DETAILED ACTION
Claims 1-23 of U.S. Patent Application No. 18/716,883, filed on 5 June, 2024, were presented for examination, and are currently pending in the application.
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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 14 June, 2024, 18 September, 2025, and 22 January, 2026, were filed before the mailing date of this Office Action. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings are objected to because in both fig. 6 and fig. 7, the WBG inverter is labeled “204” while in the other drawings and in the written description the WBG inverter is ref. # 245. The Examiner believes that all that is needed is substitute drawings of figs. 6-7 to be submitted with the number “204” replaced with “245”. It is noted that figs. 6-7 form the bases for claims 4-8.
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.
Specification
The disclosure is objected to because of the following informalities:
¶ 0001 makes reference to the U.S. Provisional Patent Applications but not the PCT Application (PCT/US2022/081154). The Examiner requests that the PCT Application be mentioned as well.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 1-3, 11-12, and 17-18, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Omori (JP 2009166157 A – reference provided with machine translation).
With respect to claim 1, Omori teaches a power tool (see first two lines of the abstract) comprising:
a motor [2] (see abstract and annotated excerpts of figs. 1 and 4, attached below);
a power source [battery pack 9]; and
a printed circuit board "PCB" [4] (see ¶ 0036 which recites “the inverter circuit board 4 is constituted by a printed circuit board…”) electrically connected to the motor [2] and the power source [9] {see ¶ 0030 which recites “the battery pack 9 is electrically connected to supply driving power to a control circuit device 22 (see Fig. 4)… and to supply driving power to an inverter circuit unit including an inverter circuit board” and also see fig. 4, which broadly shows the electrical circuit}, the PCB [4] mounted to the motor [2] (in fig. 1 they are shown abutting and since they are encased in a housing with nothing between them, they are mutually mounted one to the other – also, see fig. 2 below in the rejection of claim 2),
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the PCB [4] including a plurality of wide band gap semiconductor switches [SiC switches 5] configured as an inverter [4/5] for controlling power supplied by the power source [9] to the motor [2] {see ¶ 0030, 0036, and 0038 – also, the abstract recites “the semiconductor switching elements 5 are constituted of SiC…” and ¶ 0036 recites “the semiconductor switching element 5 is constituted by a silicon carbide (SiC) semiconductor…” – Silicon Carbide is a well-known wide band gap semiconductor}.
With respect to claim 2/1, Omori teaches the tool of claim 1, and further teaches wherein the motor [2] includes a frame (the Examiner has labeled the frame in the annotated excerpt of fig. 2 below), and wherein the PCB [4] is mounted directly to the frame.
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With respect to claim 3/2/1, Omori teaches the tool of claim 2, and further teaches wherein the motor [2] is configured to act as a heat sink for the inverter [4/5] (as they are physically abutting, heat will necessarily flow from the inverter to the motor if the former is hotter than the latter).
With respect to claim 11/1, Omori teaches the tool of claim 1, and further teaches wherein the motor is configured to rotate at 75,000 rotations per minute or more.
Omori’s motor is inherently configured to rotate at 75,000 rpm because the structure is identical to the claimed structure and comprising WBG switches. Although such high rpms are not advertised in the reference, the inherency is based firstly on MPEP 2112(I) which states “something which is old does not become patentable upon the discovery of a new property…. the discovery of a previously unappreciated property of a prior art composition does not render the old composition patentably new to the discoverer…” and secondly on MPEP 2112(II) which states “inherent feature need not be recognized at the relevant time… there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference”. Omori, by teaching the structure of claim 1, including wide band gap semiconductor switches, is indeed configured to operate at over 75,000 rpm. This inherent characteristic necessarily flows from the teachings of the prior art because this is a capability of the motor, and provided the motor taught by Omori with its wide band gap semiconductor switches, the capability is achievable based on the written description of the instant application, whose ¶ 0048 recites “employing the WBG inverter 245 enables higher speed motor operation (e.g., 75,000 to 100,000 revolutions per minute [RPM] or more…”. If Omori’s invention is, according to the instant application, enabled such speeds by having the WBG inverter, then it is inherently configured to operate at them.
