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 .
Election/Restrictions
Applicant’s election without traverse of group I, corresponding claims 1-4, 8-9, 17, 19-20 in the reply filed on 01/23/2026 is acknowledged. Claims 5-7, 10-16, 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/21/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the second additive in claims 4, 20 (currently shows only one additive 43, Figure 1), the first and second regions in claim 9, and the coating with the additive in claim 19 (currently Figure 1 shows an additive 43 and Figure 5 shows a coating 700, none of figure shows both additive and coating together as required in claim 19) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 3-4, 8-9, 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 3-4 recite “the additive has a third volume resistivity…a third surface resistivity” and “a second additive having a fourth resistivity and a fourth surface resistivity”. The specification fails to provide a written description that shows the inventor possessed the invention as recited in claim 1. (e.g. no description …there is no 3rd or 4th resistivity discussed in the original specification).
Claim 8 recites “the additive is evenly dispersed throughout the handle”. The specification fails to provide a written description that shows the inventor possessed the invention as recited in claim 8. (e.g. no description … how is the additive evenly dispersed throughout the handle?). Looking at Figure 1, the additive 43 is positioned in a small portion of the handle and unclear how it is evenly dispersed throughout the handle.
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.
Claim 20 recites “a second additive having a third volume resistivity”. The specification fails to provide a written description that shows the inventor possessed the invention as recited in claim 20. (e.g. no description …there is no 3rd volume resistivity of a second additive discussed 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, 17, 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.
The scope of claim 1 is unclear and confusing. First, the preamble of claim 1 is “A power tool” (emphasis added), however, in the claim body does not provide any “power” and any tool driven by “power” (until claim 17 “a motor”). Therefore, it is unclear whether this tool is a power tool or not. It appears that the claim body is recited just a handle which conflicts with the preamble.
Second, lines 2-3 “the handle including a base material and an additive configured to distribute static electricity away from the handle” is unclear whether the base material or the additive or both the base material and the additive are configured to distribute static electricity away from the handle. Also, it is unclear what structure of the tool handle causes the base material and the additive configured to distribute static electricity away from the handle. Is it a connection or a transmitted static path between the tool handle to the ground?
Third, line 2 recites “the handle including a base material and an additive”. Later line 3 recites “the handle has a first volume resistivity and a first resistivity” that is implicit to the base material and the additive. However, the last paragraph recites “the base material has a second volume…a second surface resistivity” is confusing. How is the base material having both the first volume resistivity-the first resistivity and the second volume resistivity-the second surface resistivity?
Fourth, the last paragraph recites “the additive causes the first volume resistivity and the first resistivity of the handle to be less that the second volume resistivity and the second resistivity of the base material” that is confusing because the handle includes the additive and the base material. This is confusing since this is a structure claim. What is structure of the handle (a final structure)? What are a volume resistivity and a resistivity of the handle?
The scope of claim 4 is unclear since the original specification does not discusses it. If an art has two additive materials in the handle, it meets the claim, right (since two additive materials is more effective than one additive material)?
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, 8-9, 17, 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shao (CN-106284152-B and Translation).
Regarding claim 1, as best understood, Shao shows a “power” tool (see a tool, Figures 1-6, having a power drive or a motor 62) comprising: a handle (50, Figure 6) configured to be grasped by a user,
the handle including a base material (a material for forming the handle 50) and an additive (a second material body 66, Figure 6 and the translation, page 6, the last paragraph “the second material body 66 can contact the human body and transmit static electricity to the human body when in contact with the human body”) configured to distribute static electricity away from the handle,
wherein the handle has a first volume resistivity and a first surface resistivity (a combination of the base material with the additive as discussed in Applicant’s specification, para. 30. The first volume resistivity and the first surface resistivity” are inherently limitations since all part materials have resistivity properties), wherein the base material has a second volume resistivity and a second surface resistivity (without the additive as discussed in Applicant’s specification, para. 30. The second volume resistivity and the second surface resistivity” are inherently limitations since all part materials have resistivity properties), and
wherein the additive causes the first volume resistivity and the first surface resistivity of the handle (the combination of the base material with the additive) to be less than the second volume resistivity and the second surface resistivity of the base material, respectively (adding the second material body 66 for releasing the static electricity from the handle, as discussed in the translation, page 6, the last paragraph, causes the handle less resistivity because the statis charge is transmitted to the ground via the human body).
Regarding claim 2, as best understood, Shao 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 (see the discussion in claim 1 above and the translation, page 6, the last paragraph).
Regarding claim 3, as best understood, Shao shows that the additive has a third volume resistivity less than the second volume resistivity of the base material (this is inherently limitation since the additive or the second material body 66 is a CONDUCTIVE material as discussed in the translation, page 9, the 3rd paragraph “the materials forming the first material body 65 and the second material body 66 each include a conductive material”), and wherein the additive has a third surface resistivity less than the second surface resistivity of the base material (see the discussion above of the second material body 66 that is a conductive material).
Regarding claim 4, as best understood, Shao further shows a second additive (a first material body 65, Figure 6) having a fourth volume resistivity and a fourth surface resistivity (these are inherent limitations, since all part materials have a volume resistivity and a surface resistivity), the additive and the second additive together causing the first volume resistivity and the first surface resistivity of the handle (the base material with 1st and 2nd additives) to be less than the second volume resistivity and the second surface resistivity of the base material, respectively (see the discussion in claim 1 above and adding the first and second material bodies 65-66 for releasing the static electricity from the handle, as discussed in the translation, page 6, the last paragraph, causes the handle less resistivity because the statis charge is transmitted to the ground via the human body).
Regarding claim 8, as best understood, Shao shows that the additive is evenly dispersed throughout the handle (see the issue discussion above about “evenly”, Applicant’s figure 1 shows the additive 43 is positioned on a portion of the handle 45, therefore, it is unclear how it is “evenly” dispersed throughout the handle. Looking at a zoom-in of Shao’s Figure 6, the second material body 66 is “evenly” dispersed throughout mostly the handle).
Regarding claim 9, as best understood, Shao shows that the handle includes a first region and a second region (Applicant’s figures don’t show 1sta and 2nd regions and the original specification does not discuss the 1st and 2nd regions, therefore, see Shao’s Figure 6 below), and wherein unequal amounts of additive are dispersed throughout the first region and the second region (see Figure 6 below).
PNG
media_image1.png
676
894
media_image1.png
Greyscale
Regarding claim 17, Shao shows that the power tool includes a motor (62, Figure 3) and a drive assembly (an output shaft for driving a fan 61 and a flow guide 24) coupled to the motor and a drive element (61, 24), and wherein the drive assembly is configured to transmit torque from the motor to the drive element (Figure 3 and Translation, page 8, the middle paragraph).
Regarding claim 20, as best understood, Shao further shows a second additive (65, see the discussion in claim 4 above) 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 first material body 65 in Figures 6-7 which has a different size and shape from the handle and the second material body, therefore, the volume resistivity of the first material body is different from the volume resistivity of the handle and the second material body 66.
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.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Shao in view of Zhu (US 11013386).
Regarding claim 19, Shao shows all limitations as stated above except a coating having a third surface resistivity unequal to the first surface resistivity and the second surface resistivity.
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 outer sides of the handle (Col. 3, lines 1-3).
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 Shao, 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).
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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NHAT CHIEU Q DO/ Primary Examiner, Art Unit 3724 2/11/2026