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 .
Election/Restrictions
Applicant’s election without traverse of invention I (claims 1-16), and
Subgroup ID (claims 11-13), Species I (Fig. 1), and Species Ia (Fig. 5) in a reply filed on 09/15/2026 is acknowledged.
It should be noted that the dependency of claims 2-6, 10, 14, 15, and 17 has been changed such that these claims now depend on elected claim 11, which is part of elected subgroup ID. However, notwithstanding the change in dependency, the claimed subject matter of these claims remains unchanged. The subject matter of claims 2-6, 10, 14, 15, and 17 remains distinct from the subject matter of elected subgroup ID, which also includes the subject matter of claims 12–13. In particular, claims 12–13 are directed to specific features of the battery mounting part, position of the handles, and the central gravity of the circular saw and the battery which are patentably distinct from the subject matter of subgroup IA (claims 2-5), subgroup IB (claims 6-7), subgroup IC (claim 10), and claim 17, which was previously part of Group II (claims 17–20). Although Applicant elected a group and subgroup, Applicant changed the dependency of the non-elected claims 2–6, 10, 14, 15, and 17 so that these claims depend from claim 11 of subgroup ID (claims 11-13). Such a change in dependency, however, does not alter the substantive subject matter of the claims or render the previously identified distinct inventions a single invention. Accordingly, the restriction requirement remains applicable, and claims 2-6, 10, 14, 15, and 17 remain withdrawn from consideration because they are directed to subject matter distinct from the subject matter of claims 12-13 of the elected invention. The distinctness between the subject matter of elected subgroup ID and the other non-elected subgroups was set forth in the restriction requirement mailed on July 16, 2026.
It should further be noted that new claim 21 incorporates the subject matter of withdrawn claims 5 and 7, and new claim 22 incorporates the subject matter of withdrawn claim 17. Accordingly, claims 21-22 are also withdrawn from further consideration.
Therefore, claims 1, 8-9 and 11-13, which are directed to the elected invention and elected subgroup ID (claims 11-13), will be examined.
The requirement is still deemed proper and is therefore made FINAL.
2. Claims 2-7, 10, 14-18, and 21-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected subgroups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/15/2026.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 8-9 and 11-13 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.
Regarding claim 8, 11, 12, and 13, claim 1 recites “a battery-mounting part configured to detachably mount a battery that supplies electric power to the electric motor.” However, claim 1 does not otherwise introduce the battery as a claimed component of the circular saw. Accordingly, the subsequent recitation of “the battery” in claims 8, 11, 12, and 13 lacks clear antecedent basis.
Specifically, claim 8 recites “comprising: the battery,” claim 11 refers to “when the battery is mounted on the battery-mounting part,” claim 12 refers to “the state in which the battery is mounted on the battery-mounting part,” and claim 13 recites “and the battery” and subsequently refers to “the battery.” It is unclear whether “the battery” in these claims refers to the battery merely described functionally in claim 1 as an article that the battery-mounting part is configured to mount, or to a battery that is affirmatively included as part of the claimed circular saw. Thus, the claims do not provide clear antecedent basis for “the battery,” rendering the scope of the claims unclear.
Regarding claim 8, “the rated voltage of the battery” lacks antecedent basis. Regarding claim 12, “the center of gravity of the circular saw” lacks
antecedent basis.
Regarding claim 13, “the center of gravity of the battery” lacks
antecedent basis.
Claim Rejections - 35 USC § 102
5. 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
6. Claims 1 and 8-9 are rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Yao et al. (2024/0009882 A1), hereinafter Yao. Regarding claim 1, Yao teaches a circular saw comprising: a rotatable circular-saw blade 28; an electric motor 100 configured to generate rotational power for rotatably driving the circular-saw blade 28; and a battery-mounting part 40 configured to detachably mount a battery 42 that supplies electric power to the electric motor 100, wherein the circular-saw blade 28 has a diameter of 300 mm or more and 460 mm or less (as the circular-saw blade 28 has a diameter of 304.8 mm ±4). See paragraphs [0007], [0009], [0041], [0045], and [0064], and Figs. 1-2 in Yao.
