53DETAILED CORRESPONDENCE
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 .
Status of Claims
This is the final office action on the merits of Application No. 18/040,428 filed on 02/03/2023. Claims 1-13, 15, 23, 53, and 55-56 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The certified copy has been filed with application no SE2151238-9, filed on 10/08/2021.
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 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 1-6 and 11-12 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Hoffman et al. (US 20220241878 A1) in view of BUXTON et al. (US 20220410425 A1) and further in view of Hittmann et al. (US 20120036722 A1) and Roetker (US 20220178066 A1).
Regarding claim 1, Hoffman discloses a handheld battery-powered (see paras 25 and 26) chainsaw (100, figs. 1-7, para 25) comprising:
an electric motor (100, fig. 1) and
a transmission arrangement (e.g. shaft 136, slip clutch 164, para 28, fig. 3/7) coupled to the electric motor (110), wherein the electric motor (110) is configured to drive a saw chain (112, fig. 3) via the transmission arrangement (136, 164, fig. 3/7)
wherein the transmission arrangement comprises a slip clutch (e.g. 164, fig. 7, para 39), comprising a drive member (e.g. not shown, the input of the slip clutch) configured to receive rotary power from the electric motor (110) and a driven member (not shown, e.g. the output of the slip clutch 164, fig. 7) configured to transmit rotary power to the saw chain (112), wherein the slip clutch (164) is configured to at least partly disengage the electric motor (110) from the saw chain (112) by enabling a slip (see para 39) in the engagement between the drive member and the driven member.
However, Hoffman fails to disclose the chainsaw is a handheld battery-powered and a cooling fan, wherein the slip clutch is positioned on a first axial side of the electric motor, wherein the cooling fan is connected to an output shaft positioned on a second axial side of the motor, opposite to said first axial side, wherein the output shaft has a second-end connection interface, and wherein the second-end connection interface is a keyed interface to rotationally lock the output shaft to the cooling fan.
BUXTON discloses a similar type of chainsaw (20, fig. 1) wherein a battery pack (68) is removably coupled to a bottom part of a handle portion.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hoffman by adding a battery pack as taught by BUXTON, so that the motor can be operated by a battery.
Hittmann teaches a hedge trimmer (e.g. 1, figs. 1-6) comprising a cooling fan (e.g. 17, fig. 3) wherein a clutch (e.g. 15, fig. 3) is positioned on a first axial side of a motor (e.g. 9, fig. 3), wherein the cooling fan (17) is connected to an output shaft (e.g. 13, fig. 3) positioned on a second axial side of the engine, opposite to said first axial side.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hoffman/ BUXTON by adding a cooling fan as taught by Hittmann, so that the electric motor and the clutch can be cooled off and therefore enhance the efficiency of the chainsaw.
However, Hittmann fails to teach wherein the output shaft has a second-end connection interface, and wherein the second-end connection interface is a keyed interface to rotationally lock the output shaft to the cooling fan.
Roetker teaches a cooling fan (e.g. 242, figs. 4-8) as shown in figs 4 and 7 wherein an output shaft (214, fig. 4) has a second-end connection interface, and wherein the second-end connection interface is a keyed interface (via keyed aperture 268, see fig. 7, para 49) to rotationally lock the output shaft to the cooling fan.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hoffman/ BUXTON/ Hittmann by adding a keyed interface between the output shaft and the cooling fan as taught by Roetker, so that output shaft and the cooling fan will be secured and can rotate at the same speed.
Regarding claim 2, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 1, Hoffman further discloses wherein the transmission arrangement is configured to provide a transmission ratio of 1:1 between the electric motor (110) and a saw chain sprocket (134) meshing with the saw chain (112).
Regarding claim 3, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 1, but fails to disclose wherein the slip clutch is configured to transfer a slip torque, while slipping of between 2Nm and 4.5 Nm.
it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to optimize the slip torque of modified Hoffman/ BUXTON/ Hittmann/ Roetker and thus the claimed slip torque cannot be considered critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", where Huang teaches the general conditions of the claim in the prior art, including the same composition in all other respects and identical experimental data. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions." In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Therefore, after modification, the chainsaw would have the slip clutch is configured to transfer a slip torque, while slipping of between 2Nm and 4.5 Nm.