The relevant sections of the MPEP 2112 are:
SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY -- "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id.
INHERENT FEATURE NEED NOT BE RECOGNIZED AT THE RELEVANT TIME -- There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) ("[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention."); Abbott Labs v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999) ("If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics."); Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1348-49, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) ("Because ‘sufficient aeration’ was inherent in the prior art, it is irrelevant that the prior art did not recognize the key aspect of [the] invention.... An inherent structure, composition, or function is not necessarily known."); SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343-44, 74 USPQ2d 1398, 1406-07 (Fed. Cir. 2005) (holding that a prior art patent to an anhydrous form of a compound "inherently" anticipated the claimed hemihydrate form of the compound because practicing the process in the prior art to manufacture the anhydrous compound "inherently results in at least trace amounts of" the claimed hemihydrate even if the prior art did not discuss or recognize the hemihydrate); In re Omeprazole Patent Litigation, 483 F.3d 1364, 1373, 82 USPQ2d 1643, 1650 (Fed. Cir. 2007) (The court noted that although the inventors may not have recognized that a characteristic of the ingredients in the prior art method resulted in an in situ formation of a separating layer, the in situ formation was nevertheless inherent. "The record shows formation of the in situ separating layer in the prior art even though that process was not recognized at the time. The new realization alone does not render that necessary [sic] prior art patentable.").
With respect to claim 12/11/1, Omori teaches the tool of claim 11, and further teaches wherein the motor is configured to rotate at 100,000 rotations per minute or more.
Ommori, by teaching a WBG inverter and the other limitations of claim 1, is inherently configured to rotate at 100,000 rpms. As the inherency rationale for maintaining this rejection is identical to that of claim 11, to avoid overly lengthening this Office Action the Examiner will omit it and refer Applicant to the rejection of claim 11 above.
With respect to claim 17, Omori teaches a power tool (see first two lines of the abstract) comprising:
a motor [2] (see abstract and annotated excerpts of figs. 1 and 4, attached below) configured to rotate at 75,000 rotations per minute or more {Omori’s motor is inherently configured to rotate at 75,000 rpm because the structure is identical to the claimed structure. Although such high rpms are not advertised in the reference, the inherency is based firstly on MPEP 2112(I) which states “something which is old does not become patentable upon the discovery of a new property…. the discovery of a previously unappreciated property of a prior art composition does not render the old composition patentably new to the discoverer…” and secondly on MPEP 2112(II) which states “inherent feature need not be recognized at the relevant time… there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference”. Omori, by teaching the wide band gap semiconductor switches, is indeed configured to operate at over 75,000 rpm. This inherent characteristic necessarily flows from the teachings of the prior art because this is a capability, not a structural or electrical element, of the motor, and provided the motor taught by Omori with its wide band gap semiconductor switches, the capability is achievable based on the written description of the instant application, whose ¶ 0048 recites “employing the WBG inverter 245 enables higher speed motor operation (e.g., 75,000 to 100,000 revolutions per minute [RPM] or more…”. If Omori’s invention is, according to the instant application, enabled such speeds by having the WBG inverter, then it is inherently configured to operate at them – relevant sections of the MPEP have been pasted above in the rejection of claim 11};
a power source [battery pack 9]; and
a printed circuit board "PCB" [4] (see ¶ 0036 which recites “the inverter circuit board 4 is constituted by a printed circuit board…”) electrically connected to the motor [2] and the power source [9] {see ¶ 0030 which recites “the battery pack 9 is electrically connected to supply driving power to a control circuit device 22 (see Fig. 4)… and to supply driving power to an inverter circuit unit including an inverter circuit board” and also see fig. 4, which broadly shows the electrical circuit},
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the PCB [4] including:
a plurality of wide band gap semiconductor switches [SiC switches 5] configured as an inverter [4/5] for controlling power supplied by the power source [9] to the motor [2] {see ¶ 0030, 0036, and 0038 – also, the abstract recites “the semiconductor switching elements 5 are constituted of SiC…” and ¶ 0036 recites “the semiconductor switching element 5 is constituted by a silicon carbide (SiC) semiconductor…” – Silicon Carbide is a well-known wide band gap semiconductor}.