Regarding claim 8, as best understood, Yao teaches everything noted above, including a battery having a voltage within the claimed range of 18 V or more and 80 V or less. In particular, Yao teaches that the battery pack 42 may be a 20 V max battery pack and, in another embodiment, a 60 V max battery pack. See paragraphs [0009], [0041], and [0045] in Yao. The disclosed 20 V and 60 V battery voltages fall within the claimed range of 18 V or more and 80 V or less. It should be noted that the Specification does not provide a special definition of “rated voltage” that distinguishes it from the voltage rating of the battery; rather, paragraph [0071] describes the rated voltage as a voltage of 18 V or more and 80 V or less and gives 24-40 V, including 36 V, as examples.
Regarding claim 9, Yao teaches everything noted above including that the rated voltage of the batter is 36 V, because the range of 18 V to 80 V includes also 36 V.
7. 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, 8-9, and 11 are rejected under 35 U.S.C. 102 (a)(1) as being
anticipated by Schmitz et al. (2021/0205904 A1), hereinafter Schmitz. Regarding claim 1, Schmitz teaches a circular saw 10 comprising: a rotatable circular-saw blade 25; an electric motor 65 configured to generate rotational power for rotatably driving the circular-saw blade 25; and a battery-mounting part 72 configured to detachably mount a battery 75 that supplies electric power to the electric motor 65, wherein the circular-saw blade 25 has a diameter of 300 mm or more and 460 mm or less. See Figs. 1-3 and paragraph [0019] in Schmitz. The disclosed diameter range of greater than 6 inches and less than 12 inches encompasses diameters of 300 mm or more and less than 304.8 mm. In particular, a diameter of 11.9 inches corresponds to approximately 302.3 mm, which is greater than 300 mm and less than 460 mm, and is within the diameter range expressly disclosed by Schmitz. Accordingly, Schmitz teaches a circular-saw blade having a diameter of 300 mm or more and 460 mm or less.
Regarding claim 8, as best understood, Schmitz teaches everything noted above, including the battery having a voltage within the claimed range of 18 V or more and 80 V or less. Schmitz teaches that the battery pack 75 has a nominal voltage of up to about 20 V, including embodiments having a nominal voltage of about 18 V to about 20 V. See paragraph [0023] of Schmitz. Accordingly, the nominal voltage of the battery pack disclosed by Schmitz falls within the claimed range of 18 V or more and 80 V or less. As described in paragraph [0071] of the Specification, a battery having a rated voltage of 18 V or more and 80 V or less may be used, with 36 V expressly identified as an example. Thus, the claimed “rated voltage” does not require a voltage characteristic different from the voltage rating disclosed by Schmitz.
Regarding claim 9, Schmitz teaches everything noted above including that the rated voltage of the batter is 36 V, because the range of 18 V to 80 V includes also 36 V.
Regarding claim 11, as best understood, Schmitz teaches everything noted above including that the circular saw 10 is a portable circular saw; the portable circular saw comprises: a first handle 45, which has a first grip part; and a second handle 55, which has a second grip part (Fig. 1) and is disposed forward of the first handle 45 when the direction in which cutting by the portable circular saw is advanced is defined as a front side, and the opposite side to the front side is defined as a rear side; and the battery-mounting part 72 is configured so that, when the battery 75 is mounted on the battery-mounting part, entire battery 75 is located between an end portion at the front side of the first grip part and an end portion at the front side of the second grip part in a front-rear direction. See Fig. 3 in Schmitz.
Claim Rejections - 35 USC § 103
9. 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.
To the degree that it could be argued Yao does not explicitly teach that the rated voltage of the battery is 36 V, the rejection below is applied.
10. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over
Yao in view of Okouchi et al. (2016/0176064 A1), hereinafter Okouchi. Regarding claim 9, Yao does not explicitly teach that the voltage of the battery is 36 V. However, Okouchi teaches a portable circular saw including a battery having a voltage of 18 V or 36 V. See Fig. 1 and paragraph [0006] in Okouchi. It would have been obvious to a person of ordinary skill in the art to provide Yao’s battery with the 36 V voltage taught by Okouchi, in order to provide an appropriate voltage to the motor for achieving the desired power output during operation of the circular saw. As described in paragraph [0071] of the Specification, a battery having a rated voltage of 18 V or more and 80 V or less may be used, with 36 V expressly identified as an example. Thus, the claimed “rated voltage” does not require a voltage characteristic different from the voltage rating disclosed by Okouchi.
To the degree that it could be argued Schmitz does not explicitly teach that the rated voltage of the battery is 36 V, the rejection below is applied.
11. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over
Schmitz in view of Okouchi. Regarding claim 9, Schmitz does not explicitly teach that the voltage of the battery is 36 V. However, Okouchi teaches a portable circular saw including a battery having a voltage of 18 V or 36 V. See Fig. 1 and paragraph [0006] in Okouchi. It would have been obvious to a person of ordinary skill in the art to provide Schmitz’s battery with the 36 V voltage taught by Okouchi, in order to provide an appropriate voltage to the motor for achieving the desired power output during operation of the circular saw. As described in paragraph [0071] of the Specification, a battery having a rated voltage of 18 V or more and 80 V or less may be used, with 36 V expressly identified as an example. Thus, the claimed “rated voltage” does not require a voltage characteristic different from the voltage rating disclosed by Okouchi.
12. Claims 1, 8-9, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Cui (CN 117182186 A) in view of Yao. Regarding claim 1, Cui discloses a circular saw 100 comprising: a rotatable circular-saw blade 10; an electric motor 111 configured to generate rotational power for rotatably driving the circular-saw blade 10; and a battery-mounting part 30 configured to detachably mount a battery 90 that supplies electric power to the electric motor. See Figs. 1-20 in Cui. Cui does not explicitly teach that the circular-saw blade has a diameter of 300 mm or more and 460 mm or less. However, Yao teaches a cordless saw having a saw blade 28 with a diameter of 304.8 mm, i.e., approximately 300.8-308.8 ±4mm, which falls within the claimed range of 300 mm or more and 460 mm or less.
See paragraphs [0007], [0009], [0041], [0045], and [0064], and Figs. 1-2 in Yao.
Although Cui does not expressly identify the diameter of its saw blade as being within the claimed range, Yao expressly teaches the use of a 304.8-mm saw blade in a cordless saw having a battery-powered motor and therefore provides an express teaching of the claimed blade size. It would have been obvious to a person of ordinary skill in the art to employ the 304.8-mm blade disclosed by Yao in the battery-powered circular saw of Cui because both references are directed to battery-powered circular cutting tools having a motor-driven circular saw blade, and the substitution of a known saw-blade diameter for Cui’s blade would have been a predictable application of a known size to obtain a saw having the cutting capacity associated with the larger blade disclosed by Yao.
Regarding claim 8, as best understood, Cui teaches everything noted above including that the rated voltage of the battery 90 is 18 V or more and 80 V or less. Cui teaches that the battery pack 90 having a voltage of 18 V or more and 60 V or less, which falls entirely within the claimed range of 18 V or more and 80 V or less. To the extent the term “rated voltage” is considered to require a particular battery-voltage designation rather than the voltage disclosed by Cui, it would have been obvious to select an appropriate rated battery voltage within Cui’s expressly disclosed 18-60 V operating range because battery packs having different voltage ratings are expressly contemplated by Cui and are selected according to the desired operating conditions of the cordless cutting tool. Yao further confirms the conventional use of specified battery voltage in a cordless saw.
Regarding claim 9, Cui teaches everything noted above including that the rated voltage of the battery 90 is 36 V. Cui teaches that the battery pack has a voltage of 18-60 V, thereby expressly encompassing a 36-V battery voltage. In addition, it would have been obvious to a person of ordinary skill in the art to select a 36-V rated battery for Cui’s cutting tool because 36 V is an expressly encompassed value within Cui’s disclosed 18–60 V battery-voltage range, and selecting a particular conventional voltage within a disclosed range for a battery-powered power tool would have been a routine design choice based on desired power, battery capacity, tool size, and operating conditions.
