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 .
Claim Objections
Claims 1 and 2 are objected to because of the following informalities: in
claim 1, “the battery” should be --the battery unit--. In claim 2, “its” should be replaced by a proper antecedent name. Appropriate correction is required.
Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a
nonstatutory double patenting (NSDP) rejection. A complete reply requires that
the terminal disclaimer be accompanied by a reply requesting reconsideration of
the prior Office action. Even where the NSDP rejection is provisional the reply
must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final
Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR
1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c)
may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may
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PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-
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3. Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No.12,128,573 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 discloses all the limitations of claim 1 including that the oscillating body moves relative to the electric motor. It should be noted that the oscillating body inherently does not move with the motor and moves relative to the motor. In fact, the oscillating body rotated by the drive shaft of the motor while the motor itself is stationary is held in the chassis.
Claim Rejections - 35 USC § 112
4 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.
5. Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 15, the transitional phrase “characterized in that,” is not recognized as a proper claim transition in U.S. patent practice and creates uncertainty as to the scope of the claim. It is not clear what is being characterized.
Additionally, claim 15 recites “there is the PCB at a lateral side of the chassis,” which is informal and unclear, failing to distinctly define the structural relationship of the PCB to the chassis.
Claim Rejections - 35 USC § 103
6. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
7. Claims 1-2 and 4-15 are rejected under 35 U.S.C. 103 as being unpatentable over Poltka (10,987,203) in view of Muraguchi et al. (6,430,813), hereinafter Maraguchi. Regarding claim 1, Poltka teaches an electrically driven device comprising a housing (302, 326) and a chassis 348 (Fig. 3), wherein the chassis comprises a skeleton (defined by compartments to accommodates the battery, motor and PCB; Fig. 3) for receiving an electric motor 314 having a first drive shaft 312 extending in a first direction, a battery unit 334, a printed circuit board (PCB) 344, and an oscillating body 310 having a second drive shaft 308, wherein the chassis is provided with openings or cavities (defined by spaces or cavities to accommodate the components such as the motor, battery and PCB; Figs. 2-3) for receiving the electric motor 314 and the battery unit 334 side by side in a second direction transverse to the first direction and is provided with the printed circuit board (PCB) 344 at a lateral side, also side by side to one of the electric motor and the battery unit, wherein the battery unit 334 is located between the printed circuit board (PCB) 344 and the electric motor 314, and an axis perpendicular to the first drive shaft 312 of the electric motor passes through the first drive shaft of the electric motor, the battery, 334 and the printed circuit board, wherein the oscillating body moves relative to the electric motor. See Figs. 1-3 in Poltka. It should be noted that the printed circuit board, which is located at the side of the battery, is extended far enough to overlap a portion of the one or both drive shafts 312, 316 of the motor which are at least partially also extended within the motor itself (as is evident in JP H04116955 H), hereinafter JP ‘955). JP ‘955 teaches that the drive shaft 17 is extended along the length of the motor 7. See Fig. 1 in JP ‘955. In this case, the
the axis perpendicular to the first drive shaft (312 or 318) of the electric motor passes through the first drive shaft of the electric motor, the battery, 334 and the printed circuit board (PCB).
Poltka does not explicitly teach that the skeleton is a plastic skeleton. However, Maraguchi teaches an electrically driven device including a housing 1 and a plastic skeleton 2 (col. 5, lines 20-22) for receiving an electric motor 4 and a battery unit 3 (defined at least by one of the batteries 3; Fig. 2). Muraguchi also teaches an oscillating body 6 having a second drive shaft 13 (Fig. 1), and a printed circuit board 20. Maruguchi also teaches that the skeleton 2 includes an interior space or cavity to accommodate the printed circuit board 20 at a lateral side, wherein printed circuit board 20 is located adjacent the battery unit 3 and the side wall of the plastic skeleton 2. See Figs. 1-7 in Muraguchi. Therefore, it would have been obvious to a person of ordinary skill in the art to form Poltka’s skeleton from plastic, as taught by Muraguchi, in order to reduce device weight.