With respect to claim 18/17, Omori teaches the tool of claim 17, and further teaches wherein the motor [2] includes a frame (the Examiner has labeled the frame in the annotated excerpt of fig. 2 below), and wherein the PCB [4] is mounted directly to the frame.
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With respect to claim 22/17, Omori teaches the tool of claim 17, and further teaches wherein the PCB [4] is mounted directly to the motor [2] (still referring to the annotated excerpt of fig. 2 above).
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.
Claims 4-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Omori in view of Beyerl (US 2021/0242731 A1).
With respect to claim 4/1, Omori teaches the tool of claim 1, but omits teaching a heat sink, wherein the PCB is mounted to the heat sink and the heat sink is mounted to motor.
Beyerl discloses a PCB [46] mounted axially and coaxially with a motor [34] wherein the PCB comprises semiconductor elements [140] which generate heat (see ¶ 0052).
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Beyerl teaches a heat sink [40], wherein the PCB [46] is mounted to the heat sink [40] and the heat sink [40] is mounted to motor [34] (see ¶ 0034, 0047, and 0049).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori, while incorporating a heat sink between the PCB and motor, as taught by Beyerl, in order to remove thermal energy from the PCB and direct the thermal energy away from the stator body (Beyerl ¶ 0054).
With respect to claim 5/4/1, Omori in view of Beyerl teaches the tool of claim 4, Beyerl further teaches wherein the heat sink [40] is air cooled {see ¶ 0053 which recites “the cooling flanges 126 of the heat sink 40 include airflow apertures… …the airflow apertures 154 within the cooling flanges 126 allow for a cooling airflow generated by the impeller 148 to pass through and over the heat sink 40 to improve thermal energy removal…”}.
With respect to claim 7/1, Omori teaches the tool of claim 1, but omits teaching a heat plate connected to the motor.
Beyerl discloses a PCB [46] mounted axially and coaxially with a motor [34] wherein the PCB comprises semiconductor elements [140] which generate heat (see ¶ 0052).
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Beyerl teaches a heat plate [heat sink 40] connected to the motor [34] (see ¶ 0034, 0047, and 0049).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori, while incorporating a heat plate connected to the motor, as taught by Beyerl, in order to remove thermal energy from the PCB and direct the thermal energy away from the stator body (Beyerl ¶ 0054).
Claims 4, 6, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Omori in view of Sheeks (US 2019/0044110 A1).
With respect to claim 4/1, Omori teaches the tool of claim 1, but omits teaching a heat sink, wherein the PCB is mounted to the heat sink and the heat sink is mounted to motor.
Sheeks discloses a PCB [42] mounted axially and coaxially with a motor [42] wherein the PCB comprises semiconductor switches [272] which generate heat (see ¶ 0136 and 0166-0167).
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Sheeks teaches a heat sink [256], wherein the PCB [42] is mounted to the heat sink [256] and the heat sink [256] is mounted to the motor [34] (see ¶ 0159 and 0162-0163).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori, while incorporating a heat sink between the PCB and motor, as taught by Sheeks, so that heat generated by the power circuit board (e.g., heat generated by the switches) is transferred by conduction to the heat sink where it is subsequently dissipated (Sheeks ¶ 0167).