Regarding claim 4, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 1, Hoffman further discloses wherein the slip clutch (164, fig. 7) is movable between an engaged state, in which the slip clutch (164) is configured to drive the saw chain (112), and a disengaged state, in which the drive member can rotate freely without driving the saw chain (112).
Regarding claim 5, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 1, Hoffman further discloses wherein the slip clutch (164, fig.7) is configured to transit between the engaged state and the disengaged state in response to a change in rotational speed of the electric motor. (e.g. rotational speed of the motor 110, see para 25 “A control feature 108 can control the relative speed of a motor 110 (FIG. 3). As the operator increases speed of the motor 110 using the control feature 108, a cutting implement 112 can move at increased speeds in a cutting track 114 formed in a bar 116 of the chainsaw 100.”)
Regarding claim 6, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 5, Hoffman further discloses wherein the slip clutch (164) is configured to transit, in response to a change in rotational speed of the electric motor of the drive member, between a slip-enabling state, in which the drive member is enabled to slip in relation to the driven membe
Regarding claim 11, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 1, Hoffman further discloses wherein the slip clutch (164, fig. 7) has a proximal side (e.g. the side facing to 150 in fig. 7) facing the electric motor (110) and a distal side (e.g. the side of 164 opposite of 150 in fig. 7) facing away from the electric motor (110), wherein a saw chain drive sprocket (134) is connected to the driven member of the slip clutch on the distal side of the slip clutch. (see figs. 6 and 7)
Regarding claim 12, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 1, Hoffman further discloses wherein the slip clutch (164, fig. 7) has a proximal side (e.g. the side facing to 150 in fig. 7) facing the electric motor (110) and a distal side (e.g. the side of 164 opposite of 150 in fig. 7) facing away from the electric motor (110), wherein a saw chain drive sprocket (134) is connected to the driven member of the slip clutch on the distal side of the slip clutch. (see figs. 6 and 7)
While reference does not disclose wherein a saw chain drive sprocket (134) is connected to the driven member of the slip clutch on the proximal side of the slip clutch, it would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention was made to reverse the a saw chain drive sprocket connection, by placing the saw chain drive sprocket on the proximal side of the slip clutch, since it has been held that rearranging parts of an invention involves only routine skill in the art while the device having the claimed dimensions would not perform differently than the prior art device, In re Japikse, 86 USPQ 70 and since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, In re Einstein, 8 USPQ 167. (MPEP 2144.04)
Therefore, after modification, the chainsaw would have wherein a saw chain drive sprocket is connected to the driven member of the slip clutch on the proximal side of the slip clutch.
Regarding claim 23, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 1,Hittmann further teaches wherein the cooling fan (17) coupled to always run with a drive member side of the slip clutch (15, fig. 3).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hoffman et al. (US 20220241878 A1) in view of BUXTON et al. (US 20220410425 A1), Hittmann et al. (US 20120036722 A1) and Roetker (US 20220178066 A1) and further in view of Smith et al. (US 20150308521 A1).
Regarding claim 7, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 6, Hoffman further discloses wherein the slip clutch (164) is configured to transit between the disengaged and engaged states at a predetermined clutch engagement speed (e.g. clutch speed while slipping), but fails to disclose the predetermined clutch engagement speed, above which the slip clutch assumes the engaged state, and to transit from the slip-enabling state to the lock-up state at a predetermined slip limit speed above which the slip clutch assumes the lock-up state, wherein the slip limit speed is at least 200 rpm higher than the engagement speed, wherein the slip limit speed is based on a rotational speed of the electric motor.
Smith teaches a slip clutch (16, fig. 1) of a drive wherein a predetermined clutch engagement speed (e.g. clutch slip speed, see para 12), above which the slip clutch assumes the engaged state, and to transit from the slip-enabling state to the lock-up state at a predetermined slip limit speed (e.g. predetermined clutch slip speed) above which the slip clutch assumes the lock-up state. (see para 12” The method further includes providing an open loop control of clutch pressure by fully engaging the clutch for a predetermined time, setting the clutch engagement pressure to a predetermined pressure, thus allowing a predetermined clutch slip speed, and monitoring the clutch slip speed, wherein the clutch engagement pressure is maintained when the clutch slip speed is equal to or less than the predetermined clutch slip speed. When the clutch slip speed is greater than the predetermined clutch slip speed, the clutch engagement pressure may be increased to fully engage the clutch for a predetermined time.”)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hoffman/ BUXTON/ Hittmann/ Roetker by substituting the clutch with a centrifugal clutch as taught by Smith, so that a smooth engagement and disengagement can be achieved, therefore, this produces extended service life of the drive train components, greater efficiency and smother operation of the drive. (see abstract of Smith)
However, Smith fails to teach wherein the slip limit speed is at least 200 rpm higher than the engagement speed.