Regarding claim 2, Poltka teaches everything noted above including that the chassis 348 with its skeleton comprises at least an upper wall, a lower wall, a rear wall and a front wall, wherein the front or the rear wall comprise the openings or cavities for receiving the battery unit 334 and the motor 314 and wherein the PCB 344 is fixed at the lateral side of the chassis.
Regarding claim 4, Poltka teaches everything noted above including a first longitudinal axis is defined along the second drive shaft 308, a second longitudinal axis is defined along the first drive shaft 312 and the electric motor comprises inherently a drive pin rotatable eccentrically about the second longitudinal axis 308, wherein the drive pin is adapted to be mechanically coupled to the oscillating body 310.
Regarding claim 5, Poltka teaches everything noted above including that the housing and/or the chassis comprises press ribs (defined by the ribs on both sides of the motor 314; see Fig. 3) to secure the motion of the oscillating body in at least one direction.
Regarding claim 6, Poltka teaches everything noted above including that the electric motor 314 is secured to at least one of the housing, a housing component, the chassis or a chassis component.
Regarding claim 7, Poltka teaches everything noted above including that at least one of the housing, a housing component, the chassis or a chassis component inherently is formed by injection molding. In addition, the method of forming the apparatus has nothing to do with the apparatus itself. Therefore, the method of forming the housing, housing component, chassis or chassis component has nothing to the be the apparatus as an electric driven device and fails to further limits the apparatus.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979).
Regarding claim 8, Poltka teaches everything noted above including that the electrically driven device further comprises a cap 302 (as the housing could be alternatively defined by cap 326), wherein the cap is removably attached to the housing 326 or one of the housing components, and wherein the cap is at least covering a button to actuate the electrically driven device.
Regarding claim 9, Poltka teaches everything noted above including that the electric motor and the battery unit are sealed against moisture penetration, by seals of at least one of the housing, a housing component, the chassis, a chassis component or a cap.
Regarding claim 10, Poltka teaches everything noted above including a first longitudinal axis is defined along the second drive shaft 308, a second longitudinal axis is defined along the first drive shaft 312 with the second longitudinal axis passing through the oscillating body, and a third longitudinal axis is defined through the center of a body of the battery unit 334, wherein the second longitudinal axis and the third longitudinal axis are parallel and offset to one another to the first longitudinal axis. It should be noted that the longitudinal axis of the battery unit 334, the longitudinal axis of the first drive shaft 312, and the longitudinal axis of the second drive shaft 308 are parallel and offset from one another.
Regarding claim 11, Poltka teaches everything noted above including that the second longitudinal axis and the first longitudinal axis and the third longitudinal axis and the first longitudinal axis are offset by a different offset distance.
Regarding claim 12, Poltka teaches everything noted above including that the second longitudinal axis (of the first drive shaft 312) and the third longitudinal axis (of the battery unit 334) are offset from the first longitudinal axis in opposite transverse directions.
Regarding claim 13, Poltka teaches everything noted above including that the housing (302, 326) and/or the chassis comprise at least two components.
Regarding claim 14, Poltka teaches everything noted above including that the at least two components. Poltka does not explicitly disclose that the two components comprise a soft and a hard component. However, Examiner takes Official Notice that the use of a soft outer grip and a harder inner shell for the housing of handheld tools is well known in the art.
Regarding claim 15, as best understood, Poltka, as modified by Muraguchi, teaches an electrically driven device with a housing (302, 326) comprising a chassis 348, wherein the chassis comprises a plastic skeleton (as taught by Muraguchi) for receiving an electric motor 314 having a first drive shaft 312, a battery unit 334, a PCB 344, an oscillating body 310 having a second drive shaft 308, characterized in that the chassis has openings or cavities in which the motor and the battery unit side by side are received and there is the PCB at a lateral side of the chassis, also side by side to one of the motor and the battery unit.
8. Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hirokazu et al. (5,193,275), hereinafter Hirokazu, in view of Poltka and Muraguchi . Regarding claim 1, Hirokazu teaches an electrically driven device comprising a housing 21 and a chassis (23, 24), wherein the chassis comprises a skeleton (Fig. 6) for receiving an electric motor 50 having a first drive shaft 51 extending in a first direction, a battery unit 80, and an oscillating body (60; or alternatively defined by 55) having a second drive shaft (61; or alternatively defined as 56), wherein the chassis is provided with openings or cavities (defined by spaces or cavities 25, 26 and other cavities shown in Fig. 6) for receiving the electric motor 50 and the battery unit 80 side by side in a second direction transverse to the first direction, also side by side to one of the electric motor and the battery unit, wherein the oscillating body moves relative to the electric motor. See Figs. 1-5 in Hirokazu.
Hirokazu does not explicitly teach that the skeleton is a plastic skeleton; a printed circuit board (PCB); a cavity in the chesses to accommodate the printed circuit board (PCB) at a lateral side, wherein the battery unit 80 is located between the printed circuit board (PCB) and the electric motor; and an axis perpendicular to the first drive shaft of the electric motor passes through the first drive shaft of the electric motor, the battery and the printed circuit board. However, Poltka teaches an electrically driven device including a printed circuit board (PCB) 344 at a lateral side, also side by side to one of an electric motor 314 and a battery unit 334, wherein the battery unit 334 is located between the printed circuit board (PCB) 344 and the electric motor 314, and an axis perpendicular to a first drive shaft 312 of the electric motor passes through the first drive shaft of the electric motor, the battery, 334 and the printed circuit board. See Figs. 1-3 in Poltka. It should be noted that the printed circuit board, which is located at the side of the battery, is extended far enough to overlap a portion of the one or both drive shafts 312, 316 of the motor which are at least partially also extended within the motor itself (as is evident in JP H04116955 H), hereinafter JP ‘955). JP ‘955 teaches that the drive shaft 17 is extended along the length of the motor 7. See Fig. 1 in JP ‘955. In this case, the the axis perpendicular to the first drive shaft (312 or 318) of the electric motor passes through the first drive shaft of the electric motor, the battery, 334 and the printed circuit board (PCB). It would have been obvious to a person of ordinary skill in the art to place a PCB beside the battery in the chassis of Hirokazu’s electric driven device, as taught by Poltka, in order to electrically control the motor.
Maraguchi also teaches an electrically driven device including a housing 1 and a plastic skeleton 2 (col. 5, lines 20-22) for receiving an electric motor 4 and a battery unit 3 (defined at least by one of the batteries 3; Fig. 2). Muraguchi also teaches an oscillating body 6 having a second drive shaft 13 (Fig. 1), and a printed circuit board 20 which is long enough to extend along the entire length of a battery unit 8. See Figs. 1-7 in Muraguchi. Therefore, it would have been obvious to a person of ordinary skill in the art to form the skeleton of Hirokazu’s electric driven device, as modified by Poltka, from plastic, as taught by Muraguchi, in order to reduce device weight.
Regarding claim 2, Hirokazu, as modified by Poltka, teaches everything noted above including that the chassis with its skeleton comprises at least an upper wall, a lower wall, a rear wall and a front wall, wherein the front or the rear wall comprise the openings or cavities for receiving the battery unit 80 and the motor 50 and wherein the PCB (344 in Fig. 3 of Poltka) is fixed at the lateral side of the chassis.
Regarding claim 3, Hirokazu teaches everything noted above including that the second drive shaft 56 is adapted to be mechanically coupled to at least one cutter unit 30.
