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 without traverse of Group II (2) in the reply filed on 8/25/2026 is acknowledged.
The cancellation of claims to Group I (claims 1-6) in the reply is also noted.
Information Disclosure Statement
Applicant’s Information Disclosure Statements (IDS) filed on 02/13/2025, 05/23/2025, 11/13/2025, 02/19/2026, and 05/15/2026, listing an overwhelming total of approximately 4,000 references have been placed in the file wrapper and considered to the extent required by 37 CFR 1.97 and 1.98.
Applicant is reminded of requirements under 37 C.F.R. §1.98
“37 C.F.R. 1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under § 1.97 shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3) of this section.
…
(3)
(i) A concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from applicant’s specification or incorporated therein.”
However, given the large volume of unranked and unexplained documentation provided —spanning thousands of individual citations without any accompanying guide, summary, or concise explanation of relevance— most references have been given no more than cursory consideration, such as: making a determination upon view of the title and cover page whether deeper consideration was warranted. Applicant is reminded a requirement for information may also be made by the examiner under 37 C.F.R. §1.105 if Applicant requests any more narrow “consideration” without additionally providing some additional concise explanation of relevance.
Because Applicant has not provided to date any more substantive information, mapping, or relevance statements to narrow down which references, if any, are believed to be genuinely pertinent to the claimed invention, the Applicant is encouraged to file additional information to direct the Examiner’s attention to specific disclosures if they wish to rely upon them during prosecution.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “flange” (claim 11) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
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 18-20 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.
Claim 18, in lines 1-2, recites the limitation “wherein the release button is one of two release buttons”. This limitation is ambiguous. More in detail, “the release button” finds a reference point in parent claim 17, which recites a singular release button; by retroactively defining said singularized element as being part of a pair (“one of two”), it would be unclear to a person of ordinary skill in the art whether all the structural and functional limitations previously ascribed to the single “release button” now duplicate across both buttons; for instance, are both buttons included in the limitation “the retention member retains the release button in the housing”, or is it only strictly required to at least one of them?. Clarification is required. For the purposes of examination, the limitation will be read as: a second release button; wherein the second release button is actuatable to release the battery pack from a power tool, and wherein the retention member retains the second release button in the housing.
Claim 19 recites the limitations “the lip including a ridge protruding into the groove of the housing”, in lines 13-14 and “a flexible button molded onto the housing in the opening”, in line 10. There is insufficient antecedent basis for these limitations in the claim.
Claim 20 is rejected based on its dependency.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 7-8, 10, and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al. (US 20200212505 A1, and Nakano hereinafter) in view of Loebig et al. (US 20230378782 A1, and Loebig hereinafter).
Regarding claim 7, Nakano discloses a battery pack comprising:
a housing (including 101 and 110, fig. 3);
a light pipe (191-194, fig. 4), the light pipe including
a base (bottom portion of 191-194), and
an emission surface opposite the base (top portion of 191-194); and
a light-emitting diode (LED) disposed in the housing (“Four LEDs (not illustrated) are provided near the rear side of the circuit board 150”, [0107]), the LED positioned to emit light into the base of the light pipe, the light exiting the light pipe through the emission surface (fig. 4; “The prisms 191 to 194 are disposed to face lighting surfaces of the LEDs (light emitting diodes, not illustrated) of which bottom surfaces performs upward irradiation”, [0107]).
Nakano does not explicitly disclose the housing defining a passage therein; a light pipe disposed in the passage; a retention member coupled to the housing, the retention member including a protrusion extending over at least a portion of the base to retain the light pipe in the passage.
Loebig discloses a housing (18, fig. 4) defining a passage therein (fig. 4: space between consecutive instances of 70); a light pipe disposed in the passage (198, fig. 16); a retention member coupled to the housing (70, fig. 4), the retention member including a protrusion extending over at least a portion of a base (fig. 16, bottom portion of 198) to retain a light pipe (198, fig. 16) in the passage (fig. 16, “The guide elements 70 along the interior of the third sidewall 42 are protruding ribs, and extend parallel to one another”, [0038])
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Nakano to incorporate the teachings of Loebig so that it further comprises the housing defining a passage therein; a light pipe disposed in the passage; a retention member coupled to the housing, the retention member including a protrusion extending over at least a portion of the base to retain the light pipe in the passage, in order to facilitate guiding and positioning of the light pipes (“guide elements 70 (e.g., protrusions, ribs, rails, slots, or other features) that facilitate guiding and positioning of various other components within the battery pack 10. For example, and as illustrated in FIG. 4 , the housing 18 includes a set of guide elements 70 that are positioned along an interior of the third sidewall 42”, [0038] of Loebig).
Regarding claim 8, Nakano/Loebig discloses the battery pack of claim 7 but does not explicitly disclose the retention member is removably coupled to the housing by a plurality of fasteners.