With respect to claim 6/4/1, Omori in view of Sheeks teaches the tool of claim 4, Sheeks further teaches input capacitors [288], wherein the input capacitors [288] and inverter [switches 272] are mounted on the same side of the PCB [248] {see fig. 4 and 24 and ¶ 0167 which recites “the switches 272 and capacitors 288 associated with the power circuit board 248 are positioned on the second surface 284. The first surface 280 is held in contact with the heat sink 256 such that heat generated by the power circuit board 248 (e.g. heat generated by the switches 272) is transferred by conduction to the heat sink 256 where it is subsequently dissipated…” – it is noted that ¶ 0167 and fig. 4 are discussing a supplemental embodiment, and using different reference numerals – the elements are shown in figs. 3-4, but they are not discussed in detail – however it is clear that all of the electronics are on the opposite side of the PCB from the heat sink}.
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With respect to claim 19/17, Omori teaches the tool of claim 17, but omits teaching a heat sink, wherein the PCB is mounted to the heat sink and the heat sink is mounted to motor.
Sheeks discloses a PCB [42] mounted axially and coaxially with a motor [42] wherein the PCB comprises semiconductor switches [272] which generate heat (see ¶ 0136 and 0166-0167).
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Sheeks teaches a heat sink [256], wherein the PCB [42] is mounted to the heat sink [256] and the heat sink [256] is mounted to the motor [34] (see ¶ 0159 and 0162-0163).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori, while incorporating a heat sink between the PCB and motor, as taught by Sheeks, so that heat generated by the power circuit board (e.g., heat generated by the switches) is transferred by conduction to the heat sink where it is subsequently dissipated (Sheeks ¶ 0167).
Claims 7-8 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Omori in view of Sakagami (JP 2009056556 A – reference provided with machine translation).
With respect to claim 7/1, Omori teaches the tool of claim 1, but omits teaching a heat plate connected to the motor.
Sakagami discloses a power tool [20] having an internal motor [22] within the housing [21] of the power tool.
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Sakagami teaches a heat plate connected to the motor [22] (the heat plate is the “one end” of heat pipe 40 that contacts the motor, which the Examiner has labeled above – see translation, ¶ 0033, which recites “one end of the heat pipe 40 is connected to the motor 22, which is the high-temperature portion in the main body housing. The other end side of the heat pipe 40 is connected to an inner surface of a portion that is a part of the main body housing…”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori, while utilizing a heat pipe system, and thus also a heat plate connected to the motor, as taught by Sakagami, such that the heat of the motor is quickly transmitted to the main body housing (Sakagami ¶ 0033).
With respect to claim 8/7/1, Omori in view of Sakagami teaches the tool of claim 7, Sakagami further teaches (still referring to the annotated excerpt of fig. 5 above) wherein the heat plate (the “one end” of the heat pipe) is connected to a heat pipe (the middle, bent portion of the heat pipe”) and the heat pipe is connected to a heat sink (the “other end” of the heat pipe – see translation, ¶ 0033, which recites “one end of the heat pipe 40 is connected to the motor 22, which is the high-temperature portion in the main body housing. The other end side of the heat pipe 40 is connected to an inner surface of a portion that is a part of the main body housing…”). Although the three separate components of a heat pipe system (the heat plate, pipe, and sink) are not separately labeled or discussed, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention that Sakagami isn’t just teaching a simple pipe, and that the three separate components are required, since the term “heat pipe” has inherent connotations. Even if Sakagami only does teach just a pipe, the claim language is broad enough to include the labels placed in fig. 5 by the Examiner, because the term “heat plate” does not preclude interpretation as the end of the pipe system touching the motor and/or the interface between that end and the motor/stator, and the word “heat sink” does not preclude interpretation as the end of the pipe system touching the housing, and/or the contact between that end and the housing, and/or the housing itself.
With respect to claim 20/17, Omori teaches the tool of claim 17, but omits teaching a heat plate connected to the motor, wherein the heat plate is connected to a heat pipe and the heat pipe is connected to a heat sink.
Sakagami discloses a power tool [20] having an internal motor [22] within the housing [21] of the power tool.
