DETAILED ACTION
This action is responsive to the following communications: Application response filed on August 20,2026.
Claims 21-40 are presented for Examination. Claims 21, 34 and 38 are independent. Claim 34 is amended.
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 .
Response to Arguments
Applicants’ arguments filed dated 08/20/2026 have been fully considered but they are not persuasive for the reasons set forth below:
The written description requirement demands that the specification clearly convey to one skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Possession cannot be established merely by asserting that a PHOSITA possesses the general knowledge to construct or supply the missing features (see Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010); In re Ruschig, 379 F.2d 990 (CCPA 1967)).
In Paragraph [0056] merely offers a passing, aspirational mention: "In some embodiments, a boost converter (not shown) may be used when charging the supercapacitor(s) 340". The specification fails to provide any structural detail, schematic layout, or operational coupling showing how the claimed boost converter is connected to the first switch, the battery pack, the capacitor, and the controller. An invitation to a PHOSITA to supply the specific architecture and integration logic does not satisfy the written description requirement under MPEP § 2163.02.
Accordingly, the rejection of claims 21–40 under 35 U.S.C. § 112(a) is maintained.
For Claim 34, Applicant has amended claim 34 to delete the erroneous phrase "actuator of has" and replace it with "actuator has". This amendment cures the typographical defect. Therefore, the rejection of claim 34 under 35 U.S.C. § 112(b) based on this typographical error is WITHDRAWN.
For Claims 21 and 38, Applicant argues that claims 21 and 38 are definite because a PHOSITA understands the function of a boost converter and because claim 34 was not rejected on the same basis.
Based on MPEP § 2173.05(a), Examiner understand that each claim must independently define its metes and bounds. The failure to reject claim 34 on this ground in the previous Office Action does not preclude or waive the rejection as to claims 21 and 38, nor does it render the claims definite. Claims 21 and 38 recite a boost converter "to charge the at least one capacitor" without defining whether the boost converter is connected in series, in parallel, or via intermediate active circuitry relative to the first switch and capacitor acting like a battery charger where the apparent meaning of the boost converter is to boost a voltage like a step-up transformer. Because the claim fails to clearly explain the boundaries of the charging circuit loop, the scope remains indefinite.
Accordingly, the rejection of claims 21 and 38 (and their dependent claims) under 35 U.S.C. § 112(b) is maintained.
Response to the Rejection under 35 U.S.C. § 102(a)(1)
Applicant contends that Miller fails to disclose a boost converter, a capacitor, a first switch between the battery and boost converter, a second switch, and a controller. Applicant specifically argues that Miller merely discloses a PWM modulation technique to allow a temporary boost in power, which Applicant asserts is fundamentally different from a boost converter circuit.
Applicant’s arguments are unpersuasive:
Based on MPEP § 2111, pending claims must be given their broadest reasonable interpretation in light of the specification as it would be interpreted by one of ordinary skill in the art. Claims 21, 34, and 38 do not restrict the "boost converter" to any specific circuit schematic layout (e.g., a specific configuration of dedicated inductor, diode, and capacitor).
Miller discloses power electronics comprising switching FETs 452a–c and PWM control circuitry that operate to selectively increase/boost voltage and power supplied to downstream loads (see Miller at paragraph [0039]: "Temporary boost is possible via bypass and/or an increased PWM duty cycle for a short duration"). In power electronic circuits, switching elements operated via PWM duty cycles across inductive and capacitive loads inherently constitute boost-converting circuitry.
As set forth in the previous rejection, Miller discloses capacitive elements utilized for power smoothing and energy management across the DC bus ([0039]). FET switches 452a–c control whether power from battery packs 410 is supplied to the boosting circuit (first switch), while the downstream H-Bridge 462 controls power delivery to the output/load (second switch) under the control of electronic controller 430. The parallel configuration 200 includes a PCBA 230, which uses pulse-width modulation (PWM) speed control and/or bypass capacitors to maintain the speed of the motor 220.