However, a person having ordinary skill in the art would have recognized that said modification is equivalent to making the retention member separable from the house. It has been ruled that, absent disclosure of functional or structural criticality, making one or more elements separable carry no patentable weight (In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961). See also MPEP § 2144.04, V, C). A person of ordinary skill could be motivated to implement said modification, for instance, to facilitate replacement of broken light pipes in case of accidental damage.
Regarding claim 10, Nakano/Loebig discloses the battery pack of claim 7, wherein the emission surface is angled relative to the base (fig. 4; “The prisms 191 to 194 … are provided such that obliquely-cut upper surfaces”, [0107] of Nakano).
Regarding claim 13, Nakano/Loebig discloses the battery pack of claim 7 but does not explicitly disclose the protrusion includes a hook.
However, person having ordinary skill in the art, would have recognized that said modification is equivalent to a mere change of shape. Absent disclosure of functional or structural criticality, changes of shape have been ruled to carry no patentable weight (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See also MPEP § 2144.04, IV, B). A person of ordinary skill could have been motivated to implement such a modification to further restrict the motion of the light pipes (e.g., if element 70 shown in fig. 4 of Loebig were an L-shaped hook, with a portion parallel to 42, said portion would prevent motion of the light pipes in the direction perpendicular to 42).
Regarding claim 14, Nakano/Loebig discloses the battery pack of claim 7 but does not explicitly disclose the protrusion is L-shaped.
However, person having ordinary skill in the art, would have recognized that said modification is equivalent to a mere change of shape. Absent disclosure of functional or structural criticality, changes of shape have been ruled to carry no patentable weight (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See also MPEP § 2144.04, IV, B). A person of ordinary skill could have been motivated to implement such a modification to further restrict the motion of the light pipes (e.g., if element 70 shown in fig. 4 of Loebig were L-shaped, with a portion parallel to 42, said portion would prevent motion of the light pipes in the direction perpendicular to 42).
Regarding claim 15, Nakano/Loebig discloses the battery pack of claim 7, wherein the passage is one of a plurality of passages defined in the housing (Nakano as modified includes a plurality of passages as shown in fig. 4 of Loebig. See also, rejection of claim 1), and the light pipe is one of a plurality of light pipes (191-194, fig. 4 of Nakano), each light pipe disposed in a respective passage (fig. 4 of Loebig. See also, rejection of claim 1 above).
Regarding claim 16, Nakano/Loebig discloses the battery pack of claim 15, wherein the light pipes extend parallel to each other (fig. 4 of Nakano).
Regarding claim 17, Nakano/Loebig discloses the battery pack of claim 7, further comprising:
a release button (141, fig. 3 of Nakano) actuatable to release the battery pack from a power tool (1, fig. 2; “When the battery pack 100 is detached from the power tool main body 1 or 30, latches 141 on both right and left sides are pushed such that the engagement portions 142a and 142b move inward and the engagement state is canceled”, [0095] of Nakano).
Nakano/Loebig does not explicitly disclose the retention member retains the release button in the housing.
However, Nakano further discloses the retention member retains a release button in the housing (“The guide elements 70 … may be used to install … a button or buttons (e.g., button 142 seen in FIG. 3 )”, [0038]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Nakano and Loebig to incorporate the additional teachings of Nakano so that the retention member retains the release button in the housing, in order to provide support means to install the release button in the housing ([0038] of Loebig).
Regarding claim 18, Nakano/Loebig discloses the battery pack of claim 17, wherein the release button is one of two release buttons (Nakano: fig. 4; “latches 141 on both right and left sides”, [0095]), and the light pipe is disposed between the two release buttons (figs. 3 and 4 of Nakano).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nakano in view of Loebig, further in view of Henry et al. (US 20170261674 A1, and Henry hereinafter).
Regarding claim 9, Nakano/Loebig discloses the battery pack of claim 7 but does not explicitly disclose the emission surface of the light pipe is textured.
Henry discloses an emission surface of a light pipe (314, fig. 4) is textured (“the exposed portions at the light-emitting ends 324 may be processed to diffuse the light for the user to see. For example, the exposed portions may be textured”, [0049]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Nakano and Loebig to incorporate the teachings of Henry so that the emission surface of the light pipe is textured, in order to enhance light diffusion at the light-emitting end of the light pipe (“the exposed portions may be textured by an Electrical Discharge Machining (EDM) or acid etch finish to enhance light diffusion at the light-emitting end 324”, [0049] of Henry).
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano in view of Loebig, further in view of Kalkbrenner et al. (US 20030090909 A1, and Kalkbrenner hereinafter).
Regarding claim 11, Nakano/Loebig discloses the battery pack of claim 7 but does not disclose the base of the light pipe includes a flange.
