DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16th, 2013 is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Sheet
The information disclosure statement (IDS) submitted on 05/08/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 24 is objected to because of the following informalities:
Claim 24 recites, “…wherein a housing element of the housing has a coating region is connected both to…” However, it appears that the claim should instead recite, “…wherein a housing element of the housing has a coating region that is connected both to…” or some variation thereof.
Appropriate correction is required.
Claim Rejections – 35 USC §112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
Claims 23-24 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.
Regarding claim 23, the claim recites that the connector is “formed by an electrically conductive coating.” The specification, while mentioning the possibility of a coating as an alternative, fails to reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Specifically, the claim requires that the coating act as a “connector” between the stator and the transmission housing. A “coating” is structurally distinct from a “connector” in that a coating is an integral layer on a surface, whereas a connector bridges distinct components. The specification does not describe the structural interface necessary for a surface coating to bridge the physical separation between the stator and the transmission housing. Mere mention of a “coating” in the specification does not demonstrate possession of the specific structural arrangement required to make that coating function as a connector. Thus, the disclosure lacks the necessary descriptive detail to show that the inventor truly inventor a “coating-based connector” rather than merely listing as an alternative possibility to a separate physical structure. See MPEP 2163(I); Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010).
Regarding claim 24, this claim is also rejected under 35 USC 112(a) due to its dependence upon rejected claim 23.
Claim Rejections – 35 USC §112(b)
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.
Claims 12-25 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 pre-AIA the applicant regards as the invention.
Regarding claim 12, the claim recites the subject matter, “A hand-held power tool comprising… a tool operatively connectable to the power tool…” This limitation is indefinite because it creates a logical contradiction regarding the scope of the claimed invention. By using the transitional phrase “comprising,” the claim requires the “tool” to be a component of the “hand-held power tool.” However, the claim subsequently describes this “tool” as being “connectable to the power tool,” implying that the “tool” is separate from the “power tool” itself. An element cannot be both a constituent part of the whole device and an external object to the whole device simultaneously. For purposes of examination, the “tool” will be interpreted as a separate object connectable to the “power tool.” To overcome this rejection, clarification whether the “tool” is a tool holder or a working implement, and the language as to how the “tool” is connectable be clarified.
Regarding claim 19, the term “loosely” is a relative term which renders the claim indefinite. The term “loosely” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, the specification does not appear to provide a standard for measuring that degree (e.g. a specific tolerance range, a type of mechanical fit, or a decibel level of vibration). Without such a standard, one of ordinary skill in the art would not know the metes and bounds of what constitutes a “loose” cooperation versus a “tight” or “standard” cooperation. For purposes of examination, this term will be interpreted as any connection between the connector and the stator & transmission housing. To overcome this rejection, the term “cooperates loosely” should be replaced with a specific structural definition found in the specification.
Regarding claim 23, where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Claim 23 recites a “connector is formed by an electrically conductive coating.” The term “coating” commonly refers to a layer of material covering a surface. However, the claim requires this “coating” to perform the function of a “connector” that bridges the stator and the transmission housing (claimed in claim 12), which are two distinct components. It is unclear if the scope of the claim is limited to: (1) a traditional surface coating that relies on direct physical contact between the housing and the stator where the “connector” is actually the interface, or (2) a structural material that spans a physical gap. Because the claim uses the term “coating” in a manner that appears inconsistent with its ordinary meaning, the scope of the claim is uncertain. Claim 24 is rejected under 35 USC 112(b) for the same reason.
Regarding claim 24, the limitation "the housing element" in line 24 lacks sufficient antecedent basis. Claim 12, upon which claim 24 ultimately depends, recites “a housing” in lieu of “a housing element.”
Regarding claims 13-18, 20-22, and 25, these claims are also rejected under 35 USC 112(b) due to their dependence upon rejected claims above.
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 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 12-21 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furuta (US 6,213,224).
