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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants' submission filed on December 10, 2025 has been entered.
Response to Arguments
Applicants' arguments filed with the RCE have been fully considered but they are not persuasive.
“If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case.” MPEP §2145. The Applicants do not satisfy this burden.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The Applicants address each reference individually but not how they are combined to teach the recited limitations. For example, Toya is addressed in isolation and the Applicants do not address how Meyer is modified, by Toya, to have its inverter connected between the battery and AC output (Meyer has an inverter, but it does not convert battery output power).
Regarding Meyer, there is no recitation of a “single housing” in the claims (Remarks, page 9, line 6). Claim 21 only uses “single” to define the battery pack. Further, the transitional phrase “comprising” in the preamble is open-ended and does not exclude additional components (i.e. two Meyer housings joined together, a plurality of battery packs). MPEP §2111.03(I). Meyer forms one housing when its two housings (2145, 70) are connected together. If a user were to pick up the charger housing (70), the inverter housing (2145) would come with it. This makes the housing “single”. That the joined housings would have a sort of wall between their parts is irrelevant – the electronics of the two housings are connected and interact as if there was no wall. Amending the claim to recite “a single housing” would not overcome the prior art.
The Applicants contend that Meyer does not disclose a “slide-on” battery pack (Remarks, pages 8 and 9). This is rebutted by Meyer’s figures 1-2 and 24-25. These figures clearly show the wings/protrusions on the charger to require a user to slide the battery pack (top-to-bottom as shown in fig. 25). The drawings qualify as prior art, even though the author does not specifically describe its slide-on functionality. MPEP §2125 (I).
The Applicants contend that neither Meyer housing (70 nor 2145) “include an inverter disposed within.” (Remarks, page 9, middle). The Examiner notes that the Applicants repeatedly refer to “power inverter 2140”; effectively admitting that there is an inverter. A key word search for “inverter” in Meyer returns 37 hits and the Applicants are directed to paragraph 62 for an express disclosure of what the inverter is, where it is and what it is converting. The Applicants’ contention that the Meyer “power inverter” 2145 housing does not have an inverter has no merit. Also, the §103 rejection clearly indicated that the Meyer inverter (because Meyer does disclose an inverter) is modified by Toya to convert the battery output into AC. The Applicants do not address or rebut this analysis; thus, it is presumed to be correct.
Regarding Toya, the reference is not required to disclose a slide-on battery pack, as this limitation is taught by Meyer. As in Meyer, the Applicants baselessly contend that Toya does not include an inverter in its case 10 (Remarks, page 10). The Toya inverter is explicitly shown in figure 4 as item 260.
Flipping Meyer or Toya over is not a modification of the reference. The Applicants’ citation to In re Wright further supports this interpretation. The Applicants paraphrasing of Wright says “a mere change in perspective or orientation does not constitute a new teaching” – if it is not a new teaching, then it is part of the original disclosure. Meyer, Toya, and any other reference are enabling for having their housing placed in any orientation without it having to be considered a new teaching that would require addressing the Graham v. John Deere factual inquiries to establish an obviousness rejection that combines multiple references. There is no basis for requiring a right-side-up view to be considered a first reference and an upside-down view to be a second reference (i.e. some sort of distinct embodiment).
Upon a review of the Wright decision, the Examiner cannot locate where the Applicants’ statement is taken from. The case appears to be directed to whether the Examiner (and the Board of Appeals and Director) considered how the inventor’s apparatus was to be used in determining the obviousness of the prior art. The invention at issue involved a carpentry level, and the orientation of where the liquid leveling vial was placed - but there does not appear to be any holding or statement that discusses “perspective” or “orientation”. Regardless, the Applicants’ preferred interpretation of this case supports the Examiner’s position that flipping something over is not a modification or a “new” teaching that would require addressing it as a separate reference.
The existence of casters/wheels is irrelevant. Flipping the Toya device over is not a “reconstruction” or a modification that “teaches away”. There is no “hindsight” reasoning in taking a prior art device (that existed prior to the Applicants’ earliest priority date) and turning it upside down. It is simply a matter of looking at the device from a new perspective/orientation. This could also be achieved by the user standing upside-down (if we don’t have to touch the prior art’s device to achieve the new perspective, then there is no modification by the Applicants’ standards). Taking what is known, flipping it over, and observing the alignment of parts (with its new “bottom” and “top”) is not patentable.
