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 .
Election/Restrictions
Applicant’s election with traverse of Group I (claims 1-11 and 18-20) and
Subgroup IB (claims 3-6), as set forth in the reply filed on 01/22/2026, is acknowledged. The traversal is based on the assertion that searching the limitations of claim 1 in Group I would necessarily result in searching the limitations of claim 12 in Group II (claims 12-17), and therefore examination of both groups would not impose an undue burden on the Examiner.
However, Group I is directed to a band saw apparatus that includes, inter alia, a motor located within a housing, a controller connected to the motor, a first trigger, and a touch sensor, wherein the controller is configured to determine whether the touch sensor is actuated by the user, determine whether the first trigger is actuated by the user, and drive the motor accordingly. In contrast, claim 12, directed to a method for controlling a band saw, does not require the motor to be located within a housing, nor does it require the motor to be connected to a controller. Claim 12 further does not require a controller that performs all of the recited steps, including driving the motor. Indeed, claim 12 does not expressly require a controller at all. In this case, for example, a user can determine whether a first trigger is actuated.
It is noted that an apparatus and a process are distinct inventions if either (1) the claimed process can be practiced by another, materially different apparatus or by hand, or (2) the claimed apparatus can be used to practice another, materially different process. In the present case, the claimed process could be performed using an apparatus in which the motor is not located within a housing (e.g., the motor may be external to the housing), and without a controller that performs all of the functions recited in claim 1. Accordingly, the apparatus and method claims are distinct.
Applicant’s argument that Subgroups IA–ID are not mutually exclusive is also not persuasive. As stated in the Restriction Requirement, each subgroup includes at least one feature that is not present in the other subgroups. Thus, each subgroup is mutually exclusive of the others. Although the searches for the individual subgroups may overlap to some extent, they do not coincide. A search directed to elected Subgroup IB would not be sufficient to address the distinct features of non-elected Subgroups IA and IC–ID. Furthermore, a text and subclass search necessary to locate the specific feature of one subgroup would not necessarily disclose the distinct features of the remaining subgroups. Each subgroup, by virtue of its distinct feature(s), occupies a separate status in the prior art and requires a different field of search.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2, 7-10, 12-17, and 19-20 are withdrawn from further
consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created
doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 4 and 6 are provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claim 1-2 and 4-5 of copending Application No. 18/676,946 (reference application). Although the claims at issue are not identical, they are not patentably distinct. Specifically, claim 1 of the copending application discloses all of the limitations set forth in claim 1 of the present application, including the limitation that the controller determines that the first trigger is actuated by the user after the touch sensor (i.e., the first and second touch sensors) is actuated by the user.
It is noted that claim 1 of the copending application recites two touch sensors located on the second handle, whereas claim 1 of the present application recites a single touch sensor located on the second handle. However, the first and second touch sensors of the copending application can reasonably be interpreted as corresponding to the touch sensor recited in claim 1 of the present application.
Claim 2 of the copending application discloses all of the limitations set forth in claim 3 of the present application.
Claim 4 of the copending application discloses all of the limitations set forth in claim 4 of the present application.
Claim 5 of the copending application discloses all of the limitations set forth in claim 6 of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 1, 3-6, 11, and 18 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 claims 1 and 18, the recitation that “a first hand of the user may be detected on the first handle based on actuation or de-actuation of the first trigger” is unclear. The claims do not recite any sensor or detection mechanism associated with the first handle. A trigger being actuated or de-actuated merely indicates a change in switch state and does not inherently detect the presence of a user’s hand. It is therefore unclear how the user’s hand is “detected,” what structure performs the detection, or whether detection is merely inferred from trigger actuation.
Regarding claims 3 and 4, “the second handle is released by the user” is confusing as claim 1 does not require the second handle itself to be held by the user, but instead requires that the touch sensor on the second handle be actuated. Accordingly, the release condition should be expressed in terms of de-actuation of the touch sensor rather than release of the handle. It is unclear whether “release” refers to physical disengagement from the handle or de-actuation of the touch sensor.
