DETAILED ACTION
This Action is in response to Applicant’s Request for Continued Examination (RCE) filed on May 28, 2026. Claims 1, 5-8, 12-15, 19, and 20 are still pending in the present application.
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 allowance or after an Office Action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on May 28, 2026 has been entered.
Priority
Applicant’s claim for domestic priority under 35 U.S.C. 119(e) and 120 is acknowledged.
Information Disclosure Statement
The information disclosure statements submitted on May 28, 2026 and July 13, 2026 have been considered by the Examiner and made of record in the application file.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: POWER TOOL COMMUNICATION SYSTEM AND SPRING-RETAINED INSERTABLE WIRELESS COMMUNICATION DEVICE FOR A POWER TOOL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7, 14, and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 7, 14, and 20 each recite that the resilient member is configured to irreversibly lock the insertable device housing into the power tool housing to prevent removal of the insertable wireless communication device by a user. However, the specification does not appear to provide adequate written description support for the claimed resilient member, which is identified in the independent claims as a spring secured to a side wall of the insertable device housing, being configured to irreversibly lock the insertable device housing into the power tool housing.
In particular, the spring-based embodiment disclosed with respect to FIGs. 19A–19E and paragraphs 0094 and 0095 describes springs 1910 secured to side walls of the insertable wireless communication device 1905 that flex inward during insertion and relax into detents 1925 in walls 1920 of the insertable device compartment 525. Paragraph 0094 further states that, because the spring 1910 includes smooth, rounded edges rather than sharp edges, the insertable wireless communication device 1905 may be removed from the insertable device compartment 525 in a similar manner as insertion by pulling the device with enough force such that the springs 1910 flex inward and allow removal. Thus, the disclosure of the spring 1910 appears to describe a removable retention arrangement, not an irreversible locking arrangement.
Although the specification describes other retention structures, such as snap members 1210 engaging grooves 1310 in paragraph 0065 and arms 1815/fasteners 1825 in paragraphs 0090 and 0091, those structures are not clearly described as the claimed resilient member including a spring secured to a side wall of the insertable device housing. Accordingly, the specification does not reasonably convey possession of a side-wall spring resilient member that irreversibly locks the insertable wireless communication device in the power tool housing as claimed.
Claim 7 depends from claim 1, which requires the resilient member to include a spring secured to a side wall of the insertable device housing. The specification does not appear to describe the spring 1910 as irreversibly locking the insertable device housing into the power tool
housing.
Claim 14 depends from claim 8, which similarly requires that the resilient member includes a spring secured to a side wall of the insertable device housing. The specification does not appear to provide written description support for that spring irreversibly locking the insertable device housing into the power tool housing.
Claim 20 depends from claim 15, which recites that the resilient member includes a spring secured to a side wall and includes an outwardly protruding portion in the undeformed position. The specification does not appear to describe such a spring as irreversibly locking the insertable device housing into the power tool housing.
Accordingly, claims 7, 14, and 20 are rejected under 35 U.S.C. § 112(a) for lack of written description support.
Applicant may overcome this rejection by amending the claims to correspond to the disclosed removable spring-detent retention arrangement, or by amending the claims to recite a disclosed non-user-removable retention structure such as the snap members/grooves or fastener-based arrangement, if supported. Alternatively, Applicant may identify specific support in the originally filed specification that describes the claimed spring/resilient member as irreversibly locking the insertable device housing into the power tool housing.
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 7, 13-15, 19, and 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.
Claims 7, 14, and 20 each recite that the resilient member is configured to:
“irreversibly lock the insertable device housing into the power tool housing to prevent removal of the insertable wireless communication device by a user.”
The term “irreversibly lock” is unclear in scope. It is not clear whether “irreversibly lock” means that the insertable wireless communication device cannot be removed under any circumstances, can be removed only destructively, can be removed only by authorized service personnel, can be removed only with a special tool, or merely cannot be removed by an ordinary user.
The ambiguity is heightened by the specification, which describes certain embodiments as not intended to be removed by a user but removable by authorized service personnel, while paragraph 0094 describes the spring 1910 as having smooth, rounded edges that allow the insertable wireless communication device 1905 to be removed by pulling with enough force. Thus, the claim language does not clearly define the degree or type of locking required.
