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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/28/2026 has been entered.
Claim Objections
Claim 20 is objected to because of the following informalities: “the cylindrical volume” should be read –the cylindrical storage volume--. Appropriate correction is required.
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, 3-6, 8-12, 14-16, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fu (US 2018/0177135 ) in view of Fettes (US 4654971), Viola et al (US 2023/0278241 A1) hereinafter Viola, Katsumi (JP2003199432 A and Translation) and as evidenced by Tiedemann (US 5494079).
Regarding claim 1, Fu shows a power tool (Figure 1), comprising:
a housing (60) including an electric motor (20, Figure 2);
a work element (10) comprising a work element housing (see the housing of the work attachment 10, Figure 1), a bar (11) extending from the work element housing, and chain disposed around the bar (see a chain around the bar 11, Figure 1);
a drive shaft (32) extending between the electric motor and the work element along a longitudinal axis (Figure 3 and Para. 24); and
at least one pole (31, Figure 1) extending along the longitudinal axis between a first end and a second end, the drive shaft disposed within the at least one pole (Figure 3),
wherein a motor axis (see the output shaft of the motor 20, Figure 2) extending through a center of the electric motor is offset from a longitudinal axis extending along the drive shaft.
However, it is unclear whether the pole saw including the housing, the work element, and the drive shaft are configured to fit within a cylinder having a diameter no greater than 6 inches or not (since Fu’s pole saw is not discussed its dimension or size).
Small or compact pole saw or chainsaw are well-known in the art for demanding purposes, for examples,
Viola shows a chainsaw having a similar size of a pocket knife or a Ka-Bar knife that is configured to fit within a cylinder having a diameter no greater than 6 inches and as evidenced by Tiedemann, the conduit storage is 6 inches inner diameter.
Fettes shows a pole chainsaw (Figure 1) having a compact assembly for easily transport and or storage (abstract).
Katsumi shows a pole chainsaw (Figures 1-2) having a power small-sized chain saw (abstract) for cutting high branches and intended to reduce a heavy labor as much as possible and the weight of the chain saw is 2 kg or less considering the fact that the chain saw is downsized (Para. 4).
Based on the teachings above, 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 pole saw of Fu to be a compact size, as taught by Fettes and Katsumi, in order to allow the pole saw to be easily storage, transported, and reduce a heavy labor as much as possible and in order to allow the pole saw can be configured to be stored within a cylinder having a diameter no greater than 6 inches to protect the chainsaw during transporting as seen in Viola’s reference that is suggested a pocket size of a chainsaw for cutting small objects (see Para. 111 “landscaping”).
Further, sizes of pole sawa are well known in the art and it is an old and well understood results-effective-variable.
If a user wish to cut high-small brands (as discussed in Katsumi’s reference), a compact pole chainsaw can be properly used to cut the high-small brands and it is light, cheap, easily stored and transported and don’t need much power (see Viola’s reference), and if the user wish to cut high large brands, it may need a large power chain saw, but the down side is that it will increase cost of the chainsaw, be difficult to stored and transported, and it is heavy.
Given the reasons above, almost any sizes of pole chainsaws would be considered obvious. This gives the manufacture a choice to consider the needs and the pole chainsaw cost.
Moreover, it would have been an obvious matter of design choice to a person of ordinary skill in the art to provide a size of the pole chainsaw fitted within 6 inches diameter cylinder because discovering an optimum value (about 6 inches) would have been a mere design consideration based on a proper capacity of a pole chainsaw to be cut high-small brands (see the “results-effective-variable” above). Such a modification would have involved only routine skill in the art to accommodate the aforementioned requirement depending on the capacity of pole chainsaws that need to be cut high-small brands. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp.
Regarding Claims 3-4, the modified power pole saw of Fu shows that the motor axis is parallel to the longitudinal axis (see Fu’s Figure 2) and the longitudinal axis is configured to be parallel with a central axis extending though the cylinder (see Viola’s teaching a pocket size of a chainsaw that is configured to be parallel with a central axis extending though the cylinder).