Regarding White, Schneider and Hayakawa, the Applicants do not address or rebut how each reference fits into the combination. The Applicants’ argument amounts to quoting the entirety of claim 21. For Schneider specifically, the art rejection clearly cited to its fins 86 as providing a slide-in functionality (see Final pages 11-12, bridging sentence). The Applicants do not acknowledge this in the reply. For Hayakawa specifically, the Applicants do not address any of the limitations of claim 39. The generally disagreement with the references does not satisfy the Applicants’ burden to overcome the prima case of obviousness that has been presented.
The art rejections are maintained.
The housing, and its alignment and contours with the battery pack, are entirely ornamental. It does not appear that any of the limitations in the “a battery pack interface” paragraph (with the exception of the slide-on interface) affect how the battery pack inverter actually operates. The AC power output, inverter, power switch and slide-on interface are independent of the exterior aesthetics of the housing they are in. They will operate the same regardless of whether or not the housing is easy to hold, has clean lines, or has a recessed front side. These are all obvious physical characteristics of an electronic device (this application is classified as an electrical device – 307/22, H02J7/0042). Physical characteristics are protected by design patents.
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 21-30, 32-38 and 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Meyer (US 2006/0071634) in view of Toya (US 2015/0145476) and White (WO 2008/156602). Alternatively, the claims are obvious over Toya in view of Meyer in further view of White.
With respect to claim 21, Meyer discloses a single battery pack inverter (fig 18-27; par 49, 63-77) comprising:
a housing (30) of the single battery pack inverter;
a battery pack interface (not labeled, shown in figs 19, 21, 25) provided on a bottom side of the housing (obvious that the physical unit can be flipped so that the battery 20 is on the bottom and the housing interface is on the “bottom” of the housing) and configured to removably receive a power tool battery pack (20), wherein a front side of the housing (section containing 2185 and 2180) is recessed from a front side of the battery pack housing (the side facing down in figure 24-25 – it is hidden from view) when the power tool battery pack is received in the battery pack interface (see fig 24), wherein the housing includes a first side (any of the long sides [front-to-back shown in fig 24-25) provided approximately perpendicular to the front side of the battery pack housing (see fig 24-25), and wherein the battery pack housing includes a first side (any of its long sides – facing up/down in figure 24-25) provided approximately perpendicular to the front side of the battery pack housing (obvious because it is rectangular);
wherein the battery pack interface is a slide-on interface (shown in figs 1-2, 24-25) having a sliding axis extending between the front side and the rear side of the housing (see annotated figure below);
an AC power output interface (2170; par 66) provided on the housing to receive one or more peripheral devices;
an inverter circuit (2140; par 63, 65-66) provided in the housing and configured to convert DC power to AC power at the AC power output interface (par 66); and
a power switch (2185; par 69) to selectively enable and disable the AC power output interface.
Meyer discloses the battery, inverter and AC output interface in a housing. When the Meyer housings (70, 2145) are joined, they form one singular housing (even though no such language appears in the claim). The two housings are joined/connected so that movement of any one includes the other. That the housings can be separated is irrelevant to the art rejection and is not prohibited by any claim language.
Meyer also discloses the slide-on interface, as clearly illustrated in figures 1-2 and 24-25. Figure 25 even shows the movement necessary to slide the battery pack onto the housing.
Below is an annotated version of Meyer figure 25. It has been rotated 900 counter-clockwise to approximate the Examiner’s interpretation of the battery pack interface being on the bottom. With the battery on the bottom (which would require another 10 degrees rotation), the inverter housing front side (the face containing 2180 and 2185) is recessed from the front of the battery pack. Figure 24 shows that, when viewed from the side, the battery pack extends more to the left than the housing front side. This mean that, when the device is rotated as shown below, the battery pack would extend more to the right/rear than the front side – thereby making the front side “recessed”. And, with the Meyer housing flipped in the this manner, the slide-in axis is front-to-rear, as claimed.
