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 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 1, 3-12, 14-17 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.
The amendment of claim 1 “wherein the housing, the work element, and the drive shaft are configured to fit within a cylinder having a diameter no greater than 6 inches” is new matter because the original specification does not support it.
See Applicant’s figure 3, an entire chainsaw is in the cylinder 300.
See Applicant’s Para. 35 states that “the pole saw 100 is configured to fit within a container 300 having a diameter 305 when in a fully assembled state. For example, the housing 104, the pole 106, and the work element housing 112 fit within the container 300 in the fully assembled state. The power source 118 may also fit within the container 300 in the fully assembled state. In at least one example embodiment, the diameter 305 of the container 300 is no greater than about 6 inches”.
As the amendment of claim 1 written “wherein the housing, the work element, and the drive shaft are configured to fit within a cylinder having a diameter no greater than 6 inches” appears only the housing, the work element and the drive shaft fit within the cylinder. Thus, it is new matter. Claim 10 has the same issue.
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, 3-12, 14-20 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.
As the amendment of claim 1 written “wherein the housing, the work element, and the drive shaft are configured to fit within a cylinder having a diameter no greater than 6 inches” appears only the housing, the work element and the drive shaft fit within the cylinder. Thus, it is unclear where the at least one pole and the electric motor… (battery) are placed. If an art has a small housing, a small working element, and a small shaft fitting within the 6-in cylinder, that meets the limitation, right (whether, it is assembled together or not)? Claim 10 has the same issue.
Claim 18, the last sentence "the power tool in a fully assembled state" in the recitation is not clear. As the claim is written, it does not provide a guidance to understand what the "fully assembled state" is. What is the constitution of the fully assembled state? (for an example, as claim 18 is written, there is no power source. Can it be considered the POWER tool is "a fully assembled state" if the power source is NOT on the tool?
The scope of claim 20 “replacing the pole tool within the container” is unclear. See Figures 4-5, the container 300 is closed two ends that are unclear how a user can replace the pole tool within the container. Are there many intermediately steps that have not provided? What the pole tool is replaced for? Is Applicant trying to claim “inserting or storing the pole tool within the container”, 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.
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, 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 4078589).
Regarding claim 1, as best understood, Miller shows a power tool (Figure 3), comprising:
a housing (22) including an electric motor (70);
a work element (a tool head 28);
a drive shaft (24) extending between the electric motor and the work element along a longitudinal axis (Figure 3); and
at least one pole (26, Figure 3) extending along the longitudinal axis between a first end and a second end,
the drive shaft disposed within the at least one pole (see a portion of the driver shaft 24 within the head connector 26, Figure 3),
wherein a motor axis (see the output shaft 68 of the motor, Figure 3) extending through a center of the electric motor is offset from a longitudinal axis extending along the drive shaft.
Based on a size and shape of Miller’s battery driven screwdriver (see the title and Figure 3), this screwdriver is configured to fit within a cylinder having a diameter no greater than 6 inches.
If one argues that this battery driven screwdriver does not fit within a cylinder having a diameter no greater than 6 inches.
Examiner takes official notice that it is well known in the art; there are many small or compact sizes of battery driven screwdrivers which can be fitted within a cylinder having a diameter no greater than 6 inches for storing, protecting, and transporting. Examples can be provided if challenged, as they are numerous. It would have been obvious to a person having ordinary skill in the art (PHOSITA) to have small or compact sizes of battery driven screwdrivers which can be fitted within a cylinder having a diameter no greater than 6 inches, in order to store, protect, and transport or carry the screwdriver.
Regarding claims 3-4, Miller shows that the motor axis is parallel to the longitudinal axis (Figure 3) and the longitudinal axis of the drive shaft is configured to be parallel with a central axis extending though the cylinder (since the tool is small compared to the 6” diameter cylinder, the tool is configured to be parallel with a central axis extending though the cylinder. Also, Miller’s tool housing is cylindrically shaped as seen in Figures 6-7).
Regarding claim 5, Miller shows that a power source (84, Figure 3) configured to supply power to the electric motor to drive the work element, wherein the power source fits within the cylinder (see the discussions in claims 1 and 3-4 above and Figure 3).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 4078589) in view of Viola et al (US 2023/0278241 A1) hereinafter Viola.
Regarding claim 6, Miller shows all of the limitations as stated above including a battery (84), but it is clear whether the battery is removable or not.