Claim Rejections - 35 USC § 102
7. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
8. Claims 1-3, 11 and 18 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Aaron et al. (DE 10217222077 A1), hereinafter Aaron. Regarding claim 1, as best understood, Aaron teaches a band saw 100 (the bas saw is not positively being claimed, in this case, the chain saw is considered to be a saw or machine) comprising: a housing 110; a motor 140 located within the housing; a first handle 112 including a first trigger (160, 124; defined by a released element 124 mechanically and/or electrically coupled to operating element 160) configured to be actuated by a user, wherein a first hand of the user may be detected on the first handle 112 based on actuation or de-actuation of the first trigger (the controller 170 monitors the activation and deactivation of the first trigger 160, 124 and determines presence of the user’s first hand ); a second handle 115, 117 (defined by the axillary handle 115 and its associate hand guard) including a touch sensor (defined as touch element 122 on handle 115, 117, Fig. 4; the touch element 122 may be a touch sensor, see third paragraph of page 10 and last paragraph of page 13 of the attached translation), wherein the touch sensor 122 is configured to detect a second hand of the user on the second handle (115, 117); and a controller 170 connected to the motor 140, the first trigger (124, 160), and the touch sensor 122, the controller configured to: determine that the touch sensor is actuated by the user, determine that the first trigger (124, 160) is actuated by the user after the touch sensor 122 is actuated by the user, and drive, in response to the touch sensor being actuated and in response to the first trigger being actuated after the touch sensor is actuated, the motor (paragraph 7, last paragraph and page 8, first two paragraphs). See Figs. 1-15 in Aaron. It should be noted that Aaron teaches that the controller first determines that the second hand of the user is detected on second handle (115, 117) by the touch sensor 122, then determines that the actuation of the first trigger (124, 160) on the first handle 112 is detected, and then actuates the motor 140.
Regarding claim 3, Aaron teaches everything noted above including that the controller 170 is configured to: determine, while the motor is being driven, that the second handle (115, 117) is released by the user; and stop, in response to the second handle being released, driving the motor. It should be noted that the control circuit 170 monitors the state of the second release element 122 (touch sensor) and the first trigger (124, 160), and in response to release or deactivation of the second release element or touch sensor 122, prevents activation of the drive unit 140, corresponding to the claimed limitation of interrupting operation upon release detection.
Regarding claim 11, Aaron teaches everything noted above including that the touch sensor 122 is an impedance sensor. It should be noted that Aaron teaches that the first and second release elements (124, 122) may be implemented as touch sensors or presence sensors, and that actuation of the first release element 124 energizes or activates the control unit, safety switching arrangement, and drive unit logic. See Figs. 12 and 15. In this case, the touch sensors inherently operate using impedance detection of a user’s hand.
Regarding claim 18, Aaron teaches everything noted in claim 1 and further discloses that presence detection using capacitive sensing of the second handle (115, 117) and first handle 112 (i.e., touch or presence sensors), which inherently operate using impedance detection of a user’s hand, corresponding to the claimed impedance sensor.
Claim Rejections - 35 USC § 103
9. 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.
10. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Aaron in view of Rivers (CN 109643098 b). Regarding claim 4, Aaron teaches everything above including that except that the controller is configured to: prohibit, in response to the second handle being released while the first trigger remains actuated, operation of the motor. Aaron does not explicitly teach that the controller controls, in response to the second handle being released while the first trigger remains actuated, an indicator to provide the indication. Aaron teaches the basic two-hand safety mechanism with first and second release elements (124, 160; 122) and a control circuit 170 for activation of the drive unit 140. Arron, however, does not explicitly teach providing a visual, tactile, or audible indicator based on the state of the release elements. Rivers teaches a hand-held tool safety system with sensors (e.g., touch sensors or capacitance sensors on handles 106; Fig. 13). Rivers further teaches that the safety system includes indicator (e.g., an audible command or sound) to indicate that the user is not holding one of the handles. See one before the last paragraph on page 60 and 61 in attached translation. It would have been obvious to a person of ordinary skill in the art to provide Aaron’s safety system with the indicator, as taught by Rivers, for providing user feedback during improper or unsafe actuation, thereby enhancing user safety and operability.
11. Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Aaron. Regarding claim 5, Aaron teaches everything noted above, but Aaron does not explicitly teach that the controller is configured to: determine that the touch sensor is actuated by the user while the first trigger remains actuated; and continue, in response to determining that the touch sensor is actuated by the user while the first trigger remains actuated, prohibition of operation of the motor. Aaron teaches continuous monitoring of the first and second release elements but does not explicitly teach limiting operation after release within a second predetermined time. However, Examiner takes an Official Notice that the use of a time delay and maintaining a prohibition or hold condition until sensor states are reset is old and well known in the art. Such timing and rest logic are routinely implemented to ensure safe operation of powered tools and to prevent unintended activation.
Regarding claim 6, Aaron teaches everything noted above, but Aaron does not explicitly teach that the controller is configured to: determine that the first trigger is released by the user; and permit, in response to the first trigger being released and the second handle being released, operation of the motor. Although, Aaron teaches sequencing of the first and second release elements, Aaron does not explicitly teach conditional permitting of drive unit activation only after release of both the first trigger and the second handle. However, Examiner takes an Official Notice that implementing a reset condition of a safety system, such that operation is permitted only after all safety inputs are returned to a safe or neutral state, is old and well known in the art. Such reset logic is commonly employed to enhance operator safety and prevent unintended restart of a motor-driven device.
To the degree that it could be argued Aaron does not explicitly teach that the touch sensor is an impedance sensor, the rejection below is applied.
12. Claims 11 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Aaron in view of Ditthard et al. (DE 102018108068 A1), hereinafter Ditthard, or Chan (KR 101408278 B1) or Schaer (EP 1440771 A1). Regarding claim 11 and 18, Aaron teaches everything noted above including that the touch sensor 122 is an impedance sensor. It should be noted that Aaron teaches that the first and second release elements (124, 122) may be implemented as touch sensors or presence sensors, and that actuation of the first release element 124 energizes or activates the control unit, safety switching arrangement, and drive unit logic. See Figs. 12 and 15.
In embodiments where the release elements are implemented as touch or presence sensors for detecting a user’s hand on the handle, such sensors inherently operate based on detection of electrical characteristics of the user, such as impedance or capacitance.
To the extent Aaron does not explicitly disclose that the touch sensor is specifically an impedance or capacitance sensor, Ditthard teaches a power cutting machine including handles having gripping sections (20, 30) provided with touch sensors implemented as impedance or capacitance sensors (see paragraph 6 on page 4 of the attached translation and Fig. 1). Similarly, Chan teaches a power cutting machine 100 including a handle 110 having a gripping section provided with a capacitance sensor 620 functioning as a touch sensor (see the last paragraph on page 3 and the first two paragraphs on page 4 of the attached translation, and Fig. 3). Schaer also teaches a power cutting tool 1 including handles having gripping sections equipped with touch sensors implemented as impedance, capacitance, or resistance sensors (5a, 5b) (see paragraphs 3-4 on page 4 of the attached translation and Figs. 1a-1b). It would have been obvious to a person of ordinary skill in the art to implement Aaron’s touch sensor as an impedance or resistance or capacitance sensor as taught by Ditthard, Chan, or Schaer in order to facilitate reliable detection of a user’s hand on the handle and thereby enhance operational safety.
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to
applicant’s disclosure.
Koschel et al. (EP 20172084 A), Bieck et al. (2015/0034465 A1), and (Plonsky et al. (2015/0352742 A1) teach a power tool including sensor for detecting a hand of a user on a handle.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to GHASSEM ALIE whose telephone number is (571) 272-4501. The examiner can normally be reached on 8:30 am-5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached on (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GHASSEM ALIE/Primary Examiner, Art Unit 3724
February 19, 2026