CTNF 18/797,657 CTNF 90514 DETAILED ACTION This action is in response to application filed on 8/8/2024 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. 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. Claims 1-20 are rejected under 35 U.S.C. 112(a) 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 had possession of the claimed invention at the time the application was filed. Regarding independent claims 1, 10, and 16: The claims recite broadly "an operational parameter value of an operational parameter of a power tool device" and "control an operation of the power tool device based on the operational parameter value." The specification, however, primarily describes specific operational parameters related to worklight functionality (duration and brightness) as shown in Figures 31-36 (see specification paragraphs [0176]-[0186], pages 56-58 of the published application). The specification does not provide adequate written description for the full scope of operational parameters encompassed by the claims. While the specification teaches worklight duration parameters, worklight brightness parameters, and specific modes for different power tools (TEK screw mode, hard joint fastening mode, etc.), it does not demonstrate possession of the inventor for all possible operational parameters that could be controlled, such as motor speed parameters, torque parameters, safety parameters, trigger sensitivity parameters, or other operational characteristics of power tools. Regarding dependent claims 8, 9, 15, and 20: These claims attempt to limit the operational parameter to specific types (worklight on/off, duration, brightness), but the specification fails to provide adequate written description for how these parameters are implemented across the full range of power tool devices encompassed by the claims. The specification primarily focuses on specific embodiments (impact drivers, impact wrenches, hammer drills) and does not demonstrate possession of the inventor for implementing these parameters across all power tool types within the scope of the claims. Since the independent claim 1 is rejected under 35 U.S.C. 112(a) and hence the dependents claims of 1 are also rejected under 112(a). 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. Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Regarding claims 1, 10, 16: The claims recite "an operational parameter value of an operational parameter of a power tool device" . This term is indefinite because the specification does not clearly define the scope of what constitutes an "operational parameter" of a power tool device. The term is so broad that one of ordinary skill in the art would not be able to determine its metes and bounds. The specification discusses various examples (worklight duration, worklight brightness, motor speed, etc.) but does not provide a limiting definition that would allow one of ordinary skill to determine which tool characteristics qualify as "operational parameters" within the meaning of the claims. Regarding the term claims 1, 10, 16: The claims recite that "the operational parameter value is user-selectable". This term is indefinite because the specification does not clearly define what makes a parameter "user-selectable." The specification describes graphical user interfaces with sliders, buttons, and touch screens (see Figures 31-36), but fails to define the essential characteristics that make a parameter "user-selectable" versus automatically determined or preset. Without such definition, one of ordinary skill in the art cannot determine whether a parameter that is selected through indirect means (e.g., voice commands, gesture recognition, automatic sensing) would fall within the scope of "user-selectable" as claimed. The claims recite that "control an operation of the power tool device based on the operational parameter value": This phrase is indefinite because it does not clearly define the relationship between the parameter value and the operation being controlled. The term "based on" is vague and does not indicate whether the control is direct, indirect, conditional, or proportional. The specification provides examples of specific implementations (e.g., controlling worklight duration based on a duration parameter), but does not provide a limiting definition that would allow one of ordinary skill to determine the scope of "control based on" for all operational parameters encompassed by the claims. Regarding antecedent basis in claim 10: Claim 10 recites "transmitting, via the first wireless communication circuit of the external device, first data including the operational parameter value to the power tool device" followed by "receiving, with a second controller of the power tool device via a second wireless communication circuit of the power tool device, the first data including the operational parameter value." The claim lacks proper antecedent basis because "the first data" is referenced before it is properly defined. It is unclear whether "the first data" refers to the data transmitted in the previous step or some other data. Regarding statutory class in claim 1: Claim 1 is indefinite because it mixes statutory classes. The claim is directed to a "communication system" but includes method steps such as "storing... an operational parameter value," "transmitting... first data," and "controlling... an operation." This mixing of apparatus and method elements within a single claim renders the claim indefinite because it is unclear whether infringement occurs when the system is made, sold, or used, or only when the claimed steps are performed. 