DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
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 4, 5, 16 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 pre-AIA the applicant regards as the invention.
With regards to claim 16, the phrase “oil can” is unclear. What structure allows for this structure (630) to be considered a can? While Applicant can be their own lexicographer, the term “can” is known in the art to incorporate a certain structure that does not correspond with 630 in Figure 18 or 710 in Figure 22. Basically, one skilled in the art would not consider 630 a can. It is recommended that the term “can” be replaced with “tank”, “reservoir”, or any other term that better describes 630.
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.
Claims 4, 5, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Pellenc (2017/0072584) in view of Niiyama (2023/0405861).
With regards to claims 16 and 4, Pellenc discloses the invention including a chainsaw (1) having a housing (2, 3, 7) formed with a grip for the user to hold (2), an output assembly coupled to the housing for implementing a cutting operation (5, 6), a chain for implementing the cutting operation (5), a guide plate extending along a front and rear direction and used for guiding the chain (6), a first motor disposed in the housing for driving the chain (8), a liquid pump assembly disposed in the housing (13, 13A) having a liquid pump (13) and a second motor for driving the liquid pump to operate to provide a liquid to lubricate the chain (13A), an oil can disposed in the housing and in fluid communication with the pump assembly (11), the oil can for storing the liquid (11), a total length of the chainsaw measured in the front and rear direction (Fig. 1), the liquid pump assembly is at least partially disposed within the grip (13, 13A, 2, Fig. 2), and the pump and the second motor are arranged substantially in a front and rear direction (Fig. 2).
However, with regards to claims 16 and 18, Pellenc fails to disclose the total length ranges.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the total length any reasonable value including within the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. It would have been an obvious matter of design choice to have made the total length any reasonable value including within the claimed range, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Chainsaws come in all shapes and sizes based on an intended use and it would have been well within one’s technical skill to have chosen any reasonable total length to satisfy the intended use preferred by the user. Therefore, it would have been an obvious matter of design choice to modify the device of Pellenc to obtain the invention as specified in claims 16 and 18. The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense.
However, with regards to claim 16, Pellenc fails to disclose the first motor is disposed behind the oil can in the front and rear direction.
Niiyama teaches it is known in the art of oil can/tanks (66) for chainsaws to be adjacent the guide bar/chain (Fig. 6) and in front of the motor (64, Fig. 6). It would have been well within one’s technical skill to have arranged the can/tank (11) of Pellenc in any reasonable and known position as long as the chainsaw is able to function as intended. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to have provided Pellenc with the oil can position, as taught by Niiyama, because the substitution of one known element for another would have yielded predictable results and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results.
However, with regards to claim 5, Pellenc in view of Niiyama fail to disclose liquid pump is disposed on a front side of the second motor in the front and rear direction.
It would have been well within one’s technical skill to have arranged the pump and the second motor in any reasonable orientation including the pump being in front of the second motor. It would have been just as reasonable to have made the pump and second motor to be in a side-by-side orientation. Therefore, it would have been an obvious matter of design choice to modify the device of Pellenc in view of Niiyama to obtain the invention as specified in claim 5. The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection is not specifically challenged in the argument.
With regards to the arguments for claims 16 and 18 that an articulated reason why was not provided, the rejection did and does provide the articulated reason that Chainsaws come in all shapes and sizes based on an intended use and it would have been well within one’s technical skill to have chosen any reasonable total length to satisfy the intended use preferred by the user. It would have been well within one’s technical skill to reduce the length of 3 or remove it all together to perform a preferred intended use.
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 JASON DANIEL PRONE whose telephone number is (571)272-4513. The examiner can normally be reached on Monday-Friday: 7:00 am-3:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer D 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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29 July 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724
Prosecution Insights