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 .
Election/Restrictions
Claims 2, 3, 7-15, 17, 19, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species and group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12-17-25.
Applicant's election with traverse is not found persuasive because:
M.P.E.P. 806.04(f) Restriction Between Mutually Exclusive Species discloses: Where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive. Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. This may also be expressed by saying that to require restriction between claims limited to species, the claims must not overlap in scope.
The two-way distinctness defined by the structures listed in the restriction requirement creates the search burden as each group requires its own search in any type of tool (claim 1 does not claim a cutting tool and, therefore, could be any tool with power) that can incorporate such a structure along with the chainsaw search.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
Reference character “200” has been used to designate both a housing in Figure 1 and an output assembly in Figure 16. Also, Reference character “100” has been used to designate both a chain in Figure 1 and a housing in Figure 16 and Figure 21. Also, Reference character “720” has been used to designate both a circuit board in Figure 21 and an oil pump in Figure 16 and Figure 22. Figures 1-15, 16-19, 20-21, 22-26, 27, and 28 represent different tools; however, some of these Figures are replete with re-using reference numbers that have already been utilized in earlier Figures but in different ways. The Examiner has only listed 3 examples above as there are many more occurrences. Each number in each group of the Figures needs to be different from any of the numbers used in previous Figures.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
In this case, the abstract is written in the form of a claim and is one run-on sentence.
Claim Objections
Claim 1 is objected to because of the following informalities:
On line 8, the phrase “total length M” incorporates the associated reference label. However, none of the other limitations incorporates their reference label. Either all limitations have their reference labels or none of the limitations have their reference labels. The “M” should be deleted.
Appropriate correction is required.
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 1, 4-6, 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 1, the “output assembly” and “first motor” are unclear. As written, the assembly and first motor are part of the tool in a way that does not involve a relationship with the housing which is not supported. The output assembly is partially in the housing and extends from the housing and the first motor is completely within the housing. The claim needs to at least broadly disclose these relationships because this is the only way there is support. Claim 16 has the same issue with the “chain”, “guide plate”, “first motor”, and “oil can”.
With regards to claim 1, the phrase “total length” is indefinite. It is unclear what structures define the length. The tool is 3-dimensional and extends in all directions defining an infinite number of lengths all of which can be a total length. Claim 18 has the same issue.
With regards to claim 1, the range disclosed allows for a value that is “equal to 20cm and equal to 150cm”. How can the length be 20 cm and 150 cm at the same time?
With regards to claim 4, “an operation direction of the power tool” is indefinite. The tool is handheld and can be utilized to perform an infinite number of tasks in an infinite number of directions. Further definition is needed to define this direction.
With regards to claim 4, what structures define the front to rear direction. Is it the tool that defines the front and rear direction or is it a sub-structure that defines the direction? Also, if the front and rear direction is along the operational direction, wouldn’t these be the same direction? If so, there does not need to be two different names for the same direction. Further definition is needed.
With regards to claim 5, it is unclear what structure defines a front side of the motor. The front side of the motor may not be the front side of the tool as a whole.
With regards to claim 6, the phrase “the pump and the second motor both extend along a preset direction at a preset angle relative to a horizontal direction” is indefinite. It is unclear what structure defines the preset direction and preset angle as the pump and motor are 3-dimensional and extend in all directions and define an infinite number of angles. Also, without a disclosed orientation, the relationship of the tool in relation to a horizontal axis is indefinite since the tool can be utilized in an infinite number of orientations in relation to the horizontal. For example, in Figure 27, the tool will have one set of angles in the shown orientation but a different set of angles if the tool is rotated 90 degrees. Further definition is needed.
With regards to claim 16, the phrase “a guide plate extending along a front and rear direction” is indefinite. The guide plate is 3-diemsnional and extends in all directions all of which can be considered a front to rear direction. Further definition is needed.
With regards to claim 16, the phrase “an oil can for lubricating the chain” is unclear. As written, the oil can is in addition to the liquid pump assembly which does not appear to be supported. It is not clear why the pump assembly does not comprise the can when it comprises the pump? Also, the claim previously discloses the pump lubricates the chain. As written, the pump lubricates the chain and the oil can performs a different lubricating of the chain function which does not appear to be supported. It is unclear how the oil can is not considered part of the pump assembly as the can is connected to the pump and the pump lubricates the chain via the can.
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 associated with a certain known structure that does not correspond with 630 in Figure 18 or 710 in Figure 22.
With regards to claim 16, the phrase “between the oil can and the liquid pump assembly” is unclear. As disclosed above, it is unclear how the oil can is not considered part of the pump assembly as the can is connected to the pump and the pump lubricates the chain via the can. If the can is a part of the assembly, how can the motor be between the can and itself? The first motor can be between the can and the pump. Further definition is needed.
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 1, 4-6, 16, and 18 are rejected, as best understood, under 35 U.S.C. 103 as being unpatentable over Pellenc (2017/0072584).
With regards to claim 1, Pellenc discloses the invention including a power tool (1) having an output assembly for implementing an operation (5, 6), a first motor for driving the output assembly to operate (8), a housing (2, 3, 7) formed with a grip for a user to hold (2), a liquid pump assembly (13, 13A, 11, 12, 12a, 12b) having a liquid pump (13) and a second motor for driving the liquid pump to operate (13A), the liquid pump assembly is at least partially disposed within the grip (13, 13A, 2, Fig. 2), and a total length of the tool (Fig. 1).
With regards to claims 4-6, along an operation direction of the power tool, the pump and the second motor are arranged substantially in a front and rear direction (Fig. 2), along the operation direction of the tool, the liquid pump is disposed on a side of the second motor that is capable of being the front side of the motor (Fig. 2), and the pump and the second motor both extend along a preset direction at a preset angle relative to a horizontal direction (Fig. 2).
With regards to claim 16, Pellenc discloses the invention including a chainsaw (1) having a chain for implementing a cutting operation (5), a guide plate extending along a front and rear direction and used for guiding the chain (6), a first motor for driving the chain (8), a housing (2, 3, 7) formed with a grip for a user to hold (2), a liquid pump assembly (13, 13A, 11, 12, 12a, 12b) having a liquid pump (13) and a second motor for driving the liquid pump to operate to lubricate the chain (13A), an oil can for lubricating the chain (12b), the liquid pump assembly is at least partially disposed within the grip (13, 13A, 2, Fig. 2), and the first motor is disposed between the oil can the and pump assembly (Fig. 2)..
With regards to claims 1 and 18, Pellenc fails to disclose the 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 1 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.
Conclusion
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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04 February 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724