Kalkbrenner discloses a base of a light pipe (102, fig. 1) includes a flange (104, fig. 1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Nakano and Loebig to incorporate the teachings of Kalkbrenner so that the base of the light pipe includes a flange, in order to facilitate anchoring to housing or other structures (such as printed circuit board) and to provide a spacer between adjacent light pipes (Claim 6 of Kalkbrenner).
Regarding claim 12, Nakano/Loebig discloses the battery pack of claim 11, wherein the protrusion contacts the flange of the base (Nakano, as modified incorporates protrusions 70, shown in fig. 16 of Loebig, by adding a flange (see claim 11 above) to the base of the light guides, said flange would necessarily contact the protrusion).
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et in view of Loebig, further in view of Magno et al (US 20190108952 A1, and Magno hereinafter).
Regarding claim 19, Nakano discloses a battery pack comprising:
a housing (including 101 and 110, fig. 3);
a light pipe (191-194, fig. 4), the light pipe including
a base (bottom portion of 191-194), and
an emission surface opposite the base (top portion of 191-194); and
a light-emitting diode (LED) (“Four LEDs (not illustrated) are provided near the rear side of the circuit board 150”, [0107]) positioned to emit light into the base of the light pipe, the light exiting the light pipe through the emission surface (fig. 4; “The prisms 191 to 194 are disposed to face lighting surfaces of the LEDs (light emitting diodes, not illustrated) of which bottom surfaces performs upward irradiation”, [0107]).
Nakano does not explicitly disclose the housing defining a passage therein; a light pipe disposed in the passage; a retention member coupled to the housing, the retention member including a protrusion extending over at least a portion of the base to retain the light pipe in the passage; a flexible button molded onto the housing in the opening, the flexible button including a user engagement portion, a sidewall extending from the user engagement portion into the housing, a lip extending laterally from the sidewall, the lip including a ridge protruding into the groove of the housing, and a post extending from the user engagement portion; and a switch disposed in the housing, the switch positioned to be engaged by the post.
Loebig discloses a housing (18, fig. 4) defining a passage therein (fig. 4: space between consecutive instances of 70); a light pipe disposed in the passage (198, fig. 16); a retention member coupled to the housing (70, fig. 4), the retention member including a protrusion extending over at least a portion of a base (fig. 16, bottom portion of 198) to retain a light pipe (198, fig. 16) in the passage (fig. 16, “The guide elements 70 along the interior of the third sidewall 42 are protruding ribs, and extend parallel to one another”, [0038])
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Nakano to incorporate the teachings of Loebig so that it further comprises the housing defining a passage therein; a light pipe disposed in the passage; a retention member coupled to the housing, the retention member including a protrusion extending over at least a portion of the base to retain the light pipe in the passage, in order to facilitate guiding and positioning of the light pipes (“guide elements 70 (e.g., protrusions, ribs, rails, slots, or other features) that facilitate guiding and positioning of various other components within the battery pack 10. For example, and as illustrated in FIG. 4 , the housing 18 includes a set of guide elements 70 that are positioned along an interior of the third sidewall 42”, [0038] of Loebig).
Magno discloses a flexible button (including 120 and 126, figs. 6 and 8) molded onto a housing (118, figs. 6-7) in an opening (fig. 7), the flexible button including
a user engagement portion (top curved portion of 120 and 126, fig. 8),
a sidewall extending from the user engagement portion into the housing (vertical portions of 126, fig. 8),
a lip extending laterally from the sidewall (140A-140B, fig. 8), the lip including a ridge (leftmost portion of 140A and rightmost portion of 140B) protruding into a groove of the housing (region between 142A and left surface of 118 and also between 142B and right surface of 118, fig. 8), and
a post extending from the user engagement portion (24, fig. 8); and
a switch disposed in the housing (22, fig. 8), the switch positioned to be engaged by the post (fig. 8).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Nakano to incorporate the teachings of Magno so that it further comprises a flexible button molded onto the housing in the opening, the flexible button including a user engagement portion, a sidewall extending from the user engagement portion into the housing, a lip extending laterally from the sidewall, the lip including a ridge protruding into the groove of the housing, and a post extending from the user engagement portion; and a switch disposed in the housing, the switch positioned to be engaged by the post, in order to allow users to, by means of pushing a button, activate an LED indicator and verify the amount of remaining charge in the battery pack.
Regarding claim 20, Nakano/Loebig/Magno discloses the battery pack of claim 19, wherein the LED and switch are disposed on a circuit board (“electronic elements …. a light emitting diode are mounted in the circuit board 150”, [0101] of Nakano and fig. 8 of Magno).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Martin A Asmat-Uceda whose telephone number is (571)270-7198. The examiner can normally be reached 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allen L Parker can be reached at 303-297-4722. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLEN L PARKER/Supervisory Patent Examiner, Art Unit 2841
/MARTIN ANTONIO ASMAT UCEDA/Examiner, Art Unit 2841
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