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Sakagami teaches a heat plate connected to the motor [22] (the heat plate is the “one end” of heat pipe 40 that contacts the motor, which the Examiner has labeled above – see translation, ¶ 0033, which recites “one end of the heat pipe 40 is connected to the motor 22, which is the high-temperature portion in the main body housing. The other end side of the heat pipe 40 is connected to an inner surface of a portion that is a part of the main body housing…”).
Sakagami further teaches (still referring to the annotated excerpt of fig. 5 above) wherein the heat plate (the “one end” of the heat pipe) is connected to a heat pipe (the middle, bent portion of the heat pipe”) and the heat pipe is connected to a heat sink (the “other end” of the heat pipe – see translation, ¶ 0033, which recites “one end of the heat pipe 40 is connected to the motor 22, which is the high-temperature portion in the main body housing. The other end side of the heat pipe 40 is connected to an inner surface of a portion that is a part of the main body housing…”). Although the three separate components of a heat pipe system (the heat plate, pipe, and sink) are not separately labeled or discussed, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention that Sakagami isn’t just teaching a simple pipe, and that the three separate components are required, since the term “heat pipe” has inherent connotations. Even if Sakagami only does teach just a pipe, the claim language is broad enough to include the labels placed in fig. 5 by the Examiner, because the term “heat plate” does not preclude interpretation as the end of the pipe system touching the motor and/or the interface between that end and the motor/stator, and the word “heat sink” does not preclude interpretation as the end of the pipe system touching the housing, and/or the contact between that end and the housing, and/or the housing itself.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori, while utilizing a heat pipe system, and thus also a heat plate connected to the motor and a heat sink, as taught by Sakagami, such that the heat of the motor is quickly transmitted to the main body housing (Sakagami ¶ 0033).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Omori in view of Sakagami as applied to claim 8 above, and further in view of Kviberg (US 2019/0252945 A1).
With respect to claim 9/8/7/1, Omori in view of Sakagami teaches the tool of claim 8, Omori further teaches the motor and the PCB housed in a housing construction and Sakagami teaches the heat plate housed in a housing construction, but neither Omori nor Sakagami teaches wherein the internal components (motor/PCB/heat plate) housed in a fully-sealed construction.
Kviberg discloses a power tool comprising a motor [510] in a housing [501], wherein a heat pipe [520] is attached to the motor (see annotated excerpt of fig. 5 below and also ¶ 0042-0044) to transfer heat away from the motor.
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Kviberg teaches the housing as a fully sealed construction [encapsulation device 525] (see ¶ 0045 which recites “the motor unit 510 is encapsulated in an encapsulation device 525… making sure that dirt may not enter the motor unit 510…” and ¶ 0046 which recites “the cooling device 510 is arranged outside of the encapsulation device 525, wherein the heat pipe 520 passes through said encapsulation device 525…”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori in view of Sakagami, while incorporating a fully-sealed construction, despite the use of a heat pipe, as taught by Kviberg, in order that dirt is prevented from entering inside the motor unit (Kviberg ¶ 0045).
Claims 10 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Omori in view of Duva (US 2003/0099085 A1).
With respect to claim 10/1, Omori teaches the tool of claim 1, but omits teaching wherein the PCB includes at least one ceramic surface mount capacitor. Although Omori does not explicitly go into enough detail about its PCB (the reference being directed to the mechanical aspects of its tool) to explicitly state that it comprises capacitors, the Examiner takes Official Notice that capacitors are commonly used in modern tool-motor-driving PCB control units such as the one of Omori, as they effectively filter power and smooth voltage spikes.
Duva is directed to the art of applying capacitors to PCB’s, including improvements over leaded capacitors which take up too much space on the PCB (¶ 0004).
Duva teaches wherein the PCB includes at least one ceramic surface mount capacitor (see ¶ 0004 which recites “the importance of the physical size of surface mount components, such as multilayer ceramic chip capacitors. Smaller components yield higher component densities on the printed circuit boards….”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori, while incorporating capacitors on the PCB to filter power and smooth voltage spikes, using at least one ceramic surface mount capacitor on the PCB, as taught by Duva, in order that, due to the physical size of the surface mount ceramic capacitor, the smaller components can yield higher component densities on the PCB’s and in turn smaller electronic devices (Duva ¶ 0004).