Regarding Claims 5-6, the modified power pole saw of Fu shows that a power source (Fu’s battery pack 50, Para. 19) configured to supply power to the electric motor to drive the work element, wherein the power source fits within the cylinder and the power source is removably coupled to a receiving area of the housing (Fu’s battery pack 50, Para. 20 “the battery pack 50 is removably connected with the housing 60”).
Regarding Claims 8-9, the modified power pole saw of Fu shows that the chain is configured to be rotatably driven about the bar by the electric motor via the drive shaft (see Fu’s reference); and wherein the work element housing, the bar, and the chain fit within the cylinder (see the discussion in claim 1 above) and a chain sprocket disposed in the work element housing (this is an inherent limitation, but it is not shown in Fu’s Figure 1, however, it can be seen in Fettes’s Figure 6 as the sprocket 34 and the housing 16); wherein the chain is coupled to the chain sprocket (Fettes’s Figure 6); and wherein the chain sprocket is driven by the electric motor via the drive shaft to rotate the chain (see Fettes’s Figures 1-2).
Regarding claim 10, the modified power pole saw of Fu shows all of the limitations as stated in claim 1 above except that at least one pole …a retracted position and an extended position.
see Fettes’s Figures 1-2, the pole is telescope extended/retracted.
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 pole of Fu to be a compact size (telescope pole or a collapsible driver shaft “title”), as taught by Fettes, in order to allow the power tool to be compacted as discussed above.
Regarding claims 11-12, the modified pole saw of Fu shows that the motor axis is parallel to the longitudinal axis (Figure 2 of Fu) and wherein the longitudinal axis is configured to be parallel with a central axis extending though the cylinder (Figures 1-2 of Fu).
Regarding claims 14-15, the modified pole saw of Fu shows all of the limitations as stated in claim 10 above including an outer pole disposed at one of the first or second ends (see Fettes’s Figures 1-2) and a clamp (24 of Fettes) configured to secure the outer pole and the inner pole in a fixed position.
Regarding claim 16, the modified pole saw of Fu shows a power source (50 , figure 1 of Fu) removably coupled to a receiving area of the housing (Para. 20 of Fu), wherein the power source fits within the cylinder (see the modification of claim 1 above).
Regarding claim 18, the modified pole saw of Fu teaches a method of using a power tool (see the discussion in claims 1 and 10 above), comprising:
providing a pole tool in a container (as this is written, the container is not positive claimed, therefore the pole tool in claims 1 and 10 meets this), the pole tool comprising:
“a housing including an electric motor,
a work element comprising a work element housing, a bar extending from the work element housing and chain disposed around the bar, and
a drive shaft extending between the electric motor and the work element;
wherein the motor axis extending through the electric motor is offset from a longitudinal axis extending through the drive shaft” (see discussion in claim 10 above),
with the pole tool disposed in the container (see the discussion in claim 10 above), grasping the pole tool at a guard (as this is written, it is unclear what the guard is, therefore, an end of the housing 60 is guarded the battery 50 can be used pulled the tool from the container) disposed on the housing of the pole tool; and translating, via the guard, the pole tool from a cylindrical storage volume of the container in a direction parallel with a longitudinal axis of the container,
wherein the cylindrical storage volume has a diameter no greater than six inches, and wherein the pole tool fits within the cylindrical storage volume (see the discussion in claims 1 and 10 above).
Regarding claim 19, the modified method of Fu teaches the longitudinal axis extending though the drive shaft is configured to be parallel with the longitudinal axis of the container (see the discussion of claims 11-12 above).
Regarding claim 20, the modified power tool of Fu teaches replacing the pole tool within the container after translating the pole tool from the cylindrical storage volume (removing and inserting the pole tool as discussed in claim 1 above); wherein the replacing comprises translating, via the guard, the pole tool into the cylindrical storage volume of the container in the direction parallel with the longitudinal axis of the container (see the discussion in claims 10-12 above for the tool insertable).
Allowable Subject Matter
Claims 7 and 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and (b) or 35 U.S.C. 112 (pre-AIA ), 1st and 2nd paragraphs, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a reason for allowance: Claims 7 and 117 are free of the prior art because the prior art does not teach or suggest the feature of a scrench disposed in the receiving area, wherein the scrench is inaccessible when the power source (battery) is coupled to the housing; and wherein the scrench is removable when the power source is detached from the housing, respectively as set forth in amended claims 7 and 17.
