CTFR 18/725,347 CTFR 91082 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restrictions Newly submitted claims 16-17 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 16-17 recite “the support element is absorb impact forces acting on a rear region of the housing and to dissipate said impact force into the base plate” and “…absorb impact forces acting on the battery” (another word, the support element is made of a specific material for absorbing impact forces). The previously examined claims, for example the original claims 2 and 4 show a suction nozzle and a center of gravity of the jigsaw, have two-way distinction and a search burden compared to new claims 16-17. For example: The device of claims 2 and 4 does not require the absorb impact forces acting on the battery or on a rear region of the housing of claims 16-17, and conversely, the device of claims 16-17 does not require the suction nozzle of claim 2. Since applicant has received an action on the merits for the originally presented and elected invention, claims 16-17 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03. Drawings There are 18 figures have not been thoroughly checked to the extent necessary to determine the presence of all possible minor errors. For examples, the references “84, 86, 198”, Figure 1 are pointing to the same portion of the same part (are they referring the same thing with different names, right?); the reference “616”, Figure 15 are pointing to many different parts including an overlap region 622, 618. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in these figures. 06-36 AIA The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the center of gravity WITHIN the reach-through opening in claim 1 (as claim 1 is written, it requires to have the center of gravity Within the reach-through opening with a battery mounted to the jigsaw and without mounting the battery to the jigsaw and the center of gravity Between the reach-through opening and the longitudinal axis of the drive unit with a battery mounted to the jigsaw and without mounting the battery to the jigsaw. Please note that position of the center of gravity on the jigsaw depends on structures of the jigsaw as a whole, therefore, these embodiments of the jigsaws must be shown) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Specification 06-31 AIA The lengthy specification (88 pages) has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. For examples, Paras. 108-110, 113-114, 116, need a space between the references and an articles, for an example in Para. 10 “Fig. 10a section…” should be –Fig. 10 a section-- Para. 138 “A center of gravity S of the jigsaw 10 advantageously comes to lie within the opening 166 or reach-through opening 22 or between the opening 166 and the longitudinal axis x, with or without the battery 15 applied to the jigsaw 10” is unclear how the jigsaw 10 has the same position of center of gravity S with or without the battery and it is also unclear how the center of gravity S of the jigsaw 10 within the opening 166 or reach-through opening 22 or between the opening 166 and the longitudinal axis x with or without the battery 15. Is the jigsaw capable of receiving various sizes of batteries? 07-30-03-h AIA Claim Interpretation The following is a quotation of 35 U.S.C. 112(f): The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: The “…fastening element configured to fix a suction nozzle” in claims 2 and 15 invoke 112F because first, "element" is a generic substitute for “means”; second, the " element " is modified by functional language including “configured to fix a suction nozzle …”; and third, the "element" is not modified by sufficient structure to perform the recited function because "fastening" preceding element describes the function, not the structure of the element. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Claim Rejections - 35 USC § 112 07-30-01 AIA The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 07-31-01 Claims 1-3, 5-15, 18 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. Claim 1 the phrase “a center of gravity of the jigsaw, both with and without a battery attached to the jigsaw , is positioned within the reach-through opening or between the reach-through opening and the longitudinal axis” (emphasis added). The language “ both with and without a battery ” is new matter since the original specification does not support it. See the original claim 4 “…with or without…” and see the original specification, Para. 138 states that “A center of gravity S of the jigsaw 10 advantageously comes to lie within the opening 166 or reach-through opening 22 or between the opening 166 and the longitudinal axis X, with or without the battery 15 applied to the jigsaw 10”. While reading at the original