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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Invention I, Species I, claims 1-9 in the reply filed on 16 June 2026 is acknowledged. The traversal is on the ground(s) that there would be no search burden to examine the non-elected inventions, that all of the identified classification areas would need to be searched, and that the species the search areas for the different species are not identified. This is not found persuasive because the non-elected inventions and species require additional limitations not found in the elected invention/species. For example, the non-elected inventions require additional searching for a spindle having a bit holder having a threaded end to receive a threaded tool bit, classified in B23B 31/11, and a drive assembly including a multi-speed transmission, classified in B23Q 2005/005, neither of which is required for the elected invention/species.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 16 June 2026.
Claim Objections
Claim 4 is objected to because of the following informalities: in claim 4, line 1, “each air intake openings” should be changed to “each air intake opening”. Appropriate correction is required.
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 fluid delivery system” in claim 2.
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 § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1, 5, and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fraser et al. (US 6,962,523).
Regarding claim 1, Fraser et al. discloses a power tool 1, comprising: a housing 2/3 including left (side facing outward in figure 1) and right (side facing inward in figure 1) side walls, a rear wall (wall with cord 12, see figure 2) extending between the left and right side walls, a left angled wall (portion of left wall with openings 53, see figure 4) extending between the left side wall and the rear wall and a right angled wall (portion of right wall with openings 53, see figure 4) extending between the right side wall and the rear wall; a handle 9 extending from the housing and defining a gap (not labeled, see figure 1) between the handle and the rear wall of the housing; a motor 14 located within the housing; a fan 21 driven by the motor; and a spindle 25 driven by the motor to rotate about an axis; wherein the left and right angled walls converge inwardly toward the axis in a front-to-rear direction along the axis (see figure 4); wherein the housing includes a plurality of air intake openings 53 located on the left and right angled walls; and wherein rotation of the fan draws an airflow into the housing through the plurality of air intake openings (see column 7, lines 50-56).
Regarding claim 5, Fraser et al. discloses further comprising a plurality of air exhaust openings 30 located on the left and right side walls, wherein the airflow is configured to enter the housing through the plurality of air intake openings 53 and cool the motor 14 before being discharged from the housing through the plurality of air exhaust openings.
Regarding claim 7, Fraser et al. discloses wherein each air exhaust opening 30 of the plurality of air exhaust openings includes a deflector 31 configured to inhibit fluid from entering the housing 2/3 through the air exhaust opening.
Regarding claim 8, Fraser et al. discloses wherein the deflector 31 is scoop-shaped (see figures 1 and 2).
Claims 1, 5, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hara et al. (US 10,027,201).
Regarding claim 1, Hara et al. discloses a power tool 1, comprising: a housing 2 including left (inward side in figure 1) and right (outward side in figure 1) side walls, a rear wall (back portion including inner portions of air intake openings 15, see figures 1-2) extending between the left and right side walls, a left angled wall (angled portion 29
between left wall and rear wall, see figure 3) extending between the left side wall and the rear wall and a right angled wall (angled portion between right wall and rear wall, see figure 3) extending between the right side wall and the rear wall; a handle 3 extending from the housing and defining a gap (not labeled, see figure 1) between the handle and the rear wall of the housing; a motor 7 located within the housing; a fan 51 driven by the motor; and a spindle 48 driven by the motor to rotate about an axis; wherein the left and right angled walls converge inwardly toward the axis in a front-to-rear direction along the axis (see figure 3); wherein the housing includes a plurality of air intake openings 15 located on the left and right angled walls (see figures 1-3); and wherein rotation of the fan draws an airflow into the housing through the plurality of air intake openings (see column 10, lines 61-64).
Regarding claim 5, Hara et al. discloses further comprising a plurality of air exhaust openings 99 located on the left and right side walls, wherein the airflow is configured to enter the housing 2 through the plurality of air intake openings 15 and cool the motor 7 before being discharged from the housing through the plurality of air exhaust openings (see column 10, lines 61 to column 11, line 8).
Regarding claim 9, Hara et al. discloses wherein the housing 2 includes left 2a and right 2b cooperating halves defining a motor housing portion 4, wherein the motor 7 is mounted within the motor housing portion, and wherein the power tool further comprises: a battery receptacle 29 located below the motor housing portion and in front of the gap (at least a portion of the battery receptacle is located in front of the gap, see figure 1; additionally, as the term front is not further defined by the claim, the battery receptacle can be seen to be fully in front of the gap); and a battery 6 removably coupled to the battery receptacle and configured to provide power to the motor.
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 of this title, 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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Fraser et al. (US 6,962,523) in view of JP 6758960 B2.
Regarding claim 6, Fraser et al. discloses the invention substantially as claimed, except Fraser et al. does not disclose further comprising a printed circuit board (PCB) located within the housing and including a finned heat sink thereon, wherein the airflow passes over the finned heat sink to cool the PCB. JP 6758960 B2 teaches the use of a power tool 1 that comprises a housing 2, wherein the power tool comprises a printed circuit board 75 for controlling operation of the tool located within the housing (in controller portion 74) and including a finned heat sink 63 for the purpose of cooling the circuit board (see English translation). Therefore it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have combined the power tool of Fraser et al. with the PCB and heat sink of JP 6758960 B2 in order to be able to provide additional control to the power tool without overheating the controller.
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 be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11-14 of U.S. Patent No. 12,121,980. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious combinations of each other.
Claim correlations:
Application claim numbers
Patent claim numbers
1
1-6
2
1
3
14
4
12-13
5
7-8
6
11
7
7-8
8
9
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Arich et al. (US 7,705497) and Schreiber et al. (US 2017/0100831 A1) are directed to power tools with air cooling systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC A. GATES/Primary Examiner, Art Unit 3722 15 July 2026
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