Applicant argues that paragraph [0056] of the present application indicates that a boost converter avoids PWM switching losses, whereas Miller relies on PWM. However, limitations appearing only in the specification cannot be read into the claims (see MPEP § 2111.01(II)). Claims 21, 34, and 38 do not exclude PWM switching or restrict the boost converter to a non-PWM topology.
Because all recited elements under their broadest reasonable interpretation are disclosed by Miller, the rejection under 35 U.S.C. § 102(a)(1) is maintained.
Claim Rejections - 35 USC § 112
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 21-40 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement.
Claims 21, 34 and 38 recite "boost converter” but the specification primarily describes a system with switches directly connecting a battery to supercapacitor without explicit discussion of a boost converter structure or operation about charge the at least one capacitor. While PG pub publication para. [0056] mentions “In some embodiments, a boost converter (not shown) may be used when charging the supercapacitor(s) 340”, this general statement does not provide sufficient written description support for the specific structural and functional limitations claimed regarding the boost converter’s integration with the switched and controller.
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 21, and 38 are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the applicant regards as the invention.
In Claims 21and 38, the limitations "boost converter" lacks a clear structural
relationship regarding how it charges the capacitor, rendering the metes and bounds of the circuit path ambiguous.
Appropriate correction is requested.
Since the independent claims 21, and 38 are rejected under 35 U.S.C. 112(b) and hence the dependent claims of 21, and 38 are also rejected under 35 U.S.C. 112(b).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 21-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0333666 A1 to Miller et al. (hereinafter "Miller").
Regarding independent claim 21, Miller discloses a battery pack powered device (e.g., a power tool like a miter saw or drill, see Abstract & Para [0003]) comprising:a circuit configured to provide a power output, the circuit including:at least one capacitor (Miller inherently utilizes capacitive elements within its power smoothing and PWM control logic circuits; further, energy storage components for voltage management are disclosed; [0039]),
a boost converter ([0039]; “The PWM modulation technique can be used to allow the control of the power supplied to electrical devices (e.g., power tools), especially to inertial loads such as motors. PWM can also allow a temporary boost in power. Temporary boost is possible via bypass and/or an increased PWM duty cycle for a short duration”),
a first switch connected between a battery pack and the boost converter, the first switch operable to control whether power is provided from the battery pack to the boost converter to charge the at least one capacitor, and (FETs (Field Effect Transistors) 452a, 452b, 452c functioning as switching elements between the battery packs 410 (power source) and the motor/load — see [0045]–[0052] and FIGS. 4–7. Specifically, Miller discloses: "The PWM battery FET control 450 determines the duty cycle of each PWM signal based on characteristics of the associated battery pack 410 determined by the controller 430." [0052]. The FETs 452 act as switches between the battery packs (power sources) and the circuit, and the controller 430 controls whether power flows from the battery packs into the circuit that controls charging. The battery voltage monitor 442 and blocking current monitor 444 (FIG. 4) further confirm that the controller 430 monitors and controls power flow into the downstream circuit elements including any capacitors therein),
a second switch connected between the at least one capacitor and the power output (FIG. 4; [0064]. The controller 430 controls the H-Bridge to connect power to the motor corresponding to the second switch controlling power from the supercapacitor (bypass capacitor) to the load device (motor)), the second switch operable to control whether power is provided from the at least one capacitor to the power output; and
a controller configured to control the first switch and the second switch (controller 430 as an electronic processor. The battery voltage monitor 442 is coupled to voltage sensors 446 to measure the state of charge of each battery pack 410; [0042]: "The battery monitor 442 is coupled to voltage sensors 446 to measure the state of charge of each battery pack 410." The controller 430 controls the FETs 452 (first switch) and H-Bridge (second switch;462) based on these voltage measurements).
Regarding claims 22-23,25-26, 35-36 and 40, Miller discloses that a motor configured to receive power from the battery pack when a load is below a threshold (selectively applying power to a motor depending on load requirements and battery state of charge; claim 11).
Regarding claim 27, Miller discloses that wherein the controller is further configured to determine that an actuator has been actuated (Fig.4: 444).
Regarding claim 28, Miller discloses that wherein the controller is further configured to control the second switch to allow power to be provided from the at least one capacitor to the power output in response to determining that the actuator has been actuated (Fig.4:462,458).