specification, Para. 138 states “…with or without the battery 15 applied to the jigsaw 10” which means either with or without the battery 15 applied to the jigsaw 10, the center of gravity is positioned within the reach-through opening or between the reach-through opening and the longitudinal axis. Further, as the phrase is written, it wa s not described in the specification in such a way as to reasonably convey to one skilled in the art that the inventor had possession of the center of gravity of the jigsaw being is positioned within the reach-through opening or between the reach-through opening and the longitudinal axis (the longitudinal axis is defined as a rotation axis of the drive unit) in both configurations, with and without a battery attached to the jigsaw . The examiner notes that a center of gravity of a jigsaw is a single point where the jigsaw’s total weight can be considered to act or as a balance point of the jigsaw’s mass distribution, however, it is unclear how a center of gravity of the jigsaw is positioned within the reach-through opening or between the reach-through opening and the longitudinal axis even if weight of the battery is with and without in the jigsaw. It appears that the battery (weight) will NOT affect a position of the center of gravity, which the present disclosure does not describe. It is confusing how weight of the battery is added or removed from the jigsaw such that a center of gravity of the jigsaw is still positioned within the reach-through opening or still between the reach-through opening and the longitudinal axis. Thus, a person of ordinary skill in the art would not have recognized that the inventor was in possession of the invention as claimed in view of the disclosure of the application as filed. All claims dependent from claim 1 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as being dependent from rejected parent claims, respectively. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-3, 5-15, 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1, the phrase “a center of gravity of the jigsaw, both with and without a battery attached to the jigsaw , is positioned within the reach-through opening or between the reach-through opening and the longitudinal axis” (emphasis added) is confusing and unclear. This phrase fails to comply with the written description requirement. As the phrase is written, it is unclear what structure of the jigsaw can be caused the center of gravity is positioned within the reach-through opening or between the reach-through opening and the longitudinal axis even if there is a battery or not. Is weight of the battery extremity light (compared to a total weight of the jigsaw) and not affected the position of the center of gravity of the jigsaw, right? While reading at the original specification, Para. 138 states “…with or without the battery 15 applied to the jigsaw 10” which means either with or without the battery 15 applied to the jigsaw 10, the center of gravity is positioned within the reach-through opening or between the reach-through opening and the longitudinal axis. Thus, the phrase is unclear and confusing. For examination purposes, as best understood, Examiner is interpreting the “issues above” as below and all claims dependent from claim 1 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being dependent from the rejected parent claim. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim s 1-3, 5-12, 14-15, 18 are rejected under 35 U.S.C. 103 as being unpatentable over Jerabek et al (US 2012/0192440) hereinafter Jerabek in view of Ni et al (US 2013/0145631) and Kenta (WO 2014119093A1 and Translation) . Regarding claim 1, as best understood, Jerabek shows a jigsaw (10, Figures 1-2), including at least a reciprocating saw blade (18) and a drive unit or a motor (38) rotating about a longitudinal axis, having comprising: a housing unit (14, Figure 1) and a base plate (22, 350), wherein; the housing unit is 40-60% longer than the base plate in a longitudinal direction of the jigsaw (see the housing unit where the reference “10” is pointing to, Figure 1, is about 40% of the base plate 22, 350), and the housing unit and the base plate are bracingly interconnected (Figures 1-2), in a rigid by two connecting regions (where the reference “294” and 386 in Figure 8 below) mutually spaced in a longitudinal direction of the jigsaw (10), comprising bearing and or fixing points (see a surface of an exhaust post 294 and see details of the locking mechanism 386, Para. 40 for bearing points while the housing 14 rotated and locked or fixed relative with the base 22), wherein the base plate, the housing unit, and the two connecting regions enclose a reach- through opening (Figure 8 below) dimensioned and arranged so as