DETAILED ACTION
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 .
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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: claims 1, 10, and 19 contain the limitation “a switch… in electrical communication with the battery dock”. This terminology is not present in specification, which only recites that the switch is “operatively coupled to the electric motor” and that the battery supplies power to the electric motor. Specification [0016]-[0017] and [0019]. This disclosure implies, but does not recite, that the switch is in electrical communication with the battery dock.
Claim Objections
Claims 8 and 17 are objected to because of the following informalities: the limitation of “tire buffer tool” claims 8 and 17 is inconsistent with the rest of the claim terminology. Consider ––tire repair tool––. Appropriate correction is required.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-4, 10-13, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jornlin et al. (US PGPub 2022/0040940, "Jornlin").
Regarding claims 1, 10, and 19, Jornlin teaches a tire repair tool (10), comprising:
an elongated housing (combination of 20 and 30) having a first end (portion of 20 proximal to chuck 45) and a second end (portion of 30 proximal to battery mount 40), the second end opposite to the first end, the elongated housing extending along a longitudinal axis and including a battery dock (40) located at the second end (see Jornlin figs. 1-3 and [0019]-[0023]);
an electric motor (80) disposed within the housing (see Jornlin fig. 3), the electric motor including a motor output (shaft 85) configured to rotate about the longitudinal axis (see Jornlin fig. 3 and [0025]);
a gearbox (100) disposed within the housing and coupled to the motor output (see Jornlin fig. 3 and [0025]), the gearbox including an output drive (chuck shaft 95, see Jornlin fig. 3 and [0025]);
a chuck (45) coupled to the output drive, the chuck configured to receive a workpiece tool (chuck 45 is configured to receive a tire repair tool, Jornlin [0020]-[0021]), the chuck located proximate to the first end of the elongated housing (45 extends from an end of the housing, see Jornlin fig. 1);
a switch (105) operatively coupled to the electric motor for selectively controlling electrical power to the electric motor (switch activates or deactivates the motor, see Jornlin [0023] and fig. 3),
a biased trigger (55) operatively coupled to the switch, the trigger configured to pivot with respect to the housing when the trigger is pressed (55 defaults to a position away from the housing and pivots relative to 30 when pressed, see Jornlin fig. 3 and [0021]-[0023]); and
a battery (not shown, Jornlin [0019]) removably coupled to the battery dock for supplying power to the battery dock when the battery is coupled to the battery dock (battery is attached at 40 and supplies power to a motor, which would happen via 40, Jornlin [0019]),
Jornlin does not explicitly teach that the switch is in electrical communication with the battery dock or that the battery has an elongated housing defining a battery axis, wherein the battery dock is oriented so that the battery axis forms an oblique angle with the longitudinal axis when the battery is coupled to the battery dock.
However, when a product is claimed in terms of a function, property or characteristic and the product of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, an examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).
Furthermore, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989). Similarly, it has been held that “in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (upholding a finding of anticipation based on inferences made by one of ordinary skill in the art).
Jornlin teaches that the battery pack provides electrical power to the motor (Jornlin [0019]), that the switch is electrically connected to the controller (115) such that the switch controls activation and deactivation of the motor, and that the controller (115) activates and deactivates the motor (80). Jornlin [0023]. Although this does not include an explicit teaching of electrical communication between the battery dock and the switch, the combination of these teachings (and the absence of teachings regarding some sort of remote switching mechanism) would have reasonably suggested and/or implied to one of ordinary skill that Jornlin teaches that the battery and switch would be part of a common circuit such that the switch is in electrical communication with the battery via the dock and controls power delivery from the battery dock to the motor.
Jornlin therefore teaches that the switch is in electrical communication with the battery via the dock.