Because the meaning and scope of “irreversibly lock” cannot be determined with reasonable certainty, claims 7, 14, and 20 are indefinite. See MPEP § 2173.05(b) and MPEP § 2173.02.
Applicant may clarify the intended meaning of the locking limitation, for example:
“configured to secure the insertable device housing such that removal requires an
authorized service tool”;
“configured to prevent removal by a user without damaging the resilient member or the insertable device housing”;
“configured to non-user-removably retain the insertable device housing”; or
“configured to permanently lock the insertable device housing such that removal requires destruction of at least one of the resilient member, the insertable device housing, or the power tool housing.”
Applicant should ensure that any amended language is supported by the originally filed disclosure.
Claim 13 recites:
“The method of claim 8, wherein the resilient member includes a first resilient member and a second resilient member, the method further comprising: deforming from the undeformed position to the temporary position in response to the insertable device housing being inserted into the power tool housing; and undeforming, at least partially, toward the undeformed position in response to the insertable device housing being inserted a predetermined amount into the power tool housing;wherein the first resilient member and the second resilient member are located on opposite sides of the insertable device housing.”
The steps “deforming” and “undeforming” lack an express grammatical subject. It is unclear whether the claimed deforming and undeforming are performed by the first resilient member, the second resilient member, both resilient members, the insertable device housing, or some other structure.
Because the claim does not clearly identify which structure performs the recited deformation and undeformation, the metes and bounds of the claim are unclear. See MPEP § 2173.05(e).
Accordingly, claim 13 is rejected under 35 U.S.C. § 112(b).
Applicant may amend claim 13 to specify the subject of the steps, for example:
“… the method further comprising: deforming the first resilient member and the second resilient member from the undeformed position to the temporary position in response to the insertable device housing being inserted into the power tool housing; and undeforming, at least partially, the first resilient member and the second resilient member toward the undeformed position in response to the insertable device housing being inserted a predetermined amount into the power tool housing …”
Claim 15 recites, in part:
“wherein the resilient member includes a spring secured to a side wall; and wherein the spring includes an outwardly protruding portion in the undeformed position.”
The phrase “a side wall” lacks clear antecedent basis or ownership context. Claim 15 previously recites a power tool housing, an insertable device housing, and the claimed resilient member configured to secure the insertable device housing in the power tool housing. It is therefore unclear whether the recited “side wall” is a side wall of the insertable device housing, a side wall of the power tool housing, a side wall of the insertable device compartment, or another side wall.
Because the side wall to which the spring is secured is unclear, the scope of claim 15 is
indefinite. See MPEP § 2173.05(e).
Accordingly, claim 15 is rejected under 35 U.S.C. § 112(b).
Applicant may amend claim 15 to specify the structure that includes the side wall, for example:
“wherein the resilient member includes a spring secured to a side wall of the insertable device housing …”
This amendment would be consistent with the language of independent claims 1 and 8 and with the disclosure of springs 1910 secured to side walls of the insertable wireless communication device 1905 in paragraph 0094.
Dependent claim 19 is also rejected by virtue of its dependency on claim 15.
Allowable Subject Matter
Claims 1, 5, 6, 8, and 12 are allowed.
Claims 13, 15, and 19 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office Action.
The following is an Examiner’s statement of reasons for allowance:
Claims 1 and 8 are allowed for the reasons set forth on page 2 of the Office Action mailed on April 7, 2026.
Dependent claims 5, 6, and 12 are also allowed by virtue of their dependency on claims 1 and 8.
Any comments considered necessary by Applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the Supervisory Patent Examiner (SPE) should be directed to Rafael Pérez-Gutiérrez whose telephone number is (571)272-7915. The examiner can normally be reached Monday-Thursday from 6:15 am to 4:15 pm EST.
SPE interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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Rafael Pérez-Gutiérrez
R.P.G./rpg
/Rafael Pérez-Gutiérrez/Supervisory Patent Examiner, Art Unit 2642
October 1, 2026
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