Regarding claim 12, Furuta discloses a hand-held power tool (Figure 1, #1) comprising:
a drive (Figure 1, #6) having a rotor and a stator (Figures 1 and 2, #6), a tool (Figure 2, #23) operatively connectable to the power tool via the drive and actuatable via a transmission (Figure 2, #7) having a transmission housing (Figures 1 and 2, #8, #9, #15);
a housing (Figure 1, #8, #9), the drive and the transmission being arranged in the housing (Shown in figure 2); and
an electrically conductive connector electrically conductively connecting the stator of the drive to the transmission housing (Figures 1-2 illustrate a plurality of screws which connect the stator of the drive device #6 to the transmission housing #8, #9, #15. Col 3, line 52 - col 4, line 9 describes that the identified transmission housing is formed from a metal material. Therefore, the screws act as an electrically conductive connector which electrically conductively connect the stator of the drive to the transmission housing).
Regarding claim 13, Furuta further discloses wherein the connector is operatively connectable to a housing element of the housing (Illustrated in figures 1-2, wherein the screws connect to a housing element #8 of the housing).
Regarding claim 14, Furuta further discloses wherein the connector has a first connecting region for cooperating with the stator (Shown in figures 1-2, the ends of the screws), wherein the first connecting region is embodied with at least one resilient region (Shown in figures 1-2, with the resilient region holding the head of the screw shown in figure 2 at element #8).
Regarding claim 15, Furuta further discloses wherein the at least one resilient region includes two resilient regions (Shown in figure 2).
Regarding claim 16, Furuta further discloses wherein the connector has a second connecting region for cooperating with the transmission housing (Shown in figures 1-2, the ends of the screws), wherein the second connecting region is embodied with at least one resilient region (Shown in figures 1-2, with the resilient region holding the head of the screw shown in figure 2 at element #8).
Regarding claim 17, Furuta further discloses wherein the at least one resilient region includes two resilient regions (Shown in figure 2).
Regarding claim 18, Furuta further discloses wherein the second connecting region (Shown in figures 1-2, the ends of the screws) is positioned so as to be angled outwards in a radial direction in a region facing forwards in a longitudinal direction of the power tool in an assembled state of the power tool (Figure 2 illustrates that the identified second connecting region {region around screw shown roughly at #8} is located in a region angled radially outwards from a longitudinal direction).
Regarding claim 19, Furuta further discloses wherein the connector has resilient regions (Figure 2, #8) and cooperates loosely with the stator and the transmission housing, respectively, via the resilient regions in an assembled state of the power tool (Illustrated in figure 2).
Regarding claim 20, Furuta further discloses wherein the connector has, between a first connecting region for cooperating with the stator (Figure 2, end of screw shown roughly near element #8 at stator #6 side of figure) and a second connecting region for cooperating with the transmission housing (Figure 2, head of screw), a supporting region supported on an element of the power tool in an assembled state of the power tool (Figure 2, #8).
Regarding claim 21, Furuta further discloses wherein the housing element of the housing has at least one contact region for positioning the connector (Figure 2 illustrates that the shape of the housing element #8 has a contact region for positioning the connector - the region where the head of the screw seats against element #8).
Regarding claim 25, Furuta further discloses wherein the housing has two lateral housing shells and a front housing element connected releasably to the housing shells (The abstract describes the housing as two casing halves #4/#5).
Claim Rejections – 35 USC §103
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.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Furuta in view of Schmuck (US 3,813,567).
Regarding claim 22, Furuta does not specifically wherein the connector is embodied with an electrically conductive cable connected to the stator at one end and to the transmission housing at the other end.
Schmuck teaches wherein the connector is embodied with an electrically conductive cable (Figures 2 and 3, #19) connected to the stator (Figures 2 and 3, #7) at one end and to the transmission housing at the other end (Figures 2 and 3 illustrate that the stator is connected to a housing).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Furuta to incorporate the teachings of Schmuck to include an electrically conductive cable connected to the stator and the housing with the motivation of providing electrical connection within the power tool in such a way that enables easy replacement of parts, as recognized by Schmuck in col 2, lines 1-12.
Allowable Subject Matter
If the above rejections under 35 USC 112(a) and 35 USC 112(b) are overcome, claims 23-24 would be objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Clarkson (US 20110017473A1), Riedl (US 20070001536A1), Kutsuna (US 20200177047A1), and Brueck (US 20190075639A1) all teach relevant aspects of power tools relating to connections between a drive element and a housing.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB A SMITH whose telephone number is (571) 272-3974 and email address is Jacob.Smith@uspto.gov. The examiner can normally be reached on M-F 7:30AM - 5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at (571) 270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB A SMITH/Examiner, Art Unit 3731