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 disclosure is objected to because of the following informalities:
The claim now utilizes the phrase “plan view” but the specification does not appear to disclose the term. In at least paragraph [0008], the brief description of claim 5 needs to incorporate the phrase “plan view” so it is clear. Applicant may add the phrase “plan view” in any location; it just needs to reference Figure 5.
The claim now utilizes the “boundary between the control unit and the heat sink”. Figure 5 shows a dashed line defining the second angle but this dashed line does not extend through the boundary. Disclosure needs to be added to the Detailed Description explaining the boundary is parallel to the dashed line and would define the same angle as the dashed line.
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 1-6 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.
With regards to claim 1, the phrase “is positioned at an opposite side of the centerline of the housing in relation to the electric-powered motor” is unclear. Using Figure 5, the centerline AX1 travels through the motor 23 so the motor is on both sides of the centerline. It is unclear how the boundary is considered on an opposite side when it is on the same side as the motor.
With regards to claims 3, 4, and 5, use of the term “acute angle” is unclear. An acute angle is greater than 0° and less than 90°. The claims already define the angles as being from 15° to 45°. While this range only defines acute angles, not all acute angles are in the range. The phrase “acute angle” should be deleted from both claims since the range is already disclosed.
With regards to claim 4, the phrase “the control unit has an elongated structure elongated along a longitudinal direction in the plan view” is unclear. It is unclear if the control unit has an elongated structure versus just being elongated? Figure 5 appears to show item 27 as an elongated structure and not having an elongated structure.
With regards to claim 4, the phrase “the control unit has an elongated structure elongated along a longitudinal direction in the plan view” is unclear. What structure defines the longitudinal direction? The longitudinal direction of the machine would be different than that of the control unit.
With regards to claim 5, it is unclear how the second angle could ever be 45° and smaller than the first angle at the same time. The first angle’s upper limit is 45° which means if both angles are 45°, the second angle could not be smaller than the first angle.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over You et al. (2023/0049058) in view of WO 2019/047586.
With regards to claim 1, You et al. disclose the invention including a handheld electric working machine for cutting an object (title, Fig. 1), the machine being elongated along a first direction in a plan view after the machine is placed on a plane (Fig. 1), the machine having a working portion configured to cut the object (14), a housing (11) elongated along the first direction in the plan view on the plane (Fig. 1), the housing having first and second ends opposite to each other along the first direction (Figs. 1 and 2), the first end being positioned directly adjacent to the working portion (Figs. 1 and 2), the housing having a centerline extending along the first direction in the plan view (Fig. 1), an electric powered motor (12) housed in the housing (Fig. 2), the motor being configured to generate rotary power to drive the working portion (12, 13) provided adjacent to the second end of the housing (Fig. 2), an output axis of the motor is displaced in a second direction with respect to the centerline of the housing in the plan view (13, Fig. 2), the second direction is perpendicular to the first direction (Fig. 2), and the motor is posited on one side of the centerline (Fig. 2).
With regards to claims 2, 3, 5, and 6, You et al. disclose the motor is positioned within an outer periphery of the housing (Figs. 1 and 2), a drive gear rotating around a support axis (21), the drive gear being configured to transfer the power of the motor to the working portion (Fig. 2), the motor is provided such that a first angle (Fig. 2), the first angle is formed by the centerline and a line connecting between the output axis of the motor and the support axis in the plan view (Fig. 2), and the machine is an outdoor electric power cutting tool (title, Fig. 1).
However, with regards to claims 1, 2, 4, and 5, You et al. fail to disclose a control unit housed in the housing, the control unit being configured to control rotation of the motor, a heat sink provided in contact with the control unit, a boundary between the control unit and the heat sink is positioned at an opposite side of the centerline in relation to the motor in the plan view, the control unit is positioned within the outer periphery of the housing in the plan view, the control unit has an elongated structure elongated along a longitudinal direction in the plan view, and the control unit is provided that a second angle, and the second angle is formed by the centerline and a line along the longitudinal direction of the control unit in the plan view.
WO 2019/047586 teaches it is known in the art of the hedge trimmers to incorporate a control unit (57) housed in the housing (Fig. 10), the control unit being configured to control rotation of the motor (57), a heat sink provided in contact with the control unit (58, Fig. 10), the control unit is positioned within the outer periphery of the housing in the plan view (Fig. 10), and the control unit has an elongated structure elongated along a longitudinal direction in the plan view (57, Fig. 10). It would have been well within one’s technical skill to have provided the control unit and heat sink in any reasonable position and orientation within the housing of You et al. including in the open space adjacent motor 12 and gear 21 in Figure 2 of You et al. so that a boundary between the control unit and heat sink are on an opposite side of the centerline in relation to the motor and the control unit is oriented so that the second angle is defined and smaller than the first angle. This positioning is reasonable because 57 and 58 would be positioned in a way that allows for connection to the motor. It is noted that included with WO 2019/047586 is a translation that discloses “circuit board 57 and heat sink 58 connected to the motor 51”. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to have provided You et al. with the control unit and heat sink, as taught by WO 2019/047586, because 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.
With regards to claims 3, 4, and 5, You et al. fail to disclose the first angle is 15° to 45°, the second angle is 15° to 45°, and the second angle is smaller than the first angle.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have utilized any reasonable value for the first angle including one in the claimed range and any reasonable value for the second angle including within the claimed range and being smaller than the first angle, 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. Therefore, it would have been an obvious matter of design choice to modify the device of You et al. to obtain the invention as specified in claims 3 and 5. The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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06 February 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724