to receive fingers of a hand of a user of the jigsaw for guiding the jigsaw (the opening appears bit enough for user’s fingers). However, Jerabek inherently includes a center of gravity of the jigsaw, “both with and without a battery attached to the jigsaw” (see new matter, the description issue above, and the ), but it is clear whether it is positioned within the reach-through opening or between the reach-through opening and the longitudinal axis. PNG media_image1.png 809 918 media_image1.png Greyscale Ni shows a similar jigsaw (Figure 1) having a center of gravity (G2) of the jigsaw with a battery (7) is between or within a recess (8; the center of gravity G2 is positioned on an horizontal edge and above an adjust knob 10, Figure 1-2 that is within the recess 8). Please notes that a position of the center of gravity of the jigsaw is a result effective variable. See the background, Para. 2 discusses “ …the battery pack is generally disposed to the rear of the motor and inserted in a direction substantially parallel to a movement direction of a slide bar driving the jig saw. Thus, the size of the whole machine is relatively large and the center of gravity is relatively high, which decreases convenience of operation ”, conversely, the improvement of the jigsaw, “ the battery pack is positioned between the motor and the base, the center of gravity of the battery pack is more adjacent to the base, thus a center of gravity of the electric tool is lowered. Therefore, the vibrate of the electric tool is reduced due to a lower center of gravity, and the electric tool is easy to control which provides an enhanced user comfort ” as discussed in Para. 6 of Ni. Thus, Ni teaches one of skill in the art to select the position of the center of gravity of a jigsaw depending on positions of the battery on the jigsaw. Therefore, it would have been obvious to one before the effective filing date of the invention to have modified the jigsaw of Jerabek to have the center of gravity of the jigsaw closer or within the reach-through opening or recess, as taught by Ni, in order to allow a user to easily control the jigsaw (Para. 13, the last sentence of Ni). Because Ni teaches that the location of a center of gravity can be selected to achieve various outcomes based on a position of the battery mounted on the jigsaw, it would have been an obvious matter of design choice to a person of ordinary skill in the art to choose a location of the center of gravity of the jigsaw of Jerabek, such that the center of gravity of the jigsaw is closer or within the reach-through opening or recess because discovering an optimum position of the center of gravity would have been a mere design consideration based on weighing the importance of the jigsaw being balanced and providing the jigsaw with a moment that aids in cutting. One of ordinary skill in the art is further motivated by the teachings of Ni to experiment with the location of the center of gravity to achieve some mix of the jigsaw being balanced during operating. Indeed, the selection of the location of the center of gravity for the jigsaw of Jerabek at any location including the claimed position. Such a modification would have involved only routine skill in the art to accommodate the aforementioned requirement(s) because Jerabek in view of Ni explicitly teaches that the location of the center of gravity can be selected to achieve various results. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. If there is any doubt about the obviousness of the center of gravity of the jigsaw with a battery is between or within an opening, see Kenta”s figure 1, the center of gravity (G) is between or within the opening, in order to allow the jigsaw to be carried a large battery pack (two batteries) and the jigsaw’s total weight can be balanced out for easily controlling or moving during operating. Regarding claim 2, the modified jigsaw of Jerabek shows that a fastening element (see the connection of passageway 282, Figure 8) for fixing configured to fix a suction nozzle (290, 298, Figure 8) is arranged at least partially between the two spaced connecting regions (Figure 8). Regarding claim 3, the modified jigsaw of Jerabek shows that the connecting regions have a distance of 25-75% of a length of the base plate (Figure 8 above, see the length L3 of reach-through opening that is greater at least 25% of the length of the base plate). Regarding claim 5, the modified jigsaw of Jerabek shows that the two connecting regions comprise first and second connecting regions, the first connecting region (where it closes to the saw blade 18, Figure 8) is arranged in a region of a gearbox flange (Para. 20 “an outer ring gear 70, gears 82…transmission 62” and Figure 8 shows a flange or a head 34) connected