it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to optimize the speed of the clutch based on the engagement and slipping of modified Hoffman/ BUXTON/ Hittmann/ Roetker/Smith, and thus the claimed clutch speed cannot be considered critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", where Hoffman/ BUXTON/ Hittmann/ Roetker /Smith teaches the general conditions of the claim in the prior art, including the same composition in all other respects and identical experimental data. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions." In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Therefore, after modification, the chainsaw would have the predetermined clutch engagement speed, above which the slip clutch assumes the engaged state, and to transit from the slip-enabling state to the lock-up state at a predetermined slip limit speed above which the slip clutch assumes the lock-up state, wherein the slip limit speed is at least 200 rpm higher than the engagement speed.
Claims 8 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hoffman et al. (US 20220241878 A1) in view of BUXTON et al. (US 20220410425 A1), Hittmann et al. (US 20120036722 A1) and Roetker (US 20220178066 A1) and further in view of Gilpatrick (US 20110017168 A1).
Regarding claim 8, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 1, but fails to disclose wherein the slip clutch is inertia actuated.
Gilpatrick teaches a weighted centrifugal clutch (212, figs. 1-2C, para 28) which is inertia actuated via an auxiliary flywheel (262, fig. 2C). ( see para 28)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hoffman/ BUXTON/ Hittmann/ Roetker by substituting the clutch with a centrifugal clutch as taught by Gilpatrick, so that a smooth engagement and disengagement can be achieved and the motor can be protected. Moreover, a soft start can be achieved as it engage only when input speed reaches a certain threshold, and disengages when the speed drops below that threshold.
Regarding claim 9, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 4, but fails to disclose the slip clutch is configured as a centrifugal clutch.
Gilpatrick teaches a weighted centrifugal clutch (212, figs. 1-2C, para 28).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hoffman/ BUXTON/ Hittmann/ Roetker by substituting the clutch with a centrifugal clutch as taught by Gilpatrick, so that a smooth engagement and disengagement can be achieved and the motor can be protected. Moreover, a soft start can be achieved as it engage only when input speed reaches a certain threshold, and disengages when the speed drops below that threshold.
Regarding claim 10, Hoffman/ BUXTON/ Hittmann/ Roetker / Gilpatric discloses the handheld battery-powered chainsaw (100) as modified according to claim 9, Gilpatric further discloses wherein the driven member (278,fig. 2C) comprises a clutch drum (266), and the drive member (254) comprises friction shoes (260, para 28) which are resiliently connected to each other by resilient elements (264, fig. 2C).
But Hoffman/ BUXTON/ Hittmann/ Roetker / Gilpatric fails to disclose the clutch drum having a diameter of between 60 mm and 90 mm, wherein each of the friction shoes (260) has a respective weight of between 30 g and 70 g, and each of the resilient elements (264) has a spring constant of between 35 nm/mm and 60 N/mm.
it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to optimize the diameter size of the clutch drum, weight of the friction shoes and spring constant of the resilient elements of modified Hoffman/ BUXTON/ Hittmann/ Roetker / Gilpatric, and thus the claimed clutch drum diameter size or friction shoe weight or spring constant cannot be considered critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", where Hoffman/ BUXTON/ Hittmann/ Roetker / Gilpatric, teaches the general conditions of the claim in the prior art, including the same composition in all other respects and identical experimental data. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions." In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Therefore, after modification, the chainsaw would have the clutch drum having a diameter of between 60 mm and 90 mm, wherein each of the friction shoes has a respective weight of between 30 g and 70 g, and each of the resilient elements has a spring constant of between 35 nm/mm and 60 N/mm.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hoffman et al. (US 20220241878 A1) in view of BUXTON et al. (US 20220410425 A1, Hittmann et al. (US 20120036722 A1) and Roetker (US 20220178066 A1) and further in view of Schmollngruber et al. (US 11273547 B2).
