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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
There are (50 figures) that have not been thoroughly 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 these figures.
Specification
The lengthy specification (59 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.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – 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.
Claims 1, 18, 20 limitation “an output assembly configured to perform an output operation” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation 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.
For an example, First, "assembly" is a generic substitute for “means”; second, the "assembly" is modified by functional language including “configured to perform an output operation”; and third, the "assembly" is not modified by sufficient structure to perform the recited function because "output" preceding assembly describes the function, not the structure of the assembly.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1, 18, 20 have been interpreted to cover the corresponding structure described in the specification that achieves 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 § 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.
Claims 1-4, 6, 14-19, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Vincent (EP 1792533 A1 and Translation).
Regarding Claim 1, Vincent shows a handheld power tool (Figures 1-3), comprising:
a motor (18);
a handle (3, 4) for a user to hold;
a first switch (24) disposed on the handle and configured to at least control starting and stopping of the motor (the 4th paragraph of page 5);
an output assembly (5) configured to perform an output operation (a hedge trimmer operation); and
an adjustment device (14, Figure 2) comprising a telescopic rod assembly (16a, 16b), wherein a length of the adjustment device changes so that the handheld power tool has at least a first working state and a second working state (the 3rd Paragraph of page 5 “…a length adjustment of the implement 1 is possible in which a spacing of the motor housing 8 to the handle unit 2 can be changed to allow adaptation of the implement 1 to different work situations” which means this adjustment can be at least two desired positions as seen in Figures 2-3);
wherein a distance between a frontmost side of the handheld power tool and a rearmost side of the first switch is an effective length of the handheld power tool (see figure 2 while the rod 16a is pushed into the rod 16b or a retracted position), when the handheld power tool is in the first working state, the handheld power tool has a first effective length (without an extension position or another word, the rod 16b is in a retracted position), when the handheld power tool is in the second working state (an extension position), the handheld power tool has a second effective length, and the second effective length is greater than the first effective length (this is an inherent because the rod 16a is extended from the rod 16b and see the 3rd paragraph of Page 5 for “working state”).
With regard to “the first effective length is less than or equal to 1 m” as seen in Figure 2 , it appears that a length of an end of the working device (5) to the switch (24) has the first effective length is less than or equal to 1 m (since the working device can be pivoted in about 45 angle while it is in the retracted position as discussed in the 4th paragraph of page 3).
However, if one argues that “the first effective length is NOT less than or equal to 1 m”, it would have been an obvious matter of design choice to a person of ordinary skill in the art to modify the power tool of Vincent to have the first effective length less than or equal to 1 m because discovering an optimum value above would have been a mere design consideration based on sizes of the power tools demanded for worksites or applications (sizes of bushes and shrubs). Such a modification would have involved only routine skill in the art to accommodate the aforementioned requirement depending on sizes of the tools that can be used for properly trimming sizes of bushes and shrubs.
For examples, if great sizes of bushes and shrubs are needed to be trimmed, a long trimmer head may be needed an extension for quickly trimming across the bushes and shrubs (however, the power tools can be costly and heavily) and
However, if small or medium sizes of bushes and shrubs are needed to be trimmed, a small trimmer head may be needed an extension for trimming across the bushes and shrubs (however, the power tools can be less cost and less heavy or a compact tool).
Given the reasons above, almost any length of the power tool or size of the power tool in a retraction position (first effective length) would be considered obvious. This gives the manufacture a choice to consider between manufacture cost, tool weights, and demands of power tools. Therefore, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art depending on how far or tall branches be cut down. 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.
Regarding claims 2-3, the modified tool of Vincent shows a difference between the second effective length (T2) and the first effective length (T1) is greater than or equal to 10 cm or greater than or equal to 20 cm (see the 3rd paragraph and Figures 1-2 of Vincent, the adjustment of two profiles or rods 16a, 16b is adjusted by manually and also see the discussion “a result effective variable” in claim 1).
Regarding claim 4, the modified tool of Vincent shows that the handheld power tool has a third effective length (for an example, a length is slightly longer than the second effective length), the third effective length is greater than the second effective length, and a difference between the third effective length and the second effective length is greater than or equal to 10 cm (see the 3rd paragraph and Figures 1-2 of Vincent, the adjustment of two profiles or rods 16a, 16b is adjusted by manually and also see the discussion “a result effective variable” in claim 1).
Regarding claim 6, the modified tool of Vincent shows that the adjustment device is telescopic to a first state and a second state along a front and rear direction of the handheld power tool (as it is written, it is unclear what the first and second states are, therefore, see the discussion in claim 1 above, the telescopic rods 16a, 16b are extended and extracted).
Regarding claims 14-15, the modified tool of Vincent shows that the first effective length (T1) is less than or equal to 60 cm or less than or equal to 50 cm (See the “result effective variable” discussion in claim 1 above. Given the reasons above, almost any length of the power tool would be considered obvious).
Regarding claims 16-17, the modified tool of Vincent shows that the adjustment device is at least partially disposed between the output assembly and the handle (see Figures 1-3 of Vincent), wherein the handheld power tool is a reciprocating saw (Figures 1-3 of Vincent).