Regarding claim 11, as best understood, Cui teaches everything noted above including that the circular saw 100 is a portable circular saw; the portable circular saw comprises: a first handle 13, which has a first grip part 131; and a second handle 14 , which has a second grip part 141 and is disposed forward of the first handle 13 when the direction in which cutting by the portable circular saw is advanced is defined as a front side 108, and the opposite side to the front side is defined as a rear side 109; and the battery-mounting part 30 is configured so that, when the battery 90 is mounted on the battery-mounting part, entire battery 90 is located between an end portion at the front side of the first grip part 131 and an end portion at the front side of the second grip part 141 in a front-rear direction. See Figs. 1-3 and 20 in Cui.
Regarding claim 12, as best understood, Cui teaches everything noted above including that the circular saw 100 is a portable circular saw; the portable circular saw comprises: a first handle 13, which has a first grip part 131; and a second handle 14, which has a second grip part 141 and is disposed forward of the first handle 13 when the direction in which cutting by the portable circular saw is advanced is defined as a front side 108, and the opposite side to the front side is defined as a rear side 108; and the center of gravity of the circular saw, in the state in which the battery is mounted on the battery-mounting part, is located downward of an end portion at the lower side of the first grip part 131 and an end portion at the lower side of the second grip part 141 in an up-down direction in the posture of the portable circular saw during normal usage thereof. It should be noted that Cui teaches that the second handle 14 is positioned forward of the first handle 13 when the direction of cutting travel is considered the front direction; the battery pack 90 is positioned between the handles and above/overlapping the motor 111 in the front-rear projection, with Cui expressly teaching that this arrangement facilitates positioning the center of gravity of the cutting tool near the rotational center of the saw blade (see the description of Figs. 2-3 in the attached translation) and, in the alternative battery-mounting embodiments, facilitates setting the center of gravity downward to improve overall stability. In this arrangement, the center of gravity is located downward of an end portion (defined by the end of the grip 131 right above the rotational center of the blade; Figs. 2 and 20) at the lower side of the first grip part 131 and an end portion (defined by the bottom portion of the round grip 141; Figs. 2 and 20) of the lower side of the second grip part 141 in an up-down direction in the posture of the portable circular saw during normal usage thereof.
Regarding claim 13, as best understood, Cui teaches everything noted above including that the circular saw 100 is a portable circular saw; the portable circular saw comprises: a first handle 13, which has a first grip part 131; and a second handle 14, which has a second grip part 141 and is disposed forward of the first handle 13 when the direction in which cutting by the portable circular saw is advanced is defined as a front side 108, and the opposite side to the front side is defined as a rear side 108; and the battery 90; and the center of gravity of the battery 90, in the state in which the battery is mounted on the battery-mounting part, is located downward of an end portion at the lower side of the first grip part and an end portion at the lower side of the second grip part in an up-down direction in the posture of the portable circular saw during normal usage thereof. It should be noted that the center of gravity of the battery is inherently close to the center or lower portion of the battery which is clearly below the end portion of the lower side of the second grip part 141 and also below the lower portion of the lower side of the first grip part 131. The first grip part also could be defined by the grip portion of the handle 13 close to the trigger (Fig. 16). In this case, the end portion of the first grip part is clearly located above the center of gravity of the battery.