Regarding claim 13, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 1, Hoffman further discloses an output shaft (136, fig. 3) drivingly connected to the drive member of the slip clutch (164, fig. 7), but fails to disclose further discloses wherein the electric motor has a rotor configured to be rotated by a stator, the rotor having an outer rotor diameter, and the output shaft having a shaft diameter, wherein a ratio between the rotor diameter and the shaft diameter is between 2.5 and 4.8.
Schmollngruber teaches a rescue tool (figs. 1-4) wherein an electric motor (17, fig. 4d) has a rotor (32) configured to be rotated by a stator (31), the rotor (54) having an outer rotor diameter (e.g. 23, diameter of rotor 32, fig. 4d), and an output shaft (21, fig. 4a), the output shaft (21) having a shaft diameter (e.g. diameter of 21, fig. 4d).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hoffman/ BUXTON/ Hittmann/ Roetker by adding a rotor and a stator as taught by Schmollngruber, so that a compact design of the motor can be achieved so that the tool can be used in a confined locations.
But Schmollngruber fails to disclose wherein a ratio between the rotor diameter and the shaft diameter is between 2.5 and 4.8.
it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to optimize the diameter size of rotor and the output shaft of modified Hoffman/ BUXTON/ Hittmann/ Roetker / Schmollngruber, and thus the claimed rotor diameter and output diameter ratio cannot be considered critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", where Hoffman/ BUXTON/ Hittmann/ Roetker / Schmollngruber, teaches the general conditions of the claim in the prior art, including the same composition in all other respects and identical experimental data. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions." In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Therefore, after modification, the chainsaw would have wherein the electric motor has a rotor configured to be rotated by a stator, the rotor having an outer rotor diameter, and the output shaft having a shaft diameter, wherein a ratio between the rotor diameter and the shaft diameter is between 2.5 and 4.8.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Hoffman et al. (US 20220241878 A1) in view of BUXTON et al. (US 20220410425 A1), Hittmann et al. (US 20120036722 A1) and Roetker (US 20220178066 A1) and further in view of Braun et al. (US 20200269409 A1).
Regarding claim 15, Hoffman/ BUXTON/ Hittmann/ Roetker discloses the handheld battery-powered chainsaw (100) as modified according to claim 1, but fails to disclose a mechanical brake arrangement movable between a braking position, in which the mechanical brake arrangement is configured to engage with the transmission arrangement to brake the rotation of the driven member, and a released position, in which the driven member is free to rotate.
Braun teaches a similar kind of chainsaw (10, figs. 1-10) wherein a mechanical brake arrangement (16, fig. 2, para 31) movable between a braking position, in which the mechanical brake arrangement (16) is configured to engage with the transmission arrangement (26, fig.2) to brake the rotation of the driven member (24), and a released position, in which the driven member (24) is free to rotate.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hoffman/ BUXTON/ Hittmann/ Roetker by adding a brake arrangement as taught by Braun, so that a safely measure can be obtained in a case of an abrupt operation of the chainsaw so that the chains can be stopped as needed.
Allowable Subject Matter
Claims 53 and 55-56 are allowed. The following is an examiner’s statement of reasons for allowance:
Regarding claim 53, the prior art does not disclose or render obvious wherein in response to the slip clutch remaining at a slip limit speed for a time limit exceed a limit time, the electric motor is disengaged, in combination with the other elements required by the claim.
For example, prior art of record
Shimizu et al. (US 20130180118 A1) discloses a method of controlling an electric motor (3) to selectively drive a saw chain (11, fig. 2) in a chainsaw (1) comprising a clutch (18, fig. 3), the method comprising: determining a state of the clutch (18); and based on the determined clutch state, adjusting a torque (e.g. torque of the electric motor) or rotational speed (e.g. speed of the motor 3) of the electric motor (3), and/or generating an alert to an operator of the chainsaw (11), (see para 32, fig. 5)
wherein determining a state of the clutch (18) comprises determining a present rotational speed of the electric motor (e.g. the present speed of the motor), but fails to disclose comparing the present rotational speed to a driven shaft speed and wherein in response to the slip clutch remaining at a slip limit speed for a time limit exceed a limit time, the electric motor is disengaged.
