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.
Claims 1-4, 6-13 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.
The preamble of Claim 1 recites “a power tool”, however the claim bodies of claims 1-13 mainly claim “a scrench” which is a tool accessory, a combination of a wrench and a screwdriver used for maintenance (see Applicant’s specification). It is unclear how the tool accessory used for maintenance is part of the power tool. Is Applicant trying to claim “a power tool with a wrench”, right?
For examination purposes, as best understood, Examiner is interpreting the “issues above” as below and all claims dependent from claim 1 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from the rejected parent claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-4, 6-13 of this pending application are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims of Copending application No. 18645444, hereinafter the Copending application.
Although the claims language at issue are not identical, they are not patentably distinct from each other because it is clear that all structures of Claims of this pending application are found in Claims of the Copending application in view of Wood (US 11897114).
For an example, see Claim 1, claims 1, 7, 17 of the Copending application teaches a power tool (see claims 1 and 5-7 of the Copending application)comprising:
an electric motor operably coupled to a work element (see claims 1 and 5 of the Copending application);
a terminal configured to interface with a battery to provide power from the battery to the electric motor to drive the work element (this is inherent limitation because claim 6 of the Copending application “the power source is removably coupled to a receiving area of the housing” that means there is a terminal for connecting the power source or a battery pack);
a scrench holder (this is an inherent limitation because claim 7 of the Copending application recites “a scrench disposed in the receiving area” that means there is a holder for it. If there is any doubt about, see the art rejection by the art below); and
a scrench (claim 7 of the Copending application), wherein the scrench is detachable from the scrench holder when the battery is detached from the terminal (see the discussion above), and wherein the scrench is inaccessible when the battery is coupled to the terminal (see claim 7 of the Copending application).
Regarding Claims 2-4, the structured claims are well-known in the art, see the rejections below.
Regarding Claim 8, see claim 1 of the Copending application.
Regarding Claim 9, see the discussion in claim 1 above.
Regarding Claims 10-13, see the discussion in claims above.
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.
Claims 1-4, 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wood (US 11897114) in view of Josef (WO8401318 A1 and Translation).
Regarding claim 1, Wood shows a power tool (10, Figure 5) comprising:
a body (14, Figure 1);
an electric motor (26, Figure 1) disposed in the body and operably coupled to a work element (18, Figure 2);
a terminal (126, Figure 4) at least partially defined by the body and configured to interface with a battery (94, Figure 5) to provide power from the battery to the electric motor to drive the work element;
a guard (a peripheral protrusion edge as seen Figures 4, 8 below and first and second surfaces 110, 114 cover and guard the battery as seen in Figure 4) extending from the body, wherein the guard and the body at least partially define a battery receiving area (86) for receiving the battery;
a wrench holder coupled to the guard (a storage opening 106, 142, 150, Figure 4); and
a wrench (102, Figure 9), wherein the wrench is detachable from the wrench holder when the battery is detached from the terminal, and wherein the wrench is inaccessible when the battery is coupled to the terminal (see Figure 1, white the battery is removed from the tool, the wrench or tool accessory 102 can be stored into the storage opening 106 and see Figure 5; when the battery 94 is on the tool, it covers the storage opening for preventing access to the tool accessory 102).
Wood discusses that the tool accessory 102 is a wrench or other tool as stated in Col 3, line 17 and Col.1 lines 13-18 also states that “… accessory tools such as wrenches, screwdrivers, and the like may be utilized to perform maintenance on power tools” (emphasis added). However, Wood fails to discuss the wrench including a screwdriver feature (a scrench).
A combination tool (a wrench and a screwdriver) or a scrench is well known in the art, for an example,
Josef shows a power tool (Figure 1) having a tool accessory (4), wherein the tool accessory is a scrench (Figures 9-11 shows a combination of a wrench 27 and screwdriver (20, 21).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the wrench storage of Wood to have a scrench (a combination of a wrench and a screwdriver), as taught by Josef, in order to allow carry one tool accessory for multiple tools for different purposes.