Similarly, although Jornlin does not explicitly show a structure for the battery pack (Jornlin teaches that battery receiving portion 40 detachably receives a battery pack, Jornlin fig. 1 and [0019] and later shows the presence of a structure connected to the tool at the battery receiving portion but does not explicitly teach that the disclosed structure is a battery pack, see Jornlin figs. 7a-7b), such a battery pack would necessarily occupy a volume (because such a battery must be a three-dimensional object) such that it extended along at least one dimension describable as "elongated" as a result of basic geometry (the only possible shape that does not have at least one dimension longer than any other would be a sphere, which would be incapable of interfacing with the depicted battery receiving portion. Any other shape would necessarily have at least one dimension longer than the others, which would fall within the broadest reasonable meaning of the term “elongated”). Because the battery pack of Jornlin would occupy a volume, it would necessarily be possible to define an arbitrary battery axis in the volume of Jornlin, wherein the battery dock is oriented so that the battery axis forms an oblique angle with the longitudinal axis when the battery is coupled to the battery dock. Such a battery axis would be definable at any angle, including an oblique angle relative to the angle of the longitudinal axis. The claim only requires that the battery pack have an elongated housing and that the housing defines a battery axis—it does not require the axis to extend parallel to the elongation direction. Consequently, Jornlin inherently teaches that the battery has an elongated housing defining a battery axis, wherein the battery dock is oriented so that the battery axis forms an oblique angle with the longitudinal axis when the battery is coupled to the battery dock.
Under an alternative theory of the claim, although Jornlin does not explicitly teach that the switch is in electrical communication with the battery dock or that the battery has an elongated housing defining a battery axis, wherein the battery dock is oriented so that the battery axis forms an oblique angle with the longitudinal axis when the battery is coupled to the battery dock, it would have been obvious to one of ordinary skill before the effective filing date to have modified the device of Jornlin such that the switch is in electrical communication with the battery dock, as the use of such a switching system would be less complicated than the sort of switching system required to have the switch control the motor as disclosed without being in electrical communication.
It would likewise have been obvious for one of ordinary skill to have modified the tool of Jornlin such that the battery has an elongated housing defining a battery axis, wherein the battery dock is oriented so that the battery axis forms an oblique angle with the longitudinal axis when the battery is coupled to the battery dock, as it has been held that, absent persuasive evidence that a particular configuration of the claimed container is patentably significant, that the choice of a particular shape or configuration would be a matter of obvious design choice to one of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claims 2 and 11, Jornlin teaches the tire repair tool of claims 1, 10, and 19, respectively, wherein the workpiece tool comprises a buffer wheel (tool can be a buffing tool, Jornlin [0021]) configured to buff an interior surface of a tire (repair process involves buffing an inside liner of the tire, Jornlin [0003]).
Regarding claims 3, 12, and 20, Jornlin teaches the tire repair tool of claims 1, 10, and 19 wherein the oblique angle is about sixty degrees (60º) (as noted in the rejection of claims 1, 10, and 19, the axis may be drawn arbitrarily, including in a fashion that made the oblique angle about 60º, as this does not require any modification of the structure taught by Jornlin, it teaches the claim limitation.).
Regarding claims 4 and 13, Jornlin teaches the tire repair tool of claims 1 and 10, respectively, wherein the battery axis is defined by a distal surface of the battery (a geometric axis may be defined in terms of surfaces that it passes through, consequently, the claimed battery axis is definable in terms of a distal surface of the battery pack), and wherein the distal surface is opposite from the first end of the elongated housing when the battery is coupled to the battery dock (as the axis would be definable in terms of any surface of the battery pack, it is definable in terms of a surface of the battery pack that would be distal to a first end of the housing when the battery pack was coupled to the housing).
Claims 5, 7-8, 14, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Jornlin as applied to claims 1 and 10 above, and further in view of Kosugi et al. (US PGPub 2014/0014385, "Kosugi").
Regarding claims 5 and 14, Jornlin teaches the tire repair tool of claims 1 and 10, respectively, wherein the trigger comprises a pin for pivotally coupling the trigger to the elongated housing (lever 55 pivots around a pin located adjacent 40, see Jornlin fig. 1).
Jornlin does not teach that the pin of the trigger is proximate to the first end of the elongated housing.