07-36 AIA The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. Claims 13-15 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends. Regarding claim 13: Claim 13 depends from claim 10 and recites "receiving, with the first controller battery pack data from the battery pack via the first wireless communication circuit" and "transmitting, with the first controller via the first wireless communication circuit, the battery pack data to a server." However, claim 10 is directed to a method of "controlling a power tool device" and does not require or mention a battery pack or server. The limitations of claim 13 introduce entirely new elements (battery pack, server) that are not present in the base claim, and therefore fail to further limit the subject matter of claim 10 but instead attempt to broaden the scope of the claim. Regarding claims 14-15: These claims depend from claim 13 and inherit the same deficiency. They further describe the battery pack data and operational parameter but do not cure the fundamental issue that claim 13 fails to properly depend from claim 10. Double Patenting 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp. 08-34 Claims 1-7, and 10-19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Application 18456728. Although the claims at issue are not identical, they are not patentably distinct from each other because as follows: Claims of instant application 18797657 Claims of application 18456728 1 . A communication system comprising: an external device including a first wireless communication circuit and a first controller, the first controller including a first electronic processor and a first memory, wherein the first controller is configured to: store an operational parameter value of an operational parameter of a power tool device, wherein the operational parameter value is user-selectable and is set based on the first controller receiving a user input, transmit first data including the operational parameter value to the power tool device, and transmit a firmware upgrade to the power tool device; and the power tool device including: a second wireless communication circuit configured to wirelessly communicate with the external device, and a second controller including a second electronic processor and a second memory, the second controller coupled to the second wireless communication circuit and configured to: receive, via the second wireless communication circuit and from the external device, the first data including the operational parameter value, control an operation of the power tool device based on the operational parameter value, receive, via the second wireless communication circuit and from the external device, the firmware upgrade, and upgrade firmware of the second controller based on the firmware upgrade received from the external device. 1. A communication system comprising: an external device including a first wireless communication circuit and a first controller, the first controller including a first electronic processor and a first memory, wherein the first controller is configured to: store a mode of operation of a power tool, wherein the mode includes one or more power tool operational parameter values each corresponding to a power tool operational parameter, wherein at least one of the one or more power tool operational parameter values is user-selectable and is set based on the first controller receiving a user input, transmit first data corresponding to the mode to the power tool, and transmit a firmware upgrade to the power tool; the power tool including: a housing having a device receiving portion configured to receive and couple to a power tool battery pack, a brushless direct current (DC) motor within the housing and having a rotor and a stator, a trigger configured to be actuated to activate the brushless DC motor, a second wireless communication circuit configured to wirelessly communicate with the external device, and a second controller including a second electronic processor and a second memory, the second controller coupled to the second wireless communication circuit and configured to: receive, via the second wireless communication circuit and from the external device, the first data corresponding to the mode, determine that the trigger has been actuated, control, in response to determining that the trigger has been actuated and while the trigger remains actuated, the brushless DC motor based on the one or more power tool operational parameter values of the mode included in the first data, receive, via the second wireless communication circuit and from the external device, the firmware upgrade, and upgrade firmware of the second controller based on the firmware upgrade received from the external device. 2 . The communication system of claim 1, wherein the power tool device includes a power tool. 2. The communication system of claim 1, wherein the second controller is configured to control the brushless DC motor based on the one or more power tool operational parameter values of the mode included in the first data by automatically ceasing operation of the brushless DC motor in response to determining that a monitored characteristic of the power tool has reached a desired value. 3 . The communication system of claim 2, wherein the power tool comprises: a housing having a device receiving portion configured to receive and couple to a power tool battery pack; a brushless direct current (DC) motor within the housing and having a rotor and a stator; and a trigger configured to be actuated to activate the brushless DC motor; wherein the second controller is configured to: determine that the trigger has been actuated, and control the operation of the power tool device based on the operational parameter value by controlling, in response to determining that the trigger has been actuated and while the trigger remains actuated, the brushless DC motor in accordance with the operational parameter value. Claim 1 4. The communication system of claim 1, wherein the power tool device includes a battery pack. Claim 1 5. The communication system of claim 4, wherein the first controller is configured to: receive battery pack data from the battery pack via the first wireless communication circuit; and transmit, via the first wireless communication circuit, the battery pack data to a server for storage such that the battery pack data is accessible to a user from the server and from a plurality of different locations via the external device, a second external device, or both the external device and the second external device. 