Regarding claim 4, Hirokazu teaches everything noted above including a first longitudinal axis is defined along the second drive shaft 61, a second longitudinal axis is defined along the first drive shaft 51 and the electric motor comprises a drive pin 56 rotatable eccentrically about the second longitudinal axis 51, wherein the drive pin 56 is adapted to be mechanically coupled to the oscillating body 60.
Regarding claim 5, Hirokazu teaches everything noted above including that the housing and/or the chassis comprises press ribs (defined by the ribs on both sides of the oscillating body 60; see Fig. 5) to secure the motion of the oscillating body in at least one direction.
Regarding claim 6, Hirokazu teaches everything noted above including that the electric motor 50 is secured to at least one of the housing, a housing component, the chassis (within the enclosed space 26 of the chassis 23, 24; Fig. 6) or a chassis component.
Regarding claim 7, Hirokazu teaches everything noted above including that at least one of the housing, a housing component, the chassis or a chassis component inherently is formed by injection molding. In addition, the method of forming the apparatus has nothing to do with the apparatus itself. Therefore, the method of forming the housing, housing component, chassis or chassis component has nothing to the be the apparatus as an electric driven device and fails to further limits the apparatus.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979).
Regarding claim 8, Hirokazu teaches everything noted above including that the electrically driven device further comprises a cap 40, wherein the cap is removably attached to the housing 21 or one of the housing components, and wherein the cap is at least covering (at least the top portion of) a button 102 to actuate the electrically driven device.
Regarding claim 9, Hirokazu teaches everything noted above including that the electric motor and the battery unit are sealed against moisture penetration, by seals of at least one of the housing, a housing component, the chassis (23, 24), a chassis component or a cap.
Regarding claim 10, Hirokazu teaches everything noted above including a first longitudinal axis is defined along the second drive shaft 56, a second longitudinal axis is defined along the first drive shaft 51 with the second longitudinal axis passing through the oscillating body, and a third longitudinal axis is defined through the center of a body of the battery unit 80, wherein the second longitudinal axis and the third longitudinal axis are parallel and offset to one another to the first longitudinal axis. It should be noted that the longitudinal axis of the battery unit 80, the longitudinal axis of the first drive shaft 51, and the longitudinal axis of the second drive shaft are parallel and offset from one another.
Regarding claim 11, Hirokazu teaches everything noted above including that the second longitudinal axis and the first longitudinal axis and the third longitudinal axis and the first longitudinal axis are offset by a different offset distance.
Regarding claim 12, Hirokazu teaches everything noted above including that the second longitudinal axis (of the first drive shaft 51) and the third longitudinal axis (of the battery unit 80) are offset from the first longitudinal axis in opposite transverse directions.
Regarding claim 13, Hirokazu teaches everything noted above including that the housing 21 (alternatively could be defined as housing 21, 40) and/or the chassis (23, 24) comprise at least two components.
Regarding claim 14, Hirokazu teaches everything noted above including that the at least two components. Hirokazu does not explicitly disclose that the two components comprise a soft and a hard component. However, Examiner takes Official Notice that the use of a soft outer grip and a harder inner shell for the housing of handheld tools is well known in the art.
Regarding claim 15, as best understood, Hirokazu, as modified by Poltka and Muraguchi, teaches an electrically driven device with a housing (21, 41) comprising a chassis (23, 24), wherein the chassis comprises a plastic skeleton (shown in Fig. 6 of Hirokazu; and the skeleton being formed from plastic is taught by Muraguchi) for receiving an electric motor 50 having a first drive shaft 51, a battery unit 80, a PCB (334; shown in Fig. 3 of Poltka), an oscillating body 55 having a second drive shaft 56, characterized in that the chassis has openings or cavities in which the motor and the battery unit side by side are received and there is the PCB at a lateral side of the chassis, also side by side to one of the motor and the battery unit.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to
applicant’s disclosure.
Iwahori (2011/0041269 A1), Ninomiya et al. (4,719,698), and Abate et al. (8,298,182
B2), teach an electrically driven device including a motor, a battery unit, and a
printed circuit board.
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