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Meyer discloses the battery, inverter and AC output, but does not expressly disclose that the three are connected to invert power from the battery. Toya discloses a single battery pack inverter (fig 2-5; par 70-128) comprising:
a housing (100) of the single battery pack inverter;
a battery pack interface (40) provided on a bottom side of the housing (see annotated figure in the Non-Final 5/13/25, page 6) and configured to removably receive a power tool battery pack (200), wherein a front side of the housing is recessed from a front side of the battery pack housing when the power tool battery pack is received in the battery pack interface (see annotated figure mentioned above), wherein the housing includes a first side (any of the sides from front-to-back) provided approximately perpendicular to the front side of the battery pack housing (see fig 2), and wherein the battery pack housing includes a first side (any of the left/side sides) provided approximately perpendicular to the front side of the battery pack housing (see fig 2 – obvious because the battery pack housing is rectangular);
an AC power output interface (fig 2, 4 item 50a) provided on the housing to receive one or more peripheral devices;
an inverter circuit (260) provided in the housing electrically connected between the battery pack interface and the AC power output interface and configured to convert DC power received from the power tool battery pack to AC power at the AC power output interface (par 110-111); and
a power switch (270; par 135 or 110; par 87) to selectively enable and disable the AC power output interface.
Meyer and Toya are analogous to the claimed invention because they are from the same field of endeavor, namely portable battery chargers. At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify Meyer to change the functionality of its inverter or add a new one, in order to give Meyer the ability to discharge the battery through the AC output, as taught by Toya. The motivation for doing so would have been to provide power when the external source is unavailable (a commonly known functionality of uninterruptible power supplies).
Alternatively, it would have been obvious to one skilled in the art to modify the Toya housing to include the dimensions taught by Meyer (Meyer more accurately illustrates the recessed front wall limitation and the slide-on mechanism). The motivation for doing so would have been to select an aesthetic that would be more appealing to a user/consumer. The physical size/shape of the device does not affect its electrical structure or functionality.
Regarding the term “single” battery pack inverter, the claim is not limited to the existence of “only one” interface or any other structural limitations that would limit how many battery packs can be simultaneously received by the inverter. MPEP §2111.02(II). Further, the “comprising” in the preamble is open-ended and indicates that other limitations can be included (i.e. a second battery pack interface, as in Toya). MPEP §2111.03(I). While Toya discloses room for two battery packs, it is entirely possible that only one (i.e. a single) is connected at any time. Furthermore, Meyer already discloses the battery pack inverter is for a single battery pack. Thus, the same limitation is not required to be found in secondary reference.
The combination teaches the electrical features of the housing, but does not expressly disclose the aligned contours of the housing and battery first sides. White discloses a single battery pack unit (figure 5; pages 8-9) comprising: a housing (30) with a front side (facing forward) and a perpendicular first side (right side); and a battery pack interface (shown in fig 4), wherein a contour of the housing first side aligns with a contour of a battery pack housing (28) first side when the power tool battery pack is received in the battery pack interface.
White discloses a housing with an interface to receive a power tool battery pack. The contours of the left/right sides of the housing are aligned with the contours of the left/right sides of the battery pack, as shown in figure 5. The combination (in either order) and White are analogous to the claimed invention because they are from the same field of endeavor, namely housings to accept power tool battery packs . At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify the combination’s housing to have the aligned contours as taught by White. The motivation for doing so would have been to present the customer with a known aesthetic design. What the housing physically looks like does not affect the electrical functionality of the single battery pack inverter. Making the housing slimmer/bigger or aligned/recessed would have been within the level of one of ordinary skill in the art.
With respect to claim 22, Toya discloses:
an external power input interface (70; par 84);
wherein the inverter circuit is configured to convert DC power received from the power tool battery pack to AC power in response to an external power source not being received by the external power input interface and a peripheral device being received by the AC power output interface (par 111).
With respect to claim 23, Toya discloses:
a DC power output interface (50b; par 72, 82); and
an AC-DC power converter (fig 4, item 281-282),
wherein the external power input interface includes an AC power input interface configured to receive an external AC power source (par 84), and
the AC-DC power converter is configured to convert AC power received from the AC power input interface to DC power at one or both of the DC power output interface and the battery pack interface (par 118).
Toya figure 5 (par 118) discloses that incoming AC power is rectified and provided to the DC output (50b).
With respect to claim 24, Toya discloses the AC-DC power converter is configured to output the converted DC power to the DC power output interface in response to a DC-powered peripheral device being received by the DC power output interface (par 118).