There are many arts teaching screnches, for an example, Levins (US 11958169) has a scrench (a socket with flat blade, Figure 7A) attaching on a chain saw housing (Figure 7B); Mark (US D619440) shows a scrench on vary locations of a chain saw housing (Figures 5-8),
Wood (US 11897114) shows an 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) in the size of a pole chainsaw within 6 inches housing as claimed.
However, none of them teaches or suggests that the scrench is disposed in the receiving area, wherein the scrench is inaccessible when the power source (battery) is coupled to the housing; and wherein the scrench is removable when the power source is detached from the housing.
Response to Arguments
Applicant's arguments filed 06/18/2026 have been fully considered but they are not persuasive for the following reasons:
Examiner notes that as current amendment, it has overcome the rejections by Miller.
With regards to the amendment claims 1, 10, 18 “a pole chainsaw” fitting within the 6-inch cylindrical storage volume, the combination of Fu (US 2018/0177135 ) in view of Fettes (US 4654971), Viola et al (US 2023/0278241 A1) hereinafter Viola, Katsumi (JP2003199432 A and Translation) and as evidenced by Tiedemann (US 5494079) reads on all limitations as stated in the claims. See the rejections above with detail explanations.
With regards to “Viola’s reference”, Applicant's argument that Viola’s reference is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, claims 1, 10, 18 require at least a chainsaw, therefore, Viola’s reference teaches a pocket size of a chainsaw (analogous art) and Viola’s reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See MPEP. 2141.01(a) “Analogous and Nonanalogous Art”.
The purpose of this modification that Examiner is making is to have a pole chainsaw can be reduced sizes or compact sizes (see Fettes and Katsumi’s references) including see a pocket size (see Viola’s) while it allows the pole chainsaw to be easily storage, transported, and reduce a heavy labor as much as possible and in order to allow the pole saw can be configured to be stored within a cylinder having a diameter no greater than 6 inches to protect the chainsaw during transporting as seen in Viola’s reference that is suggested a pocket size of a chainsaw for cutting small objects (see Viola’s Para. 111 “landscaping”) that does not need a large power source and a large chainsaw.
With regards to “telescoping pole saw…is not taught by Viola” in pages 7-8 of the remarks, 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). Examiner agrees that Viola’s chainsaw does not have a telescoping pole, however, it is not in claims 1, 10, 18. Moreover, the telescoping pole is seen in Fettes’s reference while Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.
With regards to “the Office Action fundamentally relies on improper hindsight knowledge of Applicant's disclosure, without any motivation to perform the modifications required to reach claim 1. Because the reasoning in the Office Action fails to explain why a person having ordinary skill in the art at the time of the invention would have been motivated to modify Fu, Viola, Fettes, and Tiedemann in the manner proposed in the Office Action to arrive at the claimed invention, it is respectfully submitted that the combination is improper” in page 9 of the remarks, this argument is acknowledged but it is persuasive.
Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In this case, Fu teaches a pole saw for cutting high-reach branches, however, it is unclear whether this pole saw is for cutting large branches or small branches and fits within a 6-inch cylindrical volume or not. Fettes and Katsumi teach compact sizes of pole chainsaws for reducing cost, tool’s weights, easily storage for transporting and cutting small branches (see the discussions above) while Viola teaches a pocket size of a chainsaw for inherently cutting small branches and fitting within a 6-inch cylindrical storage volume, which would be a nexus reason for modifying or reducing the size of the pole chainsaw since it does not need a large power source and a large chainsaw for cutting small branches as discussed above. As the combination of Fu (US 2018/0177135 ) in view of Fettes (US 4654971), Viola et al (US 2023/0278241 A1) hereinafter Viola, Katsumi (JP2003199432 A and Translation) and as evidenced by Tiedemann (US 5494079) takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure. Thus, the combination in the rejections above is proper.
Also, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the reasoning is found in the references themselves with the knowledge generally available to one of ordinary skill in the art. See the motivation and reasoning int the rejections above.
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
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.
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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 9/17/2026
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