9. The communication system of claim 1, wherein the first controller is configured to: receive power tool data from the power tool via the first wireless communication circuit; and transmit, via the first wireless communication circuit, the power tool data to a server for storage such that the power tool data is accessible to a user from the server and from a plurality of different locations via the external device, a second external device, or both the external device and the second external device. 6 . The communication system of claim 5, wherein the battery pack data includes at least one of the group consisting of battery pack status, battery pack state of charge, battery pack operation statistics, battery pack identification, battery pack discharge and charge cycles, battery pack maintenance data, and combinations thereof. 10. The communication system of claim 9, wherein the power tool data includes at least one of the group consisting of power tool status, power tool operation statistics, power tool identification, stored power tool usage information, power tool maintenance data, and combinations thereof. 7. The communication system of claim 1, wherein the power tool device includes a battery pack charger. Claim 1 10 . A method of controlling a power tool device, the method comprising: storing, with a first controller of an external device and in a first memory of the first controller, an operational parameter value of an operational parameter of the power tool device, wherein the operational parameter value is user-selectable and is set based on the first controller receiving a user input, and wherein the first controller includes a first electronic processor; transmitting, via a first wireless communication circuit of the external device, first data including the operational parameter value to the power tool device; transmitting, via the first wireless communication circuit, a firmware upgrade to the power tool device; receiving, with a second controller of the power tool device via a second wireless communication circuit of the power tool device, the first data including the operational parameter value, the second controller including a second electronic processor and a second memory; controlling, with the second controller, an operation of the power tool device based on the operational parameter value; receiving, with the second controller via the second wireless communication circuit, the firmware upgrade from the external device, and upgrading, with the second controller, firmware of the second controller based on the firmware upgrade received from the external device. 11. A method of controlling a power tool, the method comprising: storing, with a first controller of an external device and in a first memory of the first controller, a mode of operation of the power tool, wherein the mode includes one or more power tool operational parameter values each corresponding to a power tool operational parameter, and wherein the first controller includes a first electronic processor; transmitting, via a first wireless communication circuit of the external device, first data corresponding to the mode to the power tool; transmitting, via the first wireless communication circuit, a firmware upgrade to the power tool; receiving, with a second controller of the power tool via a second wireless communication circuit of the power tool, the first data corresponding to the mode from the external device, the second controller including a second electronic processor and a second memory, the power tool including a housing having a device receiving portion configured to receive and couple to a power tool battery pack, a brushless direct current (DC) motor within the housing and having a rotor and a stator, and a trigger configured to be actuated to activate the brushless DC motor; determining, with the second controller, that the trigger has been actuated; controlling, with the second controller and in response to determining that the trigger has been actuated and while the trigger remains actuated, the brushless DC motor based on the one or more power tool operational parameter values of the mode included in the first data; receiving, with the second controller via the second wireless communication circuit, the firmware upgrade from the external device, and upgrading, with the second controller, firmware of the second controller based on the firmware upgrade received from the external device. 11 . The method of claim 10, wherein the power tool device includes a power tool. Claim 11 12 . The method of claim 10, wherein the power tool device includes a battery pack. Claim 11 13 . The method of claim 12, further comprising: receiving, with the first controller, battery pack data from the battery pack via the first wireless communication circuit; and transmitting, with the first controller via the first wireless communication circuit, the battery pack data to a server for storage such that the battery pack data is accessible to a user from the server and from a plurality of different locations via the external device, a second external device, or both the external device and the second external device. 9. The communication system of claim 1, wherein the first controller is configured to: receive power tool data from the power tool via the first wireless communication circuit; and transmit, via the first wireless communication circuit, the power tool data to a server for storage such that the power tool data is accessible to a user from the server and from a plurality of different locations via the external device, a second external device, or both the external device and the second external device. 14 . The method of claim 13, wherein the battery pack data includes at least one of the group consisting of battery pack status, battery pack state of charge, battery pack operation statistics, battery pack identification, battery pack discharge and charge cycles, battery pack maintenance data, and combinations thereof. 15 . The method of claim 10, wherein the operational parameter includes at least one of the group consisting of a work light on/off parameter, a work light duration parameter, a work light brightness parameter, and combinations thereof. 