to the base plate (22, 350, Figure 8), and the second connecting region (opposite the first connecting region, Figure 8) is arranged in a the region of a motor housing section of the housing unit (12) of the jigsaw (see a housing portion 30, Figure 8 for housing a motor 38). Regarding claim 6, the modified jigsaw of Jerabek shows that the region of the housing unit (14) or the motor housing section (30, Figure 8) in the second connecting region has a larger circumference around the longitudinal axis (Figure 8) compared to a housing region surrounding the drive unit (the motor 8, Figure 8 shows an outer section 30 greater than an inner chamber or a housing region for around and receiving the motor 8). Regarding claim 7, the modified jigsaw of Jerabek shows that parting joints (a portion contacting the exhaust post 294 as seen Figure 8 and a locking mechanism 386 as discussed in Para. 40, Figure 8 below) of the two connecting regions, have a horizontal offset relative to each other (below Figure 8 shows an offset distance between two parting joints in the horizontal direction), however, it is unclear whether the horizontal offset is 95-105 mm or not. Examiner notes that the passageway (282) having an inner diameter sized to receive a standard 1 ¼ in (31mm) vacuum wand 298 as stated in Para. 32, the last few lines. Looking at Figure 8 below, the horizontal offset distance is about 5 times of the inner diameter (150mm). Since Applicant had not pointed out or demonstrated the criticality of a specific limitation such as the horizontal offset is 95-105 mm as set in the claim, it would have been an obvious matter of design choice to have the horizontal offset to be claimed size (95-105 mm), since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose , 105 USPQ 237 (CCPA 1955), this gives the manufacturers a choice to produce compact jigsaws. PNG media_image2.png 767 884 media_image2.png Greyscale Regarding claim 8, the modified jigsaw of Jerabek shows that a first connecting surface delimited at least by the housing unit (14) in a parting joint plane of the first connecting region (where it directs to the saw blade 18, as seen L4 in Figure 8 below) is 20-40% of the second connecting surface which is delimited by the base plate or the foot plate (350) fixed thereto in a workpiece contact plane of the foot plate (see the length L4, Figure 8 below compared to the length of the plate 350 about 30%) and the first connecting surface in the first connecting plane or the parting joint plane of the first connecting region, which is delimited at least by the housing unit, is 20-60% larger than a third connecting surface in a second connecting plane or a second parting joint plane of a second connecting region of the two connecting regions (see Figure 8 below). PNG media_image3.png 809 918 media_image3.png Greyscale Regarding claim 9, the modified jigsaw of Jerabek shows that the first connecting surface is delimited at least by the housing unit (14) from three sides and is about 30% of the 3 rd connecting surface which is delimited by the base plate fixed thereto in a workpiece contact plane (see the discussion in claim 8 above for 30%), not 15-25% as claimed. However, it would have been an obvious matter of design choice to a person of ordinary skill in the art to make “ the first connecting surface is delimited at least by the housing unit (14) from three sides and is 15-25% of the 3 rd connecting surface which is delimited by the base plate fixed thereto in a workpiece contact plane ” or between the claimed ranges because discovering an optimum value above would have been a mere design consideration based on characteristics of sizes and shapes of jigsaws. Such a modification would have involved only routine skill in the art to accommodate the aforementioned requirement depending on the characteristics of the machines. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art depending on the workpiece or particle sizes to be crushed or grinded. In re Boesch , 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. These are known results effective variables, depending on the size and shape of the jigsaws to be manufactured. Regarding claim 10, the modified jigsaw of Jerabek shows that the housing unit (14) and the base plate (22, 350) are connected via an exposed support element (a housing portion where the vents 322 are in Figures 8-9) which is exposed in the region of a support leg or a support arm (see the portion bears on the exhaust port 294, Figure 9), having a support surface (see the end surface of the portion of the housing unit 14 contacting against the exhaust port 294, Figure 9) constituting a second connecting region of the two connecting regions to the housing unit; and the exposed support element is a load-bearing (see Figures 1, 8-9, the portion of the housing contacting against the exhaust port 294 is a load bearing as discussed in Para. 18 “a base 22 pivotably coupled to the housing 14 to permit adjustment of the cutting angle or the bevel angle of the saw blade 18 relative to the base 22”). However, it is unclear whether it makes of an aluminum alloy or not. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have the exposed support element being made of aluminum, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin , 125 USPQ 416. Regarding claim 11, the modified jigsaw of Jerabek shows that the support leg of the exposed support element (see the discussion in claim 10 above), in relation to the base plate (22, 350), forms an offset (Figure 9); and the support leg forms an angle of 40-50° with a workpiece contact surface of the base plate (see Figure 8 below, it is about 50 degrees). PNG media_image4.png 589 686 media_image4.png Greyscale Further, it would have been an obvious matter of design choice to a person of ordinary skill in the art to make the angle between the claimed ranges because discovering an optimum value above would have been a mere design consideration based on characteristics of sizes and shapes of jigsaws. Such a modification would have involved only routine skill in the art to accommodate the aforementioned requirement depending on the characteristics of the jigsaws. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art depending on the workpiece or particle sizes to be crushed or grinded. In re Boesch , 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. These are known results effective variables, depending on the size of the reach through opening of the jigsaws for user’s fingers. Regarding claim 12, the modified jigsaw of Jerabek shows that the exposed support element (see the discussions in claims 10-11 above) forms the support surface (that contacts the exhaust post 294) for the housing unit, which is formed parallel to the workpiece contact surface of the base plate (the support surface is parallel to the sub-base 350, Figure 9) and has an axial and vertical offset with respect to the base plate and is connected to the base plate (see the support surface of the housing 14 rotated on the exhaust post 294 having a vertical offset relative with the base plate 22 and is connected to the base plate, Figure 1) by at least one oblique, offset and/or arcuate support leg (Figure 1 shows the portion of the housing unit slidable on the exhaust port 294 is oblique, offset and/or arcuate support leg “a concave surface on the exhaust port 294” that seen in Figure 1). Regarding claim 14, the modified jigsaw of Jerabek shows that the exposed support element (see the discussions in claims 10-12 above) is designed such that it tapers concavely from the base plate towards the housing unit (see Figure 9 below) as to have a decreasing width (of the motor housing section 30, Figure 9). PNG media_image5.png 765 716 media_image5.png Greyscale Regarding claim 15, the modified jigsaw of Jerabek shows that the exposed support element (see the discussion in claims 10-12, 14 above and Figure 9 above) protrudes axially beyond the base plate (Figure 8 shows an upper portion, where is the upper reference “322”, protrudes axially beyond the base plate) on a side of the base plate facing away from a sawing region (see Figure 8, the portion at the reference “322” is away from the saw blade 18). Regarding claim 18, the modified jigsaw of Jerabek shows that the reach-through opening has a height, defined between the base plate and the housing unit perpendicular to the longitudinal direction (see Figure 8 above), however, it is unclear whether it is between 35 mm and 45 mm or not. However, it would have been an obvious matter of design choice to a person of ordinary skill in the art to make the reach-through opening has a height between the claimed ranges (35 mm and 45 mm) because discovering an optimum value above would have been a mere design consideration based on average sizes of user’s fingers. Such a modification would have involved only routine skill in the art to accommodate the aforementioned requirement depending on the user’s hands. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art depending on the users’ hands. In re Boesch , 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. These are known results effective variables, depending on the size of user’s hands for handling during operating . 