However, Kosugi teaches a power tool (Kosugi fig. 1) comprising
an elongated housing (see Kosugi fig. 1) having a first end (adjacent 57) and a second end (adjacent 60), the elongated housing extending along a longitudinal axis (see Kosugi fig. 1) and including a battery dock located at the second end (opening 20c receives battery 60, Kosugi fig. 1 and [0061]);
an electric motor (4) disposed within the housing (Kosugi fig. 2)
a tool receiving module (sleeve 57, Kosugi [0059]) located proximate to the first end of the elongated housing (Kosugi fig. 1);
a switch (Kosugi [0074]) coupled to a biased trigger (trigger 7 is biased by spring 6b, see Kosugi fig. 2 and [0074]) configured to pivot around a pin (43) with respect to the housing when the trigger is pressed (trigger 7 pivots around pin 43 relative to the housing when pressed, see Kosugi fig. 2 and [0074]), wherein the pin of the trigger is located on the end of a trigger lever proximate to the first end of the elongated housing (pin 43 is on a forward end of 7, see Kosugi fig. 2).
Kosugi further teaches an alternate embodiment wherein the pin and trigger are reversed (see Kosugi fig 22.).
It would have been obvious to one of ordinary skill before the effective filing date to modify the tire repair tool of Jornlin according to the teachings of Kosugi such that the pin of the trigger was proximate to the first end of the elongated housing, as doing so represents the simple substitution of one known arrangement for a trigger and pin for another, as taught by Kosugi, the results of such a substitution being predictable to one of ordinary skill in the art.
Regarding claims 7-8 and 16-17, Jornlin teaches the tire repair tool of claims 1 and 10, respectively, but does not teach the presence of a protrusion disposed on the elongated housing, the protrusion including a planar surface configured to support the housing when the tire repair tool is placed on a flat surface, wherein the planar surface is configured to resist tipping of the tire repair tool while the tire repair tool is resting on the flat surface, and wherein the protrusion is configured to prevent contact between a trigger and the flat surface while the tire repair tool is resting on the flat surface.
However, Kosugi teaches a power tool (Kosugi fig. 1) comprising an elongated housing (see Kosugi fig. 1) having a first end (adjacent 57) and a second end (adjacent 60), the elongated housing extending along a longitudinal axis (see Kosugi fig. 1) and including a battery dock located at the second end (opening 20c receives battery 60, Kosugi fig. 1 and [0061]); an electric motor (4) disposed within the housing (Kosugi fig. 2) a tool receiving module (sleeve 57, Kosugi [0059]) located proximate to the first end of the elongated housing (Kosugi fig. 1); and a switch (Kosugi [0074]) coupled to a biased trigger (trigger 7 is biased by spring 6b, see Kosugi fig. 2 and [0074]). Kosugi further teaches that the housing may include a protruding part (e.g., 12 or 25a in Kosugi fig. 2 or 452b in Kosugi fig. 33) wherein the protruding parts may include a planar surface (12 is flat, Kosugi fig. 8 and [0095]) or may be configured to prevent contact between a trigger and a flat surface such as a floor (protrusions 452a and 452b prevent inadvertent actuation of the trigger, see Kosugi fig. 33 and [0162]).
It would have been obvious to one of ordinary skill before the effective filing date to modify the tire repair tool of Jornlin according to the teachings of Kosugi such that it included a protrusion disposed on the elongated housing, the protrusion including a planar surface configured to support the housing when the tire repair tool is placed on a flat surface, wherein the planar surface would be capable of resisting tipping of the tire repair tool while the tire repair tool was resting on the flat surface, and wherein the protrusion was configured to prevent contact between a trigger and the flat surface while the tire repair tool is resting on the flat surface, as doing so represents the combination of known prior art elements according to known methods, the results of such a combination being predictable to one of ordinary skill in the art and would result in improved operator safety (see Kosugi [0162]).
Claims 9 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Jornlin as applied to claims 1 and 10 above, and further in view of Hofmann et al. (US 6935438, "Hofmann").
Regarding claims 9 and 18, Jornlin teaches the tire repair tool of claims 1 and 10, respectively, but does not teach a structure for the battery pack and consequently does not teach that the elongated battery further comprises a proximate battery surface and a distal battery surface such that the proximate battery surface is proximate to the trigger and the distal battery surface is distal from the trigger and opposite from the proximate battery surface, wherein the proximate battery surface is flush or tangent to a surface of the elongated housing.