With respect to claim 21/17, Omori teaches the tool of claim 17, but omits teaching wherein the PCB includes at least one ceramic surface mount capacitor. Although Omori does not explicitly go into enough detail about its PCB (the reference being directed to the mechanical aspects of its tool) to explicitly state that it comprises capacitors, the Examiner takes Official Notice that capacitors are commonly used in modern tool-motor-driving PCB control units such as the one of Omori, as they effectively filter power and smooth voltage spikes.
Duva is directed to the art of applying capacitors to PCB’s, including improvements over leaded capacitors which take up too much space on the PCB (¶ 0004).
Duva teaches wherein the PCB includes at least one ceramic surface mount capacitor (see ¶ 0004 which recites “the importance of the physical size of surface mount components, such as multilayer ceramic chip capacitors. Smaller components yield higher component densities on the printed circuit boards….”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori, while incorporating capacitors on the PCB to filter power and smooth voltage spikes, using at least one ceramic surface mount capacitor on the PCB, as taught by Duva, in order that, due to the physical size of the surface mount ceramic capacitor, the smaller components can yield higher component densities on the PCB’s and in turn smaller electronic devices (Duva ¶ 0004).
33. Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Omori in view of Liu (US 2023/0026670 A1).
With respect to claim 23/17, Omori teaches the tool of claim 17 but does not teach wherein the inverter is a five-level flying capacitor multilevel inverter. Although Omori does not explicitly go into enough detail about its PCB (the reference being directed to the mechanical aspects of its tool) to explicitly state that it comprises capacitors, the Examiner takes Official Notice that capacitors are commonly used in modern tool-motor-driving PCB control units such as the one of Omori, as they effectively filter power and smooth voltage spikes.
Liu discloses converters wherein the converters use switches such as IGBT’s, BJT’s, and MOSFET’s (¶ 0027), these switches being commonly used in motor inverters.
Liu discloses wherein the converter is a five-level flying capacitor multilevel inverter (see ¶ 0017 which recites “the present disclosure introduces the mechanisms, working principles, and control methods of flying capacitor type and five level type hybrid multilevel converters and rectifiers…”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori, while utilizing the five-level flying capacitor multilevel inverter, as taught by Liu, in order that the device number and capacitor size can be reduced significantly, resulting i8n smaller volume and construction cost (Liu ¶ 0017).
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Omori in view of Jiang (US 2019/0334024 A1).
With respect to claim 13, Omori teaches a power tool (see first two lines of the abstract) comprising:
a motor [2] (see abstract and annotated excerpts of figs. 1 and 4, attached below);
a battery pack interface [battery pack 9 and lower end portion of the handle housing portion 3b] configured to receive a battery pack [9] (see ¶ 0029); and
an inverter [inverter circuit board 4 and switches 5] (see abstract) electrically connected to the motor [2] and the battery pack interface [9/3a] {see ¶ 0030 which recites “the battery pack 9 is electrically connected to supply driving power to a control circuit device 22 (see Fig. 4)… and to supply driving power to an inverter circuit unit including an inverter circuit board” and also see fig. 4, which broadly shows the electrical circuit – also, see the description of switch portion 6a in the second half of ¶ 0007},
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the inverter [4/5] including a plurality of wide band gap semiconductor switches [5], the inverter [4/5] configured to control power supplied by the battery pack [9] to the motor [2] {see ¶ 0030, 0036, and 0038 – also, the abstract recites “the semiconductor switching elements 5 are constituted of SiC…” and ¶ 0036 recites “the semiconductor switching element 5 is constituted by a silicon carbide (SiC) semiconductor…” – Silicon Carbide is a well-known wide band gap semiconductor};
Omori omits explicit teaching wherein the plurality of wide band gap semiconductor switches have an energy band gap of about 3 electron volts (“eV”) or greater. Omori does teach the switches are SiC which is a well-known wide band gap semiconductor and which is also known to have a band gap lower cutoff of about 3.2 eV. Instead of taking Official Notice (for which there is ample evidence in the prior art to prove) that SiC has an energy band gap greater than about 3 eV, the Examiner has opted to provide a reference to show that a person of ordinary skill in the art before the effective filing date of the claimed invention would be aware that SiC has an energy band gap of about 3 eV or greater.
