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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “shutter positioned around the aperture, and wherein the shutter reduces a space around the tool bit” as in claim 5, claim 14 and claim 15 and the “shutter eliminates a space around the tool bit” as in claim 16 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a first connector” and “a second connector” in claim 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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.
Claim 10 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.
Claim 10 recites “the mounting base includes hardened metal” in line 1. The metes and bounds of what exactly encompasses “hardened” metal are unclear. Further clarification is needed.
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.
Claim(s) 1-2, 5-9,11-19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Everington Jr. US 8,529,170 (hereafter--Everington--).
In regards to claim 1, Everington discloses (Figures 1-9) a power tool system comprising: a power tool (12) including a housing, a working end (22), and a tool bit extending from the working end (see Figures 1-2); and a dust collector (10) operable to collect dust and debris generated during operation of the power tool (12), the dust collector comprising: a mounting base (26) seated against (in the same way as presented in Applicant’s Figure 2) the working end of the power tool (12), the mounting base (26) defining an aperture through which the tool bit extends and a longitudinal axis (axis on which tool bit extends along); a tether (16) coupled to the mounting base (via 23), the tether wrapped around a portion of the housing to secure the dust collector to the power tool (see Figures 1 and 2), and a shroud (in the same way as presented by Applicant, refer to 25) extending from the mounting base (26), the shroud (25) including a first end (refer to end where 23 is disposed at) adjacent the mounting base (26), a second end (refer to end where 20 is disposed at) operable to contact a workpiece, a sleeve (refer to the body 32 of shroud 25) extending between the first end and the second end, and a spring (30) biasing the second end away from the first end, the second end being (axially) movable relative to the first end against the spring.
In regards to claim 2, Everington as modified discloses the power tool system of claim 1, Everington as modified also discloses that the tether (16) is wrapped around a rear portion of the power tool that is located opposite the working end (see Figures 1 and 2).
In regards to claim 5, Everington as modified discloses the power tool system of claim 1, Everington as modified also discloses that the dust collector includes a shutter (27) (in the same way as presented by Applicant) positioned around the aperture (in the same way as presented by Applicant), and wherein the shutter reduces a space around the tool bit (in the same way as presented by Applicant).
In regards to claim 6, Everington the dust collector of claim 1, Everington also discloses a first connector (18 and 23) disposed at the first end of the shroud (25); and a second connector (20, 21 and 38) disposed at the second end of the shroud (25); wherein the second connector selectively engages with the first connector to hold the shroud in a collapsed position against a bias of the spring (see Figures 2 and 7).
In regards to claim 7, Everington discloses (Figures 1-9) a power tool (12) including a housing, a working end (22) configured to rotate relative to the housing, and a tool bit extending from the working end and configured to rotate with the working end (see Figures 1-2); and a dust collector (10) operable to collect dust and debris generated during operation of the power tool (12), the dust collector including: a mounting base (26) seated against the working end (in the same way as presented by Applicant’s Figure 2) of the power tool (12), the working end configured to rotate relative to the mounting base (26), and a shroud (in the same way as presented by Applicant, refer to 25) extending from the mounting base (26), the shroud (25) having a first end (refer to end where 23 is disposed at) adjacent the mounting base (26), a second end (refer to end where 20 is disposed at) operable to contact a workpiece, a sleeve (refer to the body 32 of shroud 25) extending between the first end and the second end.
In regards to claim 8, Everington discloses the power tool system of claim 7, Everington also discloses wherein the working end of the power tool includes a chuck assembly (22) configured to rotate relative to the housing, and wherein the mounting base (26) is seated against the chuck assembly (in the same way as presented in Applicant’s Figure 2).
In regards to claim 9, Everington discloses the power tool system of claim 7, Everington also discloses that the working end of the power tool is received within the shroud (see Figures 1 and 2).
In regards to claim 11, Everington discloses the power tool system of claim 7, Everington also discloses a tether (16) coupled to the mounting base (via 23), the tether wrapped around a portion of the housing to secure the dust collector to the power tool (see Figures 1 and 2).
In regards to claim 12, Everington discloses the power tool system of claim 7, Everington also discloses that the shroud includes a spring (30) biasing the second end away from the first end, the second end being (axially) movable relative to the first end against the spring.
In regards to claim 13, Everington discloses the power tool system of claim 7, Everington also discloses that the mounting base (26) defines an aperture through which the tool bit extends and a longitudinal axis (axis on which tool bit extends along);
In regards to claim 14, Everington discloses the power tool system of claim 13, Everington also discloses the dust collector includes a shutter (27) (in the same way as presented by Applicant) positioned around the aperture (in the same way as presented by Applicant), and wherein the shutter reduces a space around the tool bit (in the same way as presented by Applicant).
In regards to claim 15, Everington discloses a power tool system (Figures 1-9) comprising: a power tool (12) including a housing, a working end (22) configured to rotate relative to the housing, and a tool bit extending from the working end and configured to rotate with the working end (see Figures 1-2); and a dust collector (10) operable to collect dust and debris generated during operation of the power tool (12), the dust collector including: a mounting base (26) seated against the working end (in the same way as presented by Applicant’s Figure 2) of the power tool (12), the mounting base (26) includes a shutter (27) (in the same way as presented by Applicant) defining an aperture through which the tool bit extends (see Figures 1 and 2) the shutter reducing a space around the tool bit (in the same way as presented by Applicant) and a shroud (in the same way as presented by Applicant, refer to 25) extending from the mounting base (26).