However, Hofmann teaches a structure for an elongated battery (14) positioned at an angle (between 21 and 22) relative to a tool (10, Hofmann fig. 1), wherein the elongated battery further comprises surfaces that would be proximate to and distal from a trigger of the power tool (there will be a surface of the battery closer to a trigger and distant from a trigger, and if the trigger is located on one side of the tool, as is standard, those surfaces would be on opposite faces of the battery), wherein the surfaces are flush or tangent to a surface of the elongated housing (Hofmann teaches an embodiment wherein the battery is pivotable relative to a main housing, which would make the battery capable of being positioned such that the relevant surfaces would include at least one portion tangent to a surface of the elongated housing, see Hofmann fig. 2 and 3:35-63).
It would have been obvious to one of ordinary skill before the effective filing date to modify the tire repair tool of Jornlin according to the teachings of Hofmann such that it included an elongated battery pack positioned at an angle and comprising a proximate battery surface and a distal battery surface such that the proximate battery surface was proximate to the trigger and the distal battery surface was distal from the trigger and opposite from the proximate battery surface, wherein the proximate battery surface was positionable flush or tangent to a surface of the elongated housing, as doing so would allow for a tool to fit in a smaller space while improving operator safety (Hofmann 3:2-28).
Response to Arguments
Applicant's arguments filed 11 September 2026 have been fully considered but they are not persuasive.
Regarding the propriety of the rejections of independent claims 1, 10, and 19 under 35 U.S.C. 102, applicant argues that because Jornlin failed to explicitly disclose the presence of a battery removably coupled to a battery dock, it does not disclose every element of the claimed invention arranged as in the claim as required for anticipation. Applicant’s arguments, however, overlook that courts have found that examiners may rely on the express, implicit, and inherent disclosures of a prior art reference in rejecting claims under 35 USC 102 or 103. MPEP 2112, citing In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) and In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983); MPEP 2144.01, citing In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Furthermore, “[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
The specific case law cited in the rejection, In re Preda, involved a court finding that although the prior art did not expressly state every element of the claimed invention arranged as in the claim, the prior art nonetheless anticipated the claimed invention, because one of ordinary skill in the art would have recognized that the missing elements would be present. See In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). Although anticipation does require the presence in a single prior art reference of each and every element of the claimed invention arranged as in the claim, it does not require that each and every element be explicitly disclosed. The rejections of claims 1, 10, and 19 have been updated to clarify the reasoning used to reach the conclusion that one of ordinary skill would have reasonably concluded that Jornlin teaches the claimed element of a switch in electrical communication with the battery dock.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., an angled battery) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claims do not require that the battery be angled, just that
the battery has an elongated housing;
the battery housing defines an axis; and
the battery axis forms an oblique angle with the longitudinal axis of the tool when the battery is coupled to the battery dock.
As was noted in the rejection, the claim does not require that the battery axis be defined along any particular part of the housing, just that the housing defines an axis. Because such an axis is an arbitrary geometric construct, it may be defined to meet the claim requirement without any structural alterations to the actual angle of the battery relative to the tool. Because the structure would require no modification, no hindsight reasoning would be needed.
Finally, even if applicant’s preferred interpretation of claims 1, 10, and 19 were adopted, the assertion that the additional art made of record was “silent regarding the features recited in independent claims 1, 10, and 19” is inaccurate. As noted in the rejection of claims 9 and 18, Hofmann specifically teaches a structure for detachably connecting an elongated battery (14) to a battery dock (16) such that when docked, an axis parallel to the elongation direction of the battery (e.g. a line parallel to plane 21) would be positioned at an angle relative to a longitudinal axis of a tool (tool axis 23 is at an angle to plane 21, Hofmann fig. 1; plane 22 is disclosed as being substantially perpendicular relative to axis 23, angle alpha is disclosed as being between planes 21 and 22 and in a range of 10º-45º, Hofmann fig. 1 and 2:36-45; applying basic trigonometry result in an angle between 21 and 23 being in the range of 90º-(10º-45º), or 45º to 80º). Hofmann further teaches that angling a battery relative to a tool gives the advantage of allowing the tool to fit in a smaller space (Hofmann 3:2-28). Therefore, Hofmann is not silent as to the features recited in independent claims 1, 10, and 19.
For these reasons, applicant’s arguments are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN R ZAWORSKI whose telephone number is (571)272-7804. The examiner can normally be reached Monday-Thursday 8:00-5:00, Fridays 9:00-1:00.
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/JONATHAN R ZAWORSKI/Examiner, Art Unit 3723