The Examiner notes that an AC-DC power converter is “configured” as a rectifier (commonly known to include passive diodes). There is no active control functionality is the known configuration of a rectifier. The claim appears to suggest that there is a sensing and control feature for only enabling the rectifier functionality in certain circumstances. The Examiner notes that this would be the functionality of a controller (see Applicants’ figure 17, item 1042). The Toya rectifier has the same “configuration” (as an AC-DC converter) at all times, including “in response” to the presence of a DC load being inserted in the USB ports (50b).
Should the claim be amended, the Examiner notes that the Toya rectifier would not provide power to the DC output (50b) if there is no device connected – the absence of a device at the port creates an open circuit that prevents the flow of current through the output. Thus, the Toya rectifier can only provide converted DC power when there is a peripheral device that creates a closed circuit.
With respect to claim 25, Toya discloses
wherein the external power input interface includes a DC power input interface (par 84) configured to receive an external DC power source (the PV panel would provide DC power), and
the DC power output interface (50b) is configured to output DC power received from the external DC power source in response to the external power source being received by the external power input interface (the output interface can only provide power if there is incoming power).
As noted above in the art rejection of claim 24, the claim incorrectly gives a passive structural limitation (“interface is configured to”) active control functionality of a controller.
With respect to claim 26, Toya discloses charging circuitry configured to selectively output DC power received from the external DC power source to the battery pack interface (par 106-111).
With respect to claim 27, Toya discloses the inverter circuit (260) is configured to convert DC power received from the external DC power source to AC power at the AC power output interface (50a) in response to a peripheral device being received by the AC power output interface (the inverter is configured to provide AC power to the output 50a at all times).
With respect to claim 28, Toya discloses:
an external power input interface (70; par 84); and
a DC power output interface (50b) configured to output DC power received from the power tool battery pack in response to an external power source not being received by the external power input interface and a DC-powered peripheral device being received by the DC power output interface (par 111).
With respect to claim 29, Toya discloses a second power switch (110) to selectively enable and disable the DC power output interface. For the purpose of the art rejection of claim 29, the first power switch (claim 21) would be limited to switch 270.
With respect to claim 30, Meyer discloses a temperature sensor (par 53-55, 75-77) that senses a temperature of the single battery pack inverter and/or the power tool battery pack.
With respect to claim 32, Meyer, Toya and White combine (in both permutations) to disclose the single battery pack inverter, and the references are analogous, as discussed above in the art rejection of claim 21. Toya further discloses the single battery pack inverter comprises:
an AC power input interface (70; par 84);
a DC power output interface (50b) provided on the housing and configured to receive one or more peripheral devices; and
a power converter (281, 282) configured to convert AC power received from the AC power input interface to DC power at the DC power output interface; and
a power switch (110 and/or 270) to selectively enable and disable the DC power output interface.
With respect to claim 33, Toya discloses wherein the power converter is a first power converter, further comprising:
an AC power output interface (50a); and
a second power converter (260) configured to selectively convert DC power received from the battery pack to AC power at the AC power output interface.
Meyer also discloses these limitations, as discussed above in the art rejection of claim 21.
With respect to claims 33-35, Toya and Meyer combine to disclose the recited limitations, as discussed above in the art rejections of claims 21 and 27. Claims 33 and 34 repeat limitations from claim 21. Claim 38 repeats limitations from claim 25 and 27.
With respect to claim 36, Meyer discloses the battery is an 18v battery (par 50).
With respect to claim 37, Meyer discloses the power tool battery pack interface includes power terminals for transferring power between the power tool battery pack (par 56) and the single battery pack inverter and data terminals for communicating with the power tool battery pack (par 54, 98, 100).
With respect to claim 38, Meyer discloses a latching mechanism (figs 1 and 18-25 show the structure necessary to slide the battery onto the charger – this is to keep it in place [i.e. “latching mechanism”] – see also the “locking mechanism” of par 64). Further, within the combination the first power switch can be interpreted as Toya 110 and the second power switch can be interpreted as Meyer 2185.
With respect to claims 41-42, all three references disclose a rectangular housing and rectangular power tool battery pack housing. Thus, all three references disclose the second and third side, wherein the first/second sides are approximately parallel to each other and the third/front sides are approximately parallel to each other. White further discloses wherein the contours of the second/third sides of the housing are aligned with the contours of the second/third sides of the battery pack housing (see fig 5). White figure 5 shows that all four vertical sides of the housing (i.e. the front, first, second and third sides) are aligned with the four sides of the battery pack housing.
