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.
Claim 5 is 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 5, the phrase “control unit is provided at a specific position within the housing that satisfies a condition below:” is unclear. The phrase should be replaced with “control unit is provided at a specific position within the housing so that the second angle is 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 further in view of Masek (1,832,993).
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 (13, Fig. 2), and a second direction perpendicular to the first direction (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 to define a boundary between the control unit and the heat sink, the control unit is positioned within the outer periphery of the housing in the plan view, the control unit is an elongated structure elongated along a third direction in the plan view, the control unit is provided such that a second angle, and the second angle is formed by the centerline and a line parallel to the third 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 to define a boundary between the control unit and the heat sink (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 is an elongated structure elongated along a third 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 orientation within the housing of You et al. so that the control unit defines the third direction, the boundary between the control unit and heat sink define the second angle, and their functions with regards to the motor maintained. 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 machine 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 claim 1, You et al. in view of WO 2019/047586 fail to disclose the output axis of the motor is displaced in the second direction from the centerline of the housing in the plan view and the boundary between the control unit and the heat sink is positioned at an opposite side of the centerline in relation to the output axis of the motor in the plan view.
Masek teaches it is known in the art of hedge trimmers to incorporate a motor (21) with an output axis (22) displaced in the second direction from the centerline of the housing in the plan view (page 2 lines 18-21, Fig. 1). Masek also teaches use of a balancing structure (31, Fig. 1) arranged on the other side of the center to provide a well balanced hedge cutter (page 2 lines 22-25). Therefore, it would have been well within one’s technical skill to have offset the output axis of the motor in You et al. and then utilize the control unit and the heat sink as the balancing structure so that the boundary between the control unit and the heat sink is positioned at an opposite side of the centerline in relation to the output axis of the motor in the plan view to provide a balanced hedge cutter. Such a modification still allows for output axis 13 to engage and rotate gear 21 in You et al. as required. 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. in view of WO 2019/047586 with the offset output axis of the motor and corresponding balancing structure on an opposite side of the centerline, as taught by Masek, 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 3-5, You et al. in view of WO 2019/047586 further in view of Masek 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. in view of WO 2019/047586 further in view of Masek to obtain the invention as specified in claims 3-5. 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 is not specifically challenged in the argument.
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.
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28 April 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724
Prosecution Insights