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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: Paragraph [0061] of the instant specification recites first aperture 31a and second aperture 31b, however, these reference signs are not found in the figures. 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. 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 Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites “elongated first and second elongate chambers”. It is suggested to remove one of “elongated” or “elongate”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 5 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.
Claim 5 recites the limitation "the first and second connection elements" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the “first and second connection elements” are interpreted as the first and second connectors recited in claim 4.
Claim 5 states “wherein the holding and receiving apparatus includes elongated first and second elongate chambers, each of the first and second connection elements positionable into the chambers with an associated compensator of the at least one compensator”. The phrase “an associated compensator of the at least one compensator” is confusing. It is not clear how a compensator can be associated with the at least one compensator. Is the “associated compensator” a different compensator from the “at least one compensator”?
The phrase “positionable respectively in the first and second chamber” is unclear. The phrase positionable indicates that the connection element (i.e. connector) only be capable of positioning in one of the chambers but does not positively require such a location. It is not clear how a connector can be positionable such that it can be inside a chamber but not be required to be in the chamber.
The phrase “is movable reversibly in a direction relative to the respective first or second chamber via the associated compensator” is unclear. No orientation of the chambers is given such that a direction relative to the chambers has any meaning. In other words, any direction of movement is a direction relative to the chambers.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 4-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-5 of copending Application No. 18/706822 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of the copending application includes all the limitations recited in instant claims 4 and 5. Claim 6 corresponds to claim 4 of the reference application such that the connectors are offset from each other which is taken to include the connecting ends and selection of at least two of the first, second, and third connectors obviates selection of the third from the first and second. Claim 7 corresponds to claim 5 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0094329 (Meixner) (cited on IDS filed 06/27/2024) in view of WO 2013/186047 (Burger).
Regarding claims 4 and 7, Meixner discloses a power tool having a removable battery pack (6). The battery pack comprises a power supply unit (7) comprising power storage cells, and a connection apparatus (12) which comprises first, second and third connectors (23, 25, 27) as well as a fourth connector (29). A holding and receiving device (13) holds the connectors. The connectors each have a spring which functions as a compensator. Regarding the limitation that the connectors are connected to the holding and receiving apparatus via the compensator, Meixner states that the springs are positioned such that they press the connectors against a direction Z and compensates relative movement in direction A-B when the power tool is in use. The springs are connectors and springs are provided inside contact chambers in such a way that the spring force of the springs (50) presses connectors against the Z direction and compensate movement in the A-B directions [0040-0041, 0043]. Thus, the springs compensate the relative movement between the connectors and the holding device in the direction A-B (pressing against Z direction) which indicates a relative movement between the connectors and the holding and receiving apparatus such that a connection is present between the springs and connectors. The claims do not require a physical connection per se, only that the connection is one that results in relative movement between the connectors and the holding and receiving apparatus. As Meixner discloses such a compensation movement, the connection is considered met.
Meixner does not disclose wherein the first and second connectors are connected to the third connector in such a way that a relative movement in at least one direction between the third connector and the holding and receiving apparatus can be compensated for. Meixner discloses multiple connectors and further discloses springs to compensate movement of individual connectors. Burger shows another configuration for a battery pack for supplying power to a tool. Burger discloses compensation between a contact holder (36) that holds multiple connectors. The connectors are mounted together such that they are considered connected to one another via a clamping bar (42) via strands (40). Burger then provides springs (52) that move the contact holder (36), thereby moving the connectors together based upon their mutual connection. Note that the claims do not preclude connection between all of the connectors. It would have been obvious to provide the contact holder movement configuration of Burger to move the holding and receiving device (13) of Meixner thereby providing relative movement of the contacts of the power tool and mating contacts are prevented in the millimeter range, thereby providing minimal movement.
Regarding claim 5, Meixner discloses chambers for holding contacts 27, 29, 23 and 25 [0041]. The chambers hold both the spring elements and the contacts (poles or contact blades) and are considered elongate inasmuch as the term is defined for holding both structures. As discussed above, Meixner discloses compensators (springs) for each contact rendering the contacts movable in the Z-direction (Figures 2- 3) or A-B direction (Figure 2).
Regarding claim 6, Meixner discloses an offset arrangement of the connectors for at least 2 of the 3 connectors [0038].
Claim(s) 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2013/186047 (Burger) in view of US 2020/0094329 (Meixner) (cited on IDS filed 06/27/2024).
Alternative to the rejection over Meixner in view of Burger above, it would have been obvious to modify Burger in view of Meixner. Burger discloses the configuration disclosed above where the contact holder provides compensation to the connectors but does not disclose compensators for individual connectors. However, Burger does disclose that the electrical contacts 31 can move in receiving space 37 along the insertion direction 25. The receiving spaces are considered chambers that hold the connectors (contacts). Burger does not disclose a means by which these contacts can move within the receiving spaces in the direction 25. Meixner discloses connectors (23, 25, 27, and 29) that are positioned inside chambers in a manner similar to Burger and further discloses springs (50) positioned in the contact chambers such that the contacts are movable in the Z direction [0041]. It would have been obvious to provide springs in the receiving spaces 37 of Burger to provide the movement in the direction 25 as Meixner discloses means for achieving movement of contacts inside a chamber in the same direction. Thus, one of ordinary skill would have found it obvious to use the known means of a spring to provide the movement described by Burger with a reasonable expectation of success. Regarding claim 6, Meixner discloses an offset configuration for the connectors and it would have been obvious to provide a similar configuration to Burger as demonstrated by Meixner of a known and useful configuration for a battery connection device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1723
/Jennifer McNeil/ Primary Examiner, Art Unit 1723
Prosecution Insights