07-21-aia AIA Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Jerabek in view of Ni, Kenta, and Jensen et al (US 2021/0237178) hereinafter Jensen . Regarding claim 13, the modified jigsaw of Jerabek shows that the exposed support element (see the discussions in claims 10-12 above) and the housing unit (14) having an on-board power source (battery) to provide power to the motor as discussed in Para. 19, however, Jerabek silently discusses corresponding positive-locking geometries, which provide support a battery in at least two spatial directions extending perpendicularly or obliquely to a longitudinal axis direction (x) and a hoist axis direction (y) of the jigsaw. Jensen shows a jigsaw (Figures 2-3) including corresponding positive-locking geometries (Figure 2 below), which provide support a battery (22) in at least two spatial directions extending perpendicularly or obliquely to a longitudinal axis direction (x) and a hoist axis direction (y) of the jigsaw (see the positive-locking geometries that extends into two X, Y directions). Therefore, it would have been obvious to one before the effective filing date of the invention to have modified the jigsaw of Jerabek to have a battery interface (positive-locking geometries), as taught by Jensen, in order to allow to firmly secure the battery to the jigsaw . PNG media_image6.png 608 766 media_image6.png Greyscale Response to Arguments 07-37 AIA Applicant's arguments filed 04/10/2026 have been fully considered but they are not persuasive for the reasons below: With regards to the objections, Applicant has amended to the specification and drawings, some of the previous objections are mooted and some till have issues. See the objections above. With regards to the previous 112b rejections, Applicant has amended to the claims; the rejections are mooted. With regards to the art rejections by the art (102 and 103 rejections), an attempt to overcome the prior art rejections, Applicant has amended to claim 1, however, new issues are arisen. See the new matter, the written description, and the drawing objections above. With regards to “Claim 1 therefore requires that the center of gravity of the jigsaw, both with and without a battery attached , is positioned within the reach-through opening or between the reach-through opening and the longitudinal axis” in page 18 of the remarks, this argument is invalid since it is new matter. See the new matter above. How is the center of gravity of the jigsaw remaining the same position on both with and without a battery (weight) attached to the jigsaw? If add or remove weight (battery) of the jigsaw, the center of gravity will be shifted. With regards to “Ni does not teach reach-through openings”, Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references (Jerabek teaches the reach-through opening and Ni teaches a center of gravity of the jigsaw between the recess where the user’s fingers grasp the jigsaw). See In re Keller , 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Also, see Kenta’s reference for a center of gravity is between or within the opening of the jigsaw. With regards new claims 16-17, since applicant has received an action on the merits for the originally presented and elected invention, claims 16-17 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03. Examiner also notes that the subject matters of claims 16-17 are possibly new matter since the original specification does not discuss it. However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview. Conclusion 07-40 AIA 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. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 5/27/2026 Application/Control Number: 18/725,347 Page 2 Art Unit: 3724 Application/Control Number: 18/725,347 Page 3 Art Unit: 3724 Application/Control Number: 18/725,347 Page 4 Art Unit: 3724 Application/Control Number: 18/725,347 Page 5 Art Unit: 3724 Application/Control Number: 18/725,347 Page 6 Art Unit: 3724 Application/Control Number: 18/725,347 Page 7 Art Unit: 3724 Application/Control Number: 18/725,347 Page 8 Art Unit: 3724 Application/Control Number: 18/725,347 Page 9 Art Unit: 3724 Application/Control Number: 18/725,347 Page 10 Art Unit: 3724 Application/Control Number: 18/725,347 Page 11 Art Unit: 3724 Application/Control Number: 18/725,347 Page 12 Art Unit: 3724 Application/Control Number: 18/725,347 Page 13 Art Unit: 3724 Application/Control Number: 18/725,347 Page 14 Art Unit: 3724 Application/Control Number: 18/725,347 Page 15 Art Unit: 3724 Application/Control Number: 18/725,347 Page 16 Art Unit: 3724 Application/Control Number: 18/725,347 Page 17 Art Unit: 3724 Application/Control Number: 18/725,347 Page 18 Art Unit: 3724 Application/Control Number: 18/725,347 Page 19 Art Unit: 3724 Application/Control Number: 18/725,347 Page 20 Art Unit: 3724 Application/Control Number: 18/725,347 Page 21 Art Unit: 3724 Application/Control Number: 18/725,347 Page 22 Art Unit: 3724 Application/Control Number: 18/725,347 Page 23 Art Unit: 3724
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