10. The communication system of claim 9, wherein the power tool data includes at least one of the group consisting of power tool status, power tool operation statistics, power tool identification, stored power tool usage information, power tool maintenance data, and combinations thereof. 16 . A power tool device comprising: a wireless communication circuit configured to wirelessly communicate with an external device; and a controller including an electronic processor and a memory, the controller coupled to the wireless communication circuit and configured to: receive, via the wireless communication circuit and from the external device, first data including an operational parameter value of an operational parameter of the power tool device, control an operation of the power tool device based on the operational parameter value, receive, via the wireless communication circuit, a firmware upgrade from the external device, and upgrade firmware of the controller based on the firmware upgrade received from the external device. 16. A power tool comprising: a housing having a device receiving portion configured to receive and couple to a power tool battery pack; a brushless direct current (DC) motor within the housing and having a rotor and a stator; a trigger configured to be actuated to activate the brushless DC motor; a wireless communication circuit configured to wirelessly communicate with an external device; and a controller including an electronic processor and a memory, the controller coupled to the wireless communication circuit and configured to: receive, via the wireless communication circuit and from the external device, first data corresponding to a mode of operation of the power tool, wherein the mode includes one or more power tool operational parameter values each corresponding to a power tool operational parameter, determine that the trigger has been actuated, control, in response to determining that the trigger has been actuated and while the trigger remains actuated, the brushless DC motor based on the one or more power tool operational parameter values of the mode included in the first data, receive, via the wireless communication circuit, a firmware upgrade from the external device, and upgrade firmware of the controller based on the firmware upgrade received from the external device. 17 . The power tool device of claim 16, wherein the power tool device includes a power tool that comprises: a housing having a device receiving portion configured to receive and couple to a power tool battery pack; a brushless direct current (DC) motor within the housing and having a rotor and a stator; and a trigger configured to be actuated to activate the brushless DC motor; wherein the controller is configured to: determine that the trigger has been actuated, and control the operation of the power tool device based on the operational parameter value by controlling, in response to determining that the trigger has been actuated and while the trigger remains actuated, the brushless DC motor in accordance with the operational parameter value. Claim 16 19 . The power tool device of claim 18, wherein the battery pack data includes at least one of the group consisting of battery pack status, battery pack state of charge, battery pack operation statistics, battery pack identification, battery pack discharge and charge cycles, battery pack maintenance data, and combinations thereof. Claim 10 Contact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUHAMMAD S ISLAM whose telephone number is (571)272-8439. The examiner can normally be reached 9:30am to 6:00pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Colon-Santana can be reached on 571-272-2060. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MUHAMMAD S ISLAM/Primary Examiner, Art Unit 2846 Application/Control Number: 18/797,657 Page 2 Art Unit: 2846 Application/Control Number: 18/797,657 Page 3 Art Unit: 2846 Application/Control Number: 18/797,657 Page 5 Art Unit: 2846 Application/Control Number: 18/797,657 Page 6 Art Unit: 2846 Application/Control Number: 18/797,657 Page 7 Art Unit: 2846 Application/Control Number: 18/797,657 Page 8 Art Unit: 2846 Application/Control Number: 18/797,657 Page 9 Art Unit: 2846 Application/Control Number: 18/797,657 Page 10 Art Unit: 2846 Application/Control Number: 18/797,657 Page 11 Art Unit: 2846 Application/Control Number: 18/797,657 Page 12 Art Unit: 2846 Application/Control Number: 18/797,657 Page 13 Art Unit: 2846 Application/Control Number: 18/797,657 Page 14 Art Unit: 2846 Application/Control Number: 18/797,657 Page 15 Art Unit: 2846 Application/Control Number: 18/797,657 Page 16 Art Unit: 2846 Application/Control Number: 18/797,657 Page 17 Art Unit: 2846 Application/Control Number: 18/797,657 Page 18 Art Unit: 2846 Application/Control Number: 18/797,657 Page 19 Art Unit: 2846 Application/Control Number: 18/797,657 Page 20 Art Unit: 2846 Application/Control Number: 18/797,657 Page 21 Art Unit: 2846 Application/Control Number: 18/797,657 Page 22 Art Unit: 2846 Application/Control Number: 18/797,657 Page 23 Art Unit: 2846 Application/Control Number: 18/797,657 Page 24 Art Unit: 2846 Application/Control Number: 18/797,657 Page 25 Art Unit: 2846 Application/Control Number: 18/797,657 Page 26 Art Unit: 2846 Application/Control Number: 18/797,657 Page 27 Art Unit: 2846 Application/Control Number: 18/797,657 Page 28 Art Unit: 2846 Application/Control Number: 18/797,657 Page 29 Art Unit: 2846 Application/Control Number: 18/797,657 Page 30 Art Unit: 2846 Application/Control Number: 18/797,657 Page 31 Art Unit: 2846 Application/Control Number: 18/797,657 Page 32 Art Unit: 2846 Application/Control Number: 18/797,657 Page 33 Art Unit: 2846 Application/Control Number: 18/797,657 Page 34 Art Unit: 2846 Application/Control Number: 18/797,657 Page 35 Art Unit: 2846 Application/Control Number: 18/797,657 Page 36 Art Unit: 2846 Application/Control Number: 18/797,657 Page 37 Art Unit: 2846
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