Regarding claim 2, the modified power tool of Wood shows that the guard (the peripheral edge and surfaces 110, 114, Wood’s Figure 4) is disposed around the receiving area to protect the battery from impact (it can be protected the battery terminal).
Regarding claim 3, the modified power tool of Wood shows that at least a portion of the scrench is disposed between the guard and the battery when the battery is coupled to the terminal (since the tool accessory is within the battery receptable 86, the tool accessory is between the guard and the battery (see Figures 2 and 5).
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Regarding claim 4, the modified power tool of Wood shows that the battery receiving area (86, 126) has a shape configured to accommodate a shape of the battery (Figure 5 of Wood), wherein the guard defines a secondary receiving area (114, Figure 4 of Wood) accommodating the scrench holder (106, Figure 4 of Wood and see the modification above), and wherein the second receiving area is disposed immediately adjacent to the receiving area (see the second surface 114 is within the battery receptacle 86, Figure 4 of Wood).
Regarding claim 6, the modified power tool of Wood shows that the scrench holder comprise a guide (134a-c and 130a-c, Wood’s Figure 6) for extending from the guard, wherein the guide is configured to receive a portion of scrench (see the discussions of edges 130 and edges 134 for forming the storage opening 106), and the scrench is rotatable about the guide (please note that this is a portable tool accessory which is rotated during inserting into the storage as a user’s choice.).
Regarding claim 7, the modified power tool of Wood shows that the scrench holder comprises a flange (see the flange formed regions 146, 150, Figure 7 of Wood) to retain the scrench in the scrench holder, and wherein the flange is configured to deflect when the scrench is introduced to the scrench holder and removed from the scrench holder (Col. 4, lines 57-67 “the handle end 158 of the tool accessory 102 may engage the second region 150 of the storage space 98 to frictionally inhibit the tool accessory 102 from falling out of the storage space 98” that means a portion of parts is deflected for friction).
Regarding claim 8, the modified power tool of Wood shows that the power tool comprises: a pole (70, Figure 2) extending between the body and the work element (18, Figure 2), wherein the scrench holder is disposed on a rear side of the body (an end side of the battery receptable).
Regarding claim 9, the modified power tool of Wood shows a power tool (see claims 1-4, 6-8 above) comprising:
“a body
a battery;
a guard extending from the body, wherein the guard and the body at least partially define a battery receiving area for receiving the battery
a scrench; and
a scrench holder coupled to the guard,
wherein the scrench is removable from the scrench holder when the battery is detached from the power tool, and wherein the scrench is inaccessible when the battery is coupled to the power tool” (see the discussion in claim 1 above).
Regarding claim 10, the modified power tool of Wood shows all of limitations as stated in claims 1-4, 6-8 above.
Regarding claim 11, the modified power tool of Wood shows that the scrench holder (106, 142, 150, Figure 4 of wood) and at least part of the guard (at least part of the surface 114) are formed from a single piece (Figure 4).
Regarding claim 12, the modified power tool of Wood shows all of the limitations as stated in claim 8 above.
Regarding claim 13, the modified power tool of Wood shows that the battery is removable from the power tool through translation in a first direction, wherein the scrench is removable from the scrench holder through translation in a second direction, and wherein the first and second directions are different from one another (the tool accessory and the battery are portable devices; they can be inserted into the storage or the battery receptacle or removed from the storage or the battery receptacle, respectively by manually. Since they are manual performances, the directions of removing the battery and the tool accessory are not the same).