Regarding claim 24, Miller discloses that a housing, wherein the circuit and the controller are located within the housing ([0002]).
Regarding claim 29, Miller discloses that wherein the controller is further configured to control the second switch to prevent power from being provided from the at least one capacitor to the power output in response to determining that the voltage of the at least one capacitor is less than the voltage threshold (Fig.4:442).
Regarding claim 30, Miller discloses that wherein the controller is further configured to control the first switch to allow power to be provided from the battery pack to the boost converter to charge the at least one capacitor in response to determining that the voltage of the at least one capacitor is less than the voltage threshold ((FETs (Field Effect Transistors) 452a, 452b, 452c functioning as switching elements between the battery packs 410 (power source) and the motor/load — see [0045]–[0052] and FIGS. 4–7. Specifically, Miller discloses: "The PWM battery FET control 450 determines the duty cycle of each PWM signal based on characteristics of the associated battery pack 410 determined by the controller 430." [0052]. The FETs 452 act as switches between the battery packs (power sources) and the circuit).
Regarding claim 31, Miller discloses that wherein the controller is further configured to control the first switch without using a pulse-width modulation (“PWM”) signal (Fig.4:444)
Regarding claim 32, Miller discloses that wherein the battery pack powered device is one of a nailer, a reciprocating saw, a circular saw, and a drill ([0002]).
Regarding claim 33, Miller discloses that wherein the power output is configured to be connected to a jumpstarting device used to start a vehicle engine ([0030]).
Regarding Claims 38 and 39, the features are substantially similar to Claims 21 and 22 and are anticipated by Miller for the same reasons detailed above.
Regarding independent claim 34, Miller discloses that a method of controlling a battery pack powered device (Fig.4), the method comprising:
determining, using a controller, whether a voltage of a capacitor is greater than or equal to a voltage threshold(selectively applying power to a motor depending on load requirements and battery state of charge; claim 11);
controlling, using the controller, a first switch to prevent power from being provided by a battery pack to a boost converter, the boost converter connected to the capacitor, in response to determining that the voltage of the capacitor is greater than or equal to the voltage threshold, the first switch being connected between the battery pack and the boost converter(FETs (Field Effect Transistors) 452a, 452b, 452c functioning as switching elements between the battery packs 410 (power source) and the motor/load — see [0045]–[0052] and FIGS. 4–7. Specifically, Miller discloses: "The PWM battery FET control 450 determines the duty cycle of each PWM signal based on characteristics of the associated battery pack 410 determined by the controller 430." [0052]. The FETs 452 act as switches between the battery packs (power sources) and the circuit, and the controller 430 controls whether power flows from the battery packs into the circuit that controls charging. The battery voltage monitor 442 and blocking current monitor 444 (FIG. 4) further confirm that the controller 430 monitors and controls power flow into the downstream circuit elements including any capacitors therein);
determining, using the controller, that an actuator has been actuated; and
controlling, using the controller, a second switch to allow power to be provided from the capacitor to a power output in response to determining that the actuator has been actuated, the second switch being connected between the capacitor and the power output (FIG. 4; [0064]. The controller 430 controls the H-Bridge to connect power to the motor corresponding to the second switch controlling power from the supercapacitor (bypass capacitor) to the load device (motor)), the second switch operable to control whether power is provided from the at least one capacitor to the power output; and
a controller configured to control the first switch and the second switch (controller 430 as an electronic processor. The battery voltage monitor 442 is coupled to voltage sensors 446 to measure the state of charge of each battery pack 410; [0042]: "The battery monitor 442 is coupled to voltage sensors 446 to measure the state of charge of each battery pack 410." The controller 430 controls the FETs 452 (first switch) and H-Bridge (second switch;462) based on these voltage measurements).
Regarding claim 37, Miller discloses that wherein the battery pack powered device is one of a nailer, a reciprocating saw, a circular saw, and a drill ([0002]).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Colon-Santana can be reached at 571-272-2060. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MUHAMMAD S ISLAM/
Primary Examiner, Art Unit 2837
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