Ito teaches a polishing device including a battery slidably mounted to a battery mounting portion ([0011]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to slidably mount the battery of Sengewald to the battery mounting portion in order to achieve the predictable result of allowing the battery to be attached and detached by a user as taught by Ito ([0011]).
Regarding claim 21, Sengewald, as modified, teaches all the limitations of claim 27 as described above. Sengewald is silent as to a particular battery type. Ito teaches a polishing device including a battery which is a lithium ion battery ([0135]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to choose a lithium ion battery as the battery in the device of Sengewald, as lithium ion batteries are known in the art for the predictable result of powering polishing devices and being rechargeable as taught by Ito ([0135], [0089]).
Regarding claim 22 Sengewald, as modified, teaches all the limitations of claim 27 as described above. Sengewald further teaches the handle portion includes a grip (outside surface of motor 178 in fig 5) projects toward a side opposite to the pad (projects toward the back of tool as shown in fig 5) and is configured to be gripped by a user ([0098] describes outside surface of motor forming a handle for a user to grip).
Regarding claim 23, Sengewald, as modified, teaches all the limitations of claim 22 as described above. Sengewald does not teach that in the embodiment of fig 5, the battery mounting portion is closer to the pad in a direction of the center axis of the rod portion than the grip is. However, in the embodiment of fig 2, Sengewald provides an additional grip 64, which extends beyond the motor to be the endmost part of the tool. Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the additional grip (64) to the embodiment of fig 5, providing a user a grip, such that the battery mounting portion is closer to the pad than the grip in a direction of the center axis of the rod portion, as this additional grip extending beyond the rest of the tool allows a user an additional gripping surface, which is removable and adjustable as taught by Sengewald ([0099-0100], [0102]).
Regarding claim 24 , Sengewald, as modified, teaches all the limitations of claim 27 as described above. Sengewald does not teach the handle portion includes a speed adjustment dial, where a switching state of the speed adjustment dial corresponds to a speed setting. Ito teaches a handle portion (113) includes a speed adjustment dial (123; fig 48), and a switching state of the speed adjustment dial corresponds to a speed setting ([0145]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a speed adjustment dial to the housing of Sengewald, as this allows a user to “dial in” a desired speed of the tool based on the intended application as taught by Ito ([0145]).
Regarding claim 25, Sengewald, as modified, teaches all the limitations of claim 24 as described above. Sengewald further teaches the handle portion includes a grip (outside surface of motor 178 in fig 5) that projects toward a side opposite to the pad (projects toward the back of tool as shown in fig 5) and is configured to be gripped by a user ([0098] describes outside surface of motor forming a handle for a user to grip), and wherein the speed dial (when included based on the teachings of Ito as described above) is closer to the pad in a direction of the center axis of the rod portion than the grip is (as described [0145] and shown in fig 48 of Ito, the dial is at a frontmost area of the handle, and therefore would be closer to the pad than the grip portion when employed in the device of Sengewald).
Regarding claim 26, Sengewald, as modified, teaches all the limitations of claim 27 as described above. Sengewald further teaches the electric motor comprises a shaft (not shown in fig 5, but labeled 58 in fig 3 central and vertical to pad) driven by electric power ([0118]), a direction of the motor shaft (vertical direction in fig 5) intersects a direction of the center axis of the rod portion (fig 5; extending rod axis downward intersects vertical axis central to pad).
Claim(s) 18-19 and 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sengewald, Weiford, and Ito as applied to claim 27 above, and further in view of Rhode (EP 2955435, previously cited).
Regarding claims 18-19, Sengewald, as modified, teaches all the limitations of claim 27 as described above. Sengewald does not teach the handle portion including a dust collection hose coupling portion, wherein the battery mounting portion is closer to the pad in a direction of the center axis of the rod portion than the dust collection hose coupling portion. Rhode teaches a long rod polishing device including a handle portion (element 34 including handle 36) including a dust collection hose coupling portion (38) to which a dust collection hose is connectable ([0026]); and wherein a battery mounting portion (48; [0037]) is closer to the pad (W) in a direction of the center axis of the rod portion (72) than the dust collection hose coupling portion is (as shown in fig 1). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include the dust collection hose coupling portion of Rhode to the long rod polishing device of Sengewald on an end of the handle portion such that the battery mounting portion is closer to the pad in a direction of the center axis of the rod portion than the dust collection hose coupling portion, as this allows dust produced during machining to be removed from the workpiece as taught by Rhode ([0025-0026]).
Regarding claim 28, Sengewald, as modified, teaches all the limitations of claim 27 as described above. Sengewald does not teach the first hollow portion and second hollow portion are within a telescopic mechanism of the rod portion. Rhode teaches a long rod polishing device including a first hollow portion and second hollow portion (fig 2; see second hollow portion 44 separate from hollow portion including element 16) within a telescopic mechanism (28) of a rod portion (fig 2; [0027]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a telescopic mechanism within which the first and second hollow portions of Sengewald are located, as a telescopic mechanism allows the length of the polishing device to be extended to selectively be in compact form or allow reaching difficult to reach locations as taught by Rhode ([0014], [0027]).
Regarding claim 29, Sengewald, as modified, teaches all the limitations of claim 27 as described above. Sengewald does not teach the first hollow portion and second hollow portion are within a telescopic mechanism comprising a rod housing and pipe. Rhode teaches a long rod polishing device including a first hollow portion and second hollow portion (fig 2; see second hollow portion 44 separate from hollow portion including element 16) within a telescopic mechanism of a rod portion (fig 2; [0027]), the telescopic mechanism comprising a rod housing (28) extending away from the handle portion (extends longitudinally away from handle portion 34 as shown in fig 1) and a pipe (72) inserted into the rod housing (as shown in fig 2). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a telescopic mechanism within which the first and second hollow portions of Sengewald are located, the telescopic mechanism comprising a rod housing and pipe inserted into the rod housing, as a telescopic mechanism allows the length of the polishing device to be extended to selectively be in compact form or allow reaching difficult to reach locations as taught by Rhode ([0014], [0027]).
Response to Arguments
Applicant's arguments filed 10 Dec 2025 have been fully considered but they are not persuasive. Applicant argues the previous 112a rejections have been overcome by the current amendment. Examiner respectfully disagrees. As detailed in the 112a rejection above, there does not appear to be support for the claimed battery location and orientation. If applicant believes the current claims are supported by the specification as originally filed, examiner requests that applicant refer to the drawings and written specification exactly which embodiment is being claimed and how each of the claimed battery orientation limitations are shown within that embodiment. As currently recited there does not appear to be support for a device wherein “the battery mounting portion is located radially outward of a side of the rod portion corresponding to the second hollow portion…the battery is below the second hollow portion, the battery overlaps with a third hollow portion, within the housing and in communication with the second hollow portion, in a longitudinal direction of the rod portion, the battery has a long side that is longest of all sides of the battery and the long side forms an angle with respect to a second imaginary straight line when the battery is mounted…the long side of the battery mounted to the battery mounting portion is parallel to the center axis of the rod portion”.
Regarding claim 27 and its dependents, applicant argues that Sengewald, Weiford, and Ito do not teach the claimed handle housing extending outward of all of a periphery of the rod portion. Examiner respectfully disagrees. As detailed above, the handle portion of Weiford teaches such a handle housing as shown in figs 1 and 2.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723