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 .
Specification
The amendment filed 05/18/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: in the Para. 41 states:
“E8. The power tool 10 of E1, wherein additive 43 is evenly dispersed throughout the handle 45
E9. The power tool 10 of El, wherein the handle 45 includes a first region and a second region, and wherein unequal amounts of additive 43 are dispersed throughout the first region and the second region.
…
E19. The power tool 10 of El, wherein the handle 45 further comprises a coating 700 having a third surface resistivity unequal to the first surface resistivity and the second surface resistivity” that is new matter since the original specification does not support it.
Applicant is required to cancel the new matter in the reply to this Office Action.
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.
Claim 9 is 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.
Claim 9 recites “wherein unequal amounts of additive are dispersed throughout the first region and the second region” of the handle. The specification fails to provide a written description that shows the inventor possessed the invention as recited in claim 9. (e.g. no description … how are unequal amounts of additive dispersed throughout the first region and the second region?). Reading Applicant’s specification, para. 28 recites “additive 43 may be dispersed only within certain regions of the handle 45 such that certain regions of the handle 45 have different electrical resistivity properties than other regions of the handle 45” that is NOT what the scope of claim 9 is. Also, there is no “anequal amounts” or equivalent languages recited in the original specification.
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, 8-9, 19-20 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.
Claim 1 recites “the handle being molded by a base material with an additive to have a first volume resistivity and a first surface resistivity…
wherein the base material has a second volume resistivity and a second surface resistivity, and
wherein the first volume resistivity and the first surface resistivity of the handle to are less than the second volume resistivity and the second surface resistivity of the base material, respectively” (emphasis added) is unclear and renders indefinite.
While reading at Applicant’s specification, Para. 32 “ …addition of one or more additive 43 to commonly used injection molding plastics…any number of additive 43…may be added to the handle plastic”, it appears that the based material with the additive are molded to form a handle.
Therefore, as the claim is written, it is unclear what the final structure of the handle be. Please note that this invention is directly to a power tool (structural claim). Are both base material with an additive blended or mixed together during the molding processing, right? What are structures of the handle (final structures of the handle)? it appears the final structures of handle including a final material (a based material mixed with an additive) having a first volume resistivity and a first surface resistivity configured to distribute static electricity away from the handle. Another word, there is only one final handle material.
See MPEP 2173.05(p) addresses claims that combine both a product and a process in a single claim. Such a claim is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because it is unclear whether infringement occurs when the product is made or when the process is performed.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). See MPEP. 2113 (I).
Therefore, it is unclear. Please note that this invention is directly to a power tool (structural claim). Is both base material with an additive blended or mixed together during the molding processing, right? What are structures of the handle (final structures of the handle)? it appears the final structures of handle including a material having a first volume resistivity and a first surface resistivity configured to distribute static electricity away from the handle.
The scope of Claims 3-4 and claims 19-20 are also confusing because the final structures of the handle appears only one material as discussed above because the based material with the additive are molded to form a handle.
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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 8 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by shoji (JP 2004065602 and Translation).
Regarding claim 1, as best understood, Shoji shows a “power” tool (see a power vacuum, Figures 1-2) comprising:
a motor (see the abstract “a motor-driven blower”);
a drive assembly (an electric blower 107 that inherently including a fan blade) coupled to the motor and a drive element (the fan blade), wherein the drive assembly is configured to transmit torque from the motor to the drive element;
a handle (a handle 125 of a cyclone separating cylinder 104, Figure 8) configured to be grasped by a user, the handle being molded by a base material with an additive to have a first volume resistivity and a first surface resistivity and configured to distribute static electricity away from the handle (see the translation, Para. 26 “the cyclone separating cylinder 104 … are molded using an antistatic resin agent, or … by applying an antistatic agent to the surface” that means the handle is made or molded from a base material and an antistatic resin),
wherein the “base material has a second volume resistivity and a second surface resistivity” (see the issue above because this base material is a raw material prior to mold and form the handle), and
wherein the first volume resistivity and the first surface resistivity of the handle (of a final material of the handle) to are less than the second volume resistivity and the second surface resistivity of the base material, respectively (this is inherent and intrinsic limitation since a final material of the handle having an antistatic resin agent).
