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 .
Response to Amendment
Receipt is acknowledged of an amendment, filed 24 December 2025, which has been placed of record and entered in the file.
Status of the claims:
Claims 1-5 and 7-20 are pending.
Claims 1-4, and 10-12 are amended.
Claims 13-20 are new.
Claim 6 is canceled.
Specification and Drawings:
Amendments to the specification and drawings have not been submitted in the amendment filed 24 December 2025.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
Telephone restriction practice is not permitted because it appears applicant has legal representation but a valid power of attorney has not been filed in the present application. Providing representative information in an Application Data Sheet (ADS) does not constitute a power of attorney. See 37 CFR 1.76(b)(4) and MPEP § 408. For information on appointing a power of attorney, see MPEP § 402.02 et seq.
Newly submitted claims 13-20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons.
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Group I, claims 1-5 and 7-12, drawn to a method for operating a hand-held machine tool with an oscillating or stroke-shaped output movement comprising detecting motor and/or battery current during an idle operating state, ascertaining a scraping threshold, and setting a drive unit to an operating state under load in response to detecting an overshoot or undershoot of the ascertained threshold.
Group II, claims 13-20, drawn to a method for operating a power tool comprising operating a motor at in an idle mode, monitoring an electrical parameter, receiving a user defined transition parameter, detecting an increase in load, and transitioning the motor from an idle mode to a load mode in response to the user defined transition parameter.
Groups I-II lack unity of invention because the groups do not share the same or corresponding technical feature.
Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of operating a motor at in an idle mode and detecting an electrical characteristic, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Matsunaga et al. (US Patent Publ. No. 2014/0352995). Matsunaga et al. disclose a method for operating a hand-held power tool comprising operating a motor at in an idle mode and detecting an electrical characteristic (figs. 6, [0074]).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 13-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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 1-5 and 7-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The new claims 1-5 and 7-12 include the following limitations which are deemed to be unsupported by the disclosure, as originally filed: “modifying the idle operating state with the throttled movement based upon the further detection”.
The subject matter of claim 1 constitutes new matter not disclosed in the originally filed application. Claim 1 recites “modifying the idle operating state with the throttled movement based upon the further detection”. There is no disclosure of modifying the idle operating state with the throttled movement based upon further detection.
As described in the written description, when idling of the machine tool is detected in the operating state under load, the idle operating state with a throttled movement is reset ([0056], [0096]). Applicant’s response fails to specifically point out in the Remarks where there is support for the limitations “modifying the idle operating state with the throttled movement based upon the further detection”, and there appears to be no written description of claim limitations “modifying the idle operating state with the throttled movement based upon the further detection” in the application as filed.
Accordingly, the claims contain 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, at the time the application was filed, had possession of the claimed invention, and comprise new matter.
Accordingly, applicant is required to respond by: specifically pointing out where adequate written description can be found for the limitations; making an amendment to address the deficiency or making appropriate correction.
While no prior art has been applied with respect to claims 1-5 and 7-12, this is not an indication of allowable subject matter in claims 1-5 and 7-12.
Claims 2-4, and 7-12 depend from claim 1, and are likewise rejected.
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 2-4, 7, and 11-12 are 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.
Claims 2, 3, 4, and 7 are ambiguous as it is unclear whether “the scraping threshold” refers to the “scraping threshold” as set forth in claim 1, or to the “further scraping threshold” as set forth in claim 2.
Claims 11-12 depend from claim 4 and are likewise rejected.
Response to Arguments
With respect to the objection to claim 10, the claim amendment and applicant’s arguments have been fully considered and are persuasive. The objection is hereby withdrawn.
With respect to the rejection of claims 1-12 under 35 U.S.C. 112(b), the amendments to claims 1, 3, and 10, the cancellation of claim 6, and applicant’s arguments have been fully considered and are persuasive. The rejection is hereby withdrawn. The amendment has necessitated the new ground of rejection under 35 U.S.C. 112(b), above.
With respect to the rejection of 1-7 and 9-10 under 35 U.S.C. 102(a)(1) over Matsunaga et al. (US Patent Publ. No. 2014/0352995), and the rejection of claims 8 and 11-12 under 35 U.S.C. 103 over Matsunaga et al. in view of Konigbauer (US Patent Publ. No. 2004/0113583), these rejections are not insisted upon at this time.
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.
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/LINDA J. HODGE/Examiner, Art Unit 3731