Viola shows that a power source is removably coupled to a receiving area of a housing (see the battery 390 in Figure 11).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have had the battery of Miller to be removable, as taught by Viola, in order to allow the battery to be charged or replaced if it is necessary.
Claims 1, 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 Viola et al (US 2023/0278241 A1) hereinafter Viola, Fettes (US 4654971), and as evidenced by Tiedemann (US 5494079).
Regarding claims 1 and 10, Fu shows a power tool (Figure 1), comprising:
a housing (60) including an electric motor (20, Figure 2);
a work element (10);
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 the at least one pole is configured to move between retracted and extended positions,
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 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 it is not required the whole power tool in the cylinder).
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).
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 power tool of Fu to be a compact size, as taught by Viola and Fettes, in order to allow the power tool to be easily storage within a cylinder having a diameter no greater than 6 inches for transporting.
Further, sizes of power tools are well known in the art and it is an old and well understood results-effective-variable.
If a user wish to cut small brands (not need to cut down a large brand), a compact chainsaw can be properly used to cut the small brands and it is cheap, easily stored and transported (see Viola), and if the user wish to cut large brands, it may need a large power chain saw, but the down side is that it will increase cost of the chainsaw and be difficult to stored and transported.
Given the reasons above, almost any sizes of chainsaws would be considered obvious. This gives the manufacture a choice to consider the needs and the tool 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 chainsaw to be cut 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 chainsaw need to be cut 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.
With regards “the at least one pole …a retracted position and an extended position”, see Fettes’s Figures 1-2.
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 power tool 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 claim 8, the modified tool of Fu shows that the work element comprises:
a work element housing (see Fu’s Figure 1, a cover covers a portion of a guide plate and portions of chainsaw 10); 11 chain
a bar (11) extending from the work element housing; and
a chain (10) disposed around the bar, wherein the chain is configured to be rotatably driven about the bar by the electric motor via the drive shaft (see Fu’s Figures 1-3), and wherein the work element housing, the bar, and the chain fit within the cylinder (see the discussion in claims 1 and 10 under the 103 rejections above).
Regarding claim 9, the modified tool of Fu shows that a chain sprocket (this is an inherent limitation for driving the chain) disposed in the work element housing, wherein the chain is coupled to the chain sprocket, and wherein the chain sprocket is driven by the electric motor via the drive shaft to rotate the chain (this is an inherent limitation for driving the chain).
Examiner takes official notice that it is well known in the art; the motor drives a chain sprocket of a chainsaw via a shaft. Examples can be provided if challenged, as they are numerous. It would have been obvious to a person having ordinary skill in the art (PHOSITA) to have a motor drive to drive a chain sprocket of a chainsaw via a shaft in order to operate the chainsaw.
Regarding claims 11-12, the modified power tool 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 power tool of Fu shows all of the limitations as stated in claim 10 above 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 power tool 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 10 above).
Regarding claim 18, the modified power tool of Fu teaches a method of using a power tool (see the discussion in claim 10 above), comprising:
providing a pole tool in a container (as this is written, the container is not positive claimed, therefore the tool in claim 10 meets this), the pole tool comprising:
“a housing including an electric motor,
a work element, 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 is in “a fully assembled state” within the cylindrical storage volume. See the discussion in claims 1 and 10 above).
Regarding claim 19, the modified power tool 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, as best understood, the modified power tool of Fu teaches replacing the pole tool within the container (as this is written, it is unclear how and what part of the tool to be replaced, therefore, Para. 22 of Fu “it could be said that the transmission device 301 can include several transmission shaft assemblies 30 which are connected through the connecting bases 304” that means at least one assembly 30 can be replaced within the container); 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), 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 03/16/2026 have been fully considered but they are not persuasive for the following reasons:
With regards to claim 1, Examiner notes that as claim 1 is written, this can be rejected any power tool different from a pole chainsaw.
With regarding the language “replacing the pole saw within the container 300”, see the discussion above. What the pole saw is replaced for?
With regards to “a motor axis extending through the electric motor is offset from
the longitudinal axis”, see Figure 4, the shaft 32 is centered of the tube 31 and see the zoom-in in Fu’s figure 2 below. It is clearly the motor shaft axis that is offset from the shaft 32 axis.
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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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 4/28/2026
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