Regarding claim 2, Shoji shows that static charge induced by the power tool follows a path from the power tool to ground, and wherein the path includes the handle (as the claim is written, it is unclear how much static of the handle to ground, therefore, Para. 26 of Translation “The number of cleanings can be reduced” that means most static is reduced and some static can go from handle to user to the ground).
Regarding claims 3-4, as best understood, Shoji shows that “the additive has a third volume resistivity less than the second volume resistivity of the base material, and wherein the additive has a third surface resistivity less than the second surface resistivity of the base material; and
further a second additive having a fourth volume resistivity and a fourth surface resistivity, the additive and the second additive together causing the first volume resistivity and the first surface resistivity of the handle to be less than the second volume resistivity and the second surface resistivity of the base material, respectively” (See the issue above. This is a product by a process in the same claim. What is a final material of the handle? As claim 1 is written, the handle has only one final material that includes a first volume resistivity and a first surface resistivity).
The additives added to a raw material during molding forming a handle by and defined by the process has been considered and given weight inasmuch as it infers final structure in the device or the handle. It is a product by process claim. See MPEP 2113.
Regarding claim 8, Shoji shows that the additive is dispersed throughout the handle (see the discussion of Para. 26 of Translation).
Regarding claim 20, as best understood, Shoji further shows a second additive (see the discussion in claims 3-4) having a third volume resistivity different than the first volume resistivity (of the handle) and the second volume resistivity (of the base material). See the issue above and it is unclear since there is only one final material of the handle.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Shoji in view of Zhu (US 11013386).
Regarding claim 9, as best understood, Shoji shows all limitations as stated above includes a first region and a second region of the handle (inner and outer handle sides), however, it is unclear whether unequal amounts of additive are dispersed throughout the first region and the second region or not.
Zhu shows a handle (110, Figure 1) of a power tool (a vacuum cleaner, abstract), wherein the handle includes a conductive layer coated on inner and/or outer sides of the handle (Col. 3, lines 1-3, since the language used is “or”, the coating can be applied on either sides, therefore, the amounts of additive applied to the first and second regions of the handle are unequal).
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 a conductive layer, as taught by Zhu to be coated on inner and outer sides of the handle of Shoji, in order to allow the electrically conductive TPU may increase the area of contact between the conductive material and the human body helping to increase efficiency of electrostatic conduction without affecting the feel of grasping, appearance and safety (Col. 2, lines 63-67 of Zhu). Doing so, the coating has a third surface resistivity unequal to the first surface resistivity and the second surface resistivity (since the coating material is inner and outer sides of the handle and different property compared to the properties of the handle and the base material).
Regarding claim 19, Shoji shows the coating (see claim 9) having a third surface resistivity unequal to the first surface resistivity (of the handle in claim 1) and the second surface resistivity (of the additive of claim 1 that is different because the coating material and the additive material are different properties).
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any matter specifically challenged in the argument. See the new art, Shoji above.
With regards to claim 9 “unequal amounts of additive are dispersed throughout the first region and the second region”, as failing to comply with the written description requirement, the rejection remains the same. Examiner reads the paragraph 28 multiple times and could not find any language or any equivalent language “unequal amounts of additive are dispersed throughout the first region and the second region”. The paragraph states that “additive 43 may be dispersed only within certain regions of the handle 45 such that certain regions of the handle 45 have different electrical resistivity properties than other regions of the handle 45” that does not mean that unequal amounts of additive are dispersed throughout the first region and the second region.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO 2009096236 A1 shows a handle of a power tool having an anti-electricity static layer 18.
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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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 7/13/2026
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