Jiang is directed to semiconductors, particularly Silicon-based transistors. Jiang in ¶ 0005 specifically recites “transistors made of wide-bandgap SiC (band gap: 3.26 eV) are the state of the arts…”. Thus, one of ordinary skill in the art, in making the tool of Omori, with its SiC switches, would use SiC with an energy band gap of 3.26 eV, and therefore greater than 3 eV, as taught by Jiang, to conform to the state of the art. Also, provided Jiang, a person of ordinary skill in the art would know that Omori’s switches inherently have an energy band gap of greater than about 3 eV, even though Omori omits explicit discussion of such a range.
With respect to claim 14/13, Omori in view of Jiang teaches the tool of claim 13, Omori further teaches wherein the motor [2] is configured to act as a heat sink for the inverter [4/5] (as they are physically abutting, heat will necessarily flow from the inverter to the motor if the former is hotter than the latter).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Omori in view of Jiang, as applied to claim 13 above, further in view of Sheeks (US 2019/0044110 A1).
With respect to claim 15/13, Omori in view of Jiang teaches the tool of claim 13, but neither reference teaches a heat sink, wherein the inverter is mounted to the heat sink and the heat sink is mounted to motor.
Sheeks discloses an inverter [42] mounted axially and coaxially with a motor [42] wherein the inverter comprises semiconductor switches [272] which generate heat (see ¶ 0136 and 0166-0167).
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Sheeks teaches a heat sink [256], wherein the inverter [42] is mounted to the heat sink [256] and the heat sink [256] is mounted to the motor [34] (see ¶ 0159 and 0162-0163).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori in view of Jiang, while incorporating a heat sink between the inverter and motor, as taught by Sheeks, so that heat generated by the inverter / power circuit board (e.g., heat generated by the switches) is transferred by conduction to the heat sink where it is subsequently dissipated (Sheeks ¶ 0167).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Omori in view of Jiang, as applied to claim 13 above, and further in view of Sakagami (JP 2009056556 A – reference provided with machine translation).
With respect to claim 16/13, Omori in view of Jiang teaches the tool of claim 13, but neither reference teaches a heat plate connected to the motor.
Sakagami discloses a power tool [20] having an internal motor [22] within the housing [21] of the power tool.
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Sakagami teaches a heat plate connected to the motor [22] (the heat plate is the “one end” of heat pipe 40 that contacts the motor, which the Examiner has labeled above – see translation, ¶ 0033, which recites “one end of the heat pipe 40 is connected to the motor 22, which is the high-temperature portion in the main body housing. The other end side of the heat pipe 40 is connected to an inner surface of a portion that is a part of the main body housing…”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the tool of Omori in view of Jiang, while utilizing a heat pipe system, and thus also a heat plate connected to the motor, as taught by Sakagami, such that the heat of the motor is quickly transmitted to the main body housing (Sakagami ¶ 0033).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2015/0249403 A1 teaches a five-level flying multilevel capacitor (example 1, see ¶ 0153) for adjusting capacitor voltages automatically, wherein the flying capacitor may have ceramic capacitors (¶ 0117) and wherein the transistors may be GaAs, SiC, and GaN, which are all wide band gap semiconductors.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL K SCHLAK whose telephone number is (703)756-1685. The examiner can normally be reached Monday - Friday, 9:30 am - 6:00 pm EST.
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/Daniel K Schlak/Examiner, Art Unit 2834
/OLUSEYE IWARERE/Supervisory Patent Examiner, Art Unit 2834
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