In regards to claim 16, Everington discloses the power tool system of claim 15, Everington also discloses that the shutter (27) substantially eliminates a space around the tool bit.
In regards to claim 17, Everington discloses the power tool system of claim 15, Everington also discloses a tether (16) coupled to the mounting base (via 23), the tether wrapped around a portion of the housing to secure the dust collector to the power tool (see Figures 1 and 2).
In regards to claim 18, Everington discloses the power tool system of claim 15, Everington also discloses that the working end of the power tool includes a chuck assembly (22) configured to rotate relative to the housing, and wherein the mounting base (26) is seated against the chuck assembly (in the same way as presented in Applicant’s Figure 2).
In regards to claim 19, Everington discloses the power tool system of claim 15, Everington also discloses that the shroud (25) including a first end (refer to end where 23 is disposed at) adjacent the mounting base (26), a second end (refer to end where 20 is disposed at) operable to contact a workpiece, a sleeve (refer to the body 32 of shroud 25) extending between the first end and the second end.
In regards to claim 20, Everington discloses the power tool system of claim 19, Everington also discloses that and a spring (30) biasing the second end away from the first end, the second end being (axially) movable relative to the first end against the spring.
Claim Rejections - 35 USC § 103
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Everington Jr. US 8,529,170 (hereafter--Everington--) as applied to claim 7.
In regards to claim 10, Everington discloses the power tool system of claim 7, Everington also discloses that the mounting base (26) is rigid and is seated against the working end of the power tool (in the same way as presented in Applicant’s Figure 2).
However, Everington fails to disclose that the rigid mounting base (26) includes hardened metal.
Nevertheless, it would have been obvious to a person having ordinary skill in the art, at the time Applicant’s invention was filed to have the rigid mounting base of Everington be made to include a hardened metal since it has been held that the selection of a known material is based on its suitability for its intended use. See MPEP § 2144.07 (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”). See also In re Leshin, 277 F.2d 197 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broussard US 4,848,980 in view of Lo US 2014/0037392.
In regards to claim 1, Broussard discloses (Figures 1-25) a power tool system comprising: a power tool (102) including a housing, a working end, and a tool bit (108) extending from the working end; and a dust collector (100) operable to collect dust and debris generated during operation of the power tool, the dust collector (100) including a mounting base (122) seated against the working end of the power tool (102), the mounting base (122) defining an aperture through which the tool bit (108) extends and a longitudinal axis along which the tool bit extends, a tether (134, 154) coupled to the mounting base, the tether wrapped around a portion of the housing to secure the dust collector to the power tool (see Figures 14 and 21), and a shroud (106) extending from the mounting base (122), the shroud (106) having a first end adjacent the mounting base (122), a second end operable to contact a workpiece, a sleeve (104) extending between the first end and the second end (see Figures 14 and 21).
However, Broussard fails to discloses a spring biasing the second end away from the first end, the second end being movable relative to the first end against the spring.
Lo teaches that it is well known in the art of dust collectors, to have a spring (see Figures 6 and 7) biasing a second end of a shroud (13) away from a first end of the shroud, the second end being movable relative to the first end against the spring. The spring allows the shroud to retract and expand when drilling such that after being pressed can resume its original position (paragraph [0027]). Lo also teaches that the dust collector (Figure 6) includes a shutter (16) (in the same way as presented by Applicant) positioned around an aperture (in the same way as presented by Applicant), and wherein the shutter reduces a space around the tool bit (in the same way as presented by Applicant). The shutter isolates the dust from an actuating end 21 of the tool and thus prevent dust from entering into the actuating end and extends the service life of the power tool.
Accordingly, it would have been obvious to a person having ordinary skill in the art at the time Applicant's invention was filed, to modify Broussard's shroud to include a spring as taught by Lo, such that after being pressed, the shroud can resume its original position. It would also have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed to modify Broussard’s dust collector to include a shutter around the aperture, as also taught by Lo, to isolate the dust from the actuating end of the tool and thus prevent dust from entering into the actuating end and extend the service life of the power tool.
In regards to claim 2, Broussard as modified discloses the power tool system of claim 1, Broussard as modified also discloses that the tether (134, 154) is wrapped around a rear portion of the power tool that is located opposite the working end (see Figures 14 and 21).
In regards to claim 3, Broussard as modified discloses the power tool system of claim 1, Broussard as modified also discloses that the housing includes an opening near a trigger, and wherein the tether passes through the opening (see Figures 14 and 21 and note that the tether 134/154 passes through openings on the housing of power tool 102; the opening being either the ones extending substantially parallel to an extension direction of 148 or elongated opening extending substantially parallel to an extension direction of 134/154).
In regards to claim 5, Broussard as modified discloses the power tool system of claim 1, Broussard as modified also discloses that the dust collector (100) includes a shutter (16 of Lo) (in the same way as presented by Applicant) positioned around the aperture (in the same way as presented by Applicant), and wherein the shutter reduces a space around the tool bit (in the same way as presented by Applicant).
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached on (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722
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