ITO et al. (US 20230256572 A1) teaches a method of controlling an electric motor (e.g. 4, fig. 1) comprising a clutch (WSC, fig. 1) wherein determining a state of the clutch (WSC) comprises determining a present rotational speed of the electric motor (4) and comparing the present rotational speed of the electric motor to a driven shaft speed (e.g. speed of shaft 34). (see abstract and para 29)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Shimizu by adding a slip state and adjusting the torque of the electric motor as taught by ITO, so that the stability of the clutch can be achieved by reducing an inertia shock at the time of clutch engagement, (see para 3 of ITO) therefore enhance the drivability of the chainsaw.
Claims 55-56 are allowed as they depend on claim 53.
Remarks and Response
Applicant's arguments filed on 05/21/2026 have been fully considered but they are not fully persuasive per the reasons set forth below.
Applicant arguments “ In this regard, the Examiner alleges that Hittman teaches a similar kind of chainsaw. This is incorrect. MPEP Section 2143.01 V states that "If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, there may be no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) " Therefore, the positioning of the slip clutch in Hittman would be unsatisfactory for the present invention, because of their significant different in purpose, structure, and functionalities. In this regard, Hittmann discloses a hedge trimmer, which is an unrelated product, and the clutch on a hedge trimmer has an entirely different purpose than the slip clutch on a chainsaw. On a hedge trimmer, the clutch is there to disengage the motor if the cutting deck is blocked to prevent damage to the motor. Contrastingly, on a chainsaw, the clutch is there to allow the motor to run without the chain spinning (e.g. for cooling the motor) and to prevent stalling of the motor when it gets bogged down due to too much load on the chain. Therefore, it would be unsatisfactory to combine the slip clutch of Hittman into the present invention. This is not persuasive. The specification of Hittmann discloses in para 17 that “FIG. 1 shows an embodiment of a hand-held power tool in the form of a hedge trimmer 1. The proposed configuration of a drive pinion can advantageously be used also in connection with other power tools such as motor chainsaws, cut-off machines, trimmers or the like. An especially advantageous configuration results when used in connection with a hedge trimmer 1.” Therefore, it is not an unrelated product. Therefore, examiner respectfully disagrees.
Furthermore, MPEP Section 2143.01 VI states that "If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, the teachings of the references are not sufficient to render the claims prima facie obviousness." In this regard, the modification of the slip clutch of a Hittman and the present invention would severely modify Hittman, due to the aforementioned distinct, completely opposite functions of the slip clutches in each invention. This is not persuasive. The Hittmann reference has been used for cooling fan and how the clutch is positioned on a first axial side of the motor. Since it has been held that rearranging parts of an invention involves only routine skill in the art while the device having the claimed dimensions would not perform differently than the prior art device, In re Japikse, 86 USPQ 70 and since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, In re Einstein, 8 USPQ 167. (MPEP 2144.04). Therefore, examiner respectfully disagrees.
Additionally, the Examiner cites Roetker as disclosing the cooling fan with a second-end connection interface where the second-end connection interface is a keyed interfqace to rotationally lock the output shaft to the cooling fan. However, MPEP Section 2104.03 IV states that, "The references relied upon teach that all aspects of the claimed invention were individually known in the art is not sufficient to establish a prima facie case of obviousness without some objective reason to combine the teachings of the references. Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993)." In this regard, one of skill in the art would have no objective reason to combine Roetker and the present invention. Roetker discloses a fan on washing machine, where the fan is keyed on the motor shaft. Roetker discloses no slip clutch. Washing machines are very remote, distant technical field to chainsaws, and thus the presence of the clutch within the chainsaw arrangement would require significant redesign to be implemented. Accordingly, for the reasons stated above, Applicants respectfully submit that independent claim 1 is patentable over Hoffman, Hittmann, and Roetker, alone or in combination. This is not persuasive. The Roetker reference has been used for a keyed interface to rotationally lock the output shaft to the cooling fan. Therefore, examiner respectfully disagrees.
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 FARHANA PERVIN whose telephone number is (571)272-4644. The examiner can normally be reached Mon-Fri 7:30-5:00.
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/FARHANA PERVIN/Examiner, Art Unit 3655
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