Regarding claim 14, the modified power tool of Wood teaches a method of removably storing a scrench on a power tool (see the discussions of claims 1-13 above), the method comprising:
removing a battery from a terminal of the power tool (Figure 4 of Wood), wherein the terminal is at least partially defined by a body of the power tool (see the discussion in claim 1 above); and
removing the scrench from a scrench holder while the battery is removed from the power tool (see the discussion above for removing the tool accessory 102 of Wood and see the modification of claim 1 for a scrench), wherein the scrench holder is coupled to a guard extending from the body of the power tool, and wherein the guard and the body at least partially define a battery receiving area for receiving the battery(see the discussion in claim 1 above),
wherein access to the scrench is prevented prior to removing the battery from the terminal (see the discussion in claim 1 above and Figure 5 shows a battery 94 covers the storage 98).
Regarding claim 15, the modified power tool of Wood teaches all of the limitations as stated above except that removing the scrench from the scrench holder is performed by rotating the scrench about an axis and then translating the scrench along the axis.
Examiner notes that the tool accessory (scrench) is a portable tool accessory capable of removing the tool accessory from the tool holder by manually. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have removed the removing the scrench from the scrench holder is performed by rotating the scrench about an axis and then translating the scrench along the axis, in order to allow the tool accessory to be easily removed (see claim 7 above for “frictionally” in the storage).
Regarding claims 16 and 17, the modified power tool of Wood teaches that rotation of the scrench about the axis is prevented prior to removing the battery from the power tool (see the discussion in claim 1 above and Figure 5 of Wood, the battery covers the storage) or wherein translating the scrench along the axis is prevented prior to removing the battery from the power tool (see the discussion in claim 1 above and Figure 5 of Wood, the battery covers the storage).
Regarding claim 18, the modified power tool of Wood teaches after using the scrench, the method further comprises: recoupling the scrench to the scrench holder; and recoupling the battery to the terminal after the scrench is recoupled to the scrench holder, wherein access to the scrench is prevented after recoupling the battery to the terminal (this is an inherently step because the scrench is not one time use, it is used and it is installed back when it is done. See Wood’s reference for details of the tool accessory).
Regarding claim 19, the modified power tool of Wood teaches that the scrench holder comprises a first scrench interfacing area including a flange to retain the scrench at the first scrench interfacing area, and wherein removing the scrench from the first scrench interfacing area causes the flange to deflect to permit passage of the scrench from the first scrench interfacing area (see the discussion in claim 7 above).
Regarding claim 20, the modified power tool of Wood teaches that the scrench is visible prior to removing the battery from the terminal (as this is written, it is unclear where the scrench is, prior to removing the battery from the terminal. Therefore, see figure 9 of Wood, the tool accessory “outside the power tool” is visible or seen before removing the battery from the terminal to store the tool accessory into the power tool).
Response to Arguments
Applicant's arguments filed 08/13/2026 have been fully considered but they are not persuasive for the following reasons.
The double patenting rejections remains the same since claims of this application are not distinct from the Claims of Copending application No. 18645444.
The 112 issue remains the same because as the claim is written, the scrench (an accessory tool) appears being positively claimed, but the preamble recites “a power tool”, therefore, the preamble is suggested to change “a power tool with a scrench” or equivalent.
Regards to Claim Rejections under 35 U.S.C. § 103, Applicant states that “a guard extending from the body…” without providing further structures of the guard, as the claim is written, it is unclear what the guard is function and does for the power tool. Therefore, see Wood’s Figure 4 below, the peripheral edge and the first and second surfaces 110, 114 cover and guard the battery that meet the constitution of a guard.
With regards to “Applicant respectively disagrees….the first surface 110 and the second surface 114 of Wood do not extend from a portion of the body of battery receptacle 86…”, the argument is acknowledged, but it is persuasive because as seen in Figure 4 below, the 1st and 2nd surfaces 110, 114 and the peripheral edges of the battery receptacle extend from the housing 14 as seen in Figure 2 (see the language of claim 1 “a guard extending from the body, wherein the guard and the body at least partially define a battery receiving area for receiving the battery”). Also, see the peripheral protrusion edge of the battery receptacle in Figure 8 below, that extend from the battery receptacle 86. As the results, it meets the constitution of a claimed guard.
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However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
Examiner 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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 10/1/2026
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