Regarding claim 18, the modified tool of Vincent shows that a handheld power tool (Figure 1 and see the discussion above), comprising:
“a motor accommodated in a body housing;
a handle for a user to hold; and
an output assembly configured to perform an output operation;
wherein, when the handheld power tool is placed on a horizontal plane, a maximum distance of the handheld power tool along a direction parallel to the horizontal plane is a total length of the handheld power tool, and the total length is adjustable” (see claim 1 for adjustment and the limitations), the handheld power tool has at least a first working state and a second working state (see the discussion in claim 1 above), when the handheld power tool is in the first working state, the handheld power tool has a first total length, when the handheld power tool is in the second working state, the handheld power tool has a second total length, the second total length is greater than the first total length, and the first total length is less than 1.2 m (see the discussion in claim 1 above).
Regarding claim 19, the modified tool of Vincent shows a first switch (24), wherein only the first switch is usable for controlling starting and stopping of the motor and the first switch is capable of controlling the starting and stopping of the motor when the handheld power tool is in different working states (see the discussion in claim 1 above).
Regarding claim 21, the modified tool of Vincent shows all of the limitations including an adjustment switch having a stop portion (the 4th paragraph of Page 5 “not shown lock button that must be operated by a user to allow actuation of the control button 24… a simple and inexpensive coupling of the lock button can be realized with the control button 24, since the handle parts 3, 4 are not relatively movable” that means there is an adjustment switch having a stop for preventing actuating the button 24), wherein at least a part of the adjustment switch is disposed on the handle (the 4th paragraph of Page 5), when the adjustment switch is in an unlocked state, the stop portion is located on a movement path of the first switch controlling the starting and stopping of the motor and the first switch is restricted from implementing a function of starting the motor (the 4th paragraph of Page 5).
Claims 5, 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Vincent in view of Kress (EP 0834248 A2 and Translation).
Regarding claim 5, the modified tool of Vincent shows all of the limitations as stated above except a coupling portion configured to mount a battery pack,
Kress shows a similar device (Figure 2) including a coupling portion (a battery holder 37) configured to mount a battery pack (Figure 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the tool of Vincent to be operated by a battery, as taught by Kress, in order allow the tool conveniently used any worksites.
Adding the battery is unclear whether a total weight of the handheld power tool to which the battery pack is mounted is less than or equal to 6 kg or not.
See the “result effective variable” discussion in claim 1 above. Given the reasons above, almost any sizes or weights of the power tool would be considered obvious. This gives the manufacture a choice to consider between manufacture cost, tool weights, and demands of power tools.
Regarding claim 12, the modified tool of Vincent shows all of the limitations as stated above including a coupling portion configured to mount a battery pack (see claim 5 above) and a wire (36, Figure 2 of Kress), the wire is inserted through the handle and the adjustment device, one end of the wire is electrically connected to the motor, and another end of the wire is electrically connected to the battery pack (this is an inherent limitation because the motor needs power from the battery or power source), and the wire is a spring wire (Figure 2 of Kress).
Regarding claim 13, the modified tool of Vincent shows that a power supply device for supplying electric power to at least the motor, wherein the power supply device is detachably connected to a rear part of the handle (see claim 5 above for a battery).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Vincent (EP 1792533 A1 and Translation) and evidenced by Pearl (US 1025641).
Regarding claim 20, the modified tool of Vincent shows a one-handed saw (see the discussion in claim 1 above and Figures 1-3 of Vincent. See MPEP. 2111.02, section II “Preamble statements reciting purpose or intended use”. Since the structures in the body claim as the same as claim 1 above, therefore, the preamble “one-hand” is an intended use. That means Vincent’s tool can be held, lifted, or operated in one hand as evidenced by Pearl’s tool, figure 1 that shows two handles, but an operator uses only one hand to hold the tool during trimming. Also, as this preamble is written, it is unclear whether the one-handed saw refers a light weight that can be held or lifted by one hand or refers a small tool that can be used only one hand or a tool that designs to operate only one hand, therefore, Vincent’s tool can be held or lifted by one hand and meets this limitation), comprising:
“a motor accommodated in a body housing;
a handle for a user to hold; and
an output assembly configured to perform an output operation”;
wherein, when the one-handed saw is placed on a horizontal plane, a maximum distance of the one-handed saw along a direction parallel to the horizontal plane is a total length of the one-handed saw, and the total length is adjustable (see Figures 1-3 of Vincent and see the discussion of length adjustment in claim 1 above).
Allowable Subject Matter
Claims 9-11 and 22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: claims 22 is free of the prior art because the prior art does not teach or suggest that the adjustment device is provided with a locking hole, the adjustment switch further comprises a button for the user to operate, a first seesaw rotatably connected to the handle, and a reset torsion spring connected to the first seesaw, the button is capable of pressing one end of the first seesaw, and another end of the first seesaw is selectively inserted into the locking hole as set in claim 22. Claims 9-11 are considered as allowable subject matter since they depend on claim 22.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 9/14/2026
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