Alternatively, it is unclear if the third sides (away from the viewer in figure 5) are exactly aligned. At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify the shape of at least one of the two housings so that all sides are aligned (not just three). The motivation for doing so would have been to design a more aesthetic battery station. If a user/customer didn’t want a station where the battery overhangs the housing, then the skilled artisan would have understood how to physically adjust the dimensions of the housing to prevent the overhang.
Claims 21-30, 32-38 and 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Meyer (US 2006/0071634) in view of Toya (US 2015/0145476) and Schneider (US 2015/0008879). Alternatively, the claims are obvious over Toya in view of Meyer in further view of Schneider.
Toy and Meyer combine to disclose all of the limitations of the single battery pack inverter, except for the aligned contours, and the references are analogous, as discussed above. Schneider discloses a battery pack unit (figures 1-5; pages 1-3) comprising: a housing (22) with a front side (facing outward from the center of the unit) and a perpendicular first side (any of the two fins 86); and a battery pack interface (90), wherein a contour of the housing first side aligns with a contour of a battery pack housing (14n; see figs 1-2) first side when the power tool battery pack is received in the battery pack interface.
Schneider discloses a housing with an interface to receive a power tool battery pack. The contours of the left/right sides of the housing are aligned with the contours of the left/right sides of the battery pack, as shown in figures 1-2. Namely, the housing includes fins 86 that extend to help guide the battery pack and are aligned with the sides/contours of the battery pack when it is inserted. Schneider also discloses a slide-in battery pack interface (par 27), which are similar to Meyer’s.
The combination (in either order) and Schneider are analogous to the claimed invention because they are from the same field of endeavor, namely housings to accept power tool battery packs . At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify the combination’s housing to have the aligned contours as taught by Schneider. The motivation for doing so would have been to present the customer with a known aesthetic design. What the housing looks like does not affect the electrical functionality of the single battery pack inverter. Making the housing slimmer/bigger would have been within the level of one of ordinary skill in the art.
As discussed above, the use of “single” to define the battery pack housing does not explicit prohibit a reference from disclosing a plurality of interfaces. While Schneider discloses room for six battery packs, it is entirely possible that only one (i.e. a single) is connected at any time. Furthermore, Meyer already discloses the battery pack inverter is for a single battery pack. Thus, the same limitation is not required to be found in secondary reference Schneider.
With respect to claims 41-42, Schneider only discloses three sides are aligned (looking at figures 1-5, the aligned sides are the left, bottom and right). The top sides in Schneider are not aligned (the battery pack extends higher than the nearest part of the inverter housing).
At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify the Schneider inverter housing so that the side facing the battery does not angle away from the battery, but is adjacent to the battery until the top of the battery housing, at which point it angles 900 to create an aligned contour side that recedes to where the housing meets the handle. The motivation for doing so would have been the obviousness of changing the aesthetics of the inverter housing. Making sides aligned does not change the internal electrical operations of the combination’s battery pack inverter.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Meyer in view of Toya (in either order), White and Hayakawa (US 2012/0034832).
Toya and Meyer both discloses an AC power input interface. Neither reference discloses a rotatable plug. Hayakawa discloses an AC power input interface includes an AC plug that, in an operating position, is rotated away from the housing to expose AC power terminals of the AC plug, and, in a stored position, is rotated into the housing to conceal the AC power terminals (fig 1-2; par 39-40).
Toya and/or Meyer and Hayakawa are analogous to the claimed invention because they are from the same field of endeavor, namely AC power inputs for battery chargers. At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify the base reference (Toya and/or Meyer) to include a rotatable plug, as taught by Hayakawa. The motivation for doing so would have been to increase the ease of portability by not having the plugs/blades stick out (Hayakawa par 5, 11).
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Meyer in view of Toya (in either order), Schneider and Hayakawa (US 2012/0034832).
Toya, Meyer and Hayakawa combine to disclose the recited limitations, and the references are analogous, as discussed above in the first rejection of claim 39.
Conclusion
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/ADI AMRANY/Primary Examiner, Art Unit 2836