13. Claims 1, 8-9, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Rudolph (11,338,426 B2) in view of Yao. Regarding claim 1, Rudolph discloses a circular saw 1 comprising: a rotatable circular-saw blade 300; an electric motor 60 configured to generate rotational power for rotatably driving the circular-saw blade 300; and a battery-mounting part 12 configured to detachably mount a battery 10 that supplies electric power to the electric motor. See Figs. 1-7 in Rudolph. Rodolph does not explicitly teach that the circular-saw blade has a diameter of 300 mm or more and 460 mm or less. However, Yao teaches a cordless saw having a saw blade 28 with a diameter of 304.8 mm, i.e., approximately 300.8-308.8 ±4mm, which falls within the claimed range of 300 mm or more and 460 mm or less. See paragraphs [0007], [0009], [0041], [0045], and [0064], and Figs. 1-2 in Yao. Although Rudolph does not expressly identify the diameter of its saw blade as being within the claimed range, Yao expressly teaches the use of a 304.8-mm saw blade in a cordless saw having a battery-powered motor and therefore provides an express teaching of the claimed blade size. It would have been obvious to a person of ordinary skill in the art to employ the 304.8-mm blade disclosed by Yao in the battery-powered circular saw of Rudolph because both references are directed to battery-powered circular cutting tools having a motor-driven circular saw blade, and the substitution of a known saw-blade diameter for Rodolph’s blade would have been a predictable application of a known size to obtain a saw having the cutting capacity associated with the larger blade disclosed by Yao.
Regarding claim 8, as best understood, Rudolph teaches everything noted above, including the battery having a voltage within the claimed range of 12 V or more and 80 V or greater. See col. 3, lines 52-65 in Rudolph. Accordingly, the nominal voltage of the battery pack disclosed by Rudolph falls within the claimed range of 12 V or more and 80 V. As described in paragraph [0071] of the Specification, a battery having a rated voltage of 18 V or more and 80 V or less may be used, with 36 V expressly identified as an example. Thus, the claimed “rated voltage” does not require a voltage characteristic different from the voltage rating disclosed by Rudolph.
Regarding claim 9, Radolph teaches everything noted above including that the rated voltage of the batter is 36 V, because the range of 12 V to 80 V includes also 36 V. In addition, it would have been obvious to a person of ordinary skill in the art to select a 36-V rated battery for Radolph’s cutting tool because 36 V is an expressly encompassed value within Radolph’s disclosed 12-80 V battery-voltage range, and selecting a particular conventional voltage within a disclosed range for a battery-powered power tool would have been a routine design choice based on desired power, battery capacity, tool size, and operating conditions.
Regarding claim 12, as best understood, Rodolph teaches everything noted above including that the circular saw 1 is a portable circular saw; the portable circular saw comprises: a first handle 50, which has a first grip part; and a second handle 100, which has a second grip part 101 (Fig. 3) and is disposed forward of the first handle 50 when the direction in which cutting by the portable circular saw is advanced is defined as a front side 21, and the opposite side to the front side is defined as a rear side 22; and the center of gravity 5000 (Fig. 3) of the circular saw 1, in the state in which the battery 10 is mounted on the battery-mounting part 12, is located downward of an end portion at the lower side of the first grip part (Fig. 3) and an end portion at the lower side of the second grip part in an up-down direction in the posture of the portable circular saw during normal usage thereof. See Fig. 3 in Rodolph.
Regarding claim 13, as best understood, Rodolph teaches everything noted above including that the circular saw 1 is a portable circular saw; the portable circular saw comprises: a first handle 50, which has a first grip part; and a second handle 100, which has a second grip part 101 (Fig. 3) and is disposed forward of the first handle 50 when the direction in which cutting by the portable circular saw is advanced is defined as a front side 21, and the opposite side to the front side is defined as a rear side 22; and the battery; and the center of gravity of the battery 10, in the state in which the battery 10 is mounted on the battery-mounting part 12, is located downward of an end portion at the lower side of the first grip part and an end portion at the lower side of the second grip part in an up-down direction in the posture of the portable circular saw during normal usage thereof. It should be noted that the center of gravity of the battery 10 which is entirely below the handles (50, 100) and the end portions of the lower side of the handles (20, 100) is inherently located below the handles. See Figs. 1-3 in Rodolph.
To the degree that it could be argued Randolph does not explicitly teach that the rated voltage of the battery is 36 V, the rejection below is applied.
14. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over
Radolph in view of Yoa and in further view of Okouchi. Regarding claim 9, Radolph does not explicitly teach that the voltage of the battery is 36 V. However, Okouchi teaches a portable circular saw including a battery having a voltage of 18 V or 36 V. See Fig. 1 and paragraph [0006] in Okouchi. It would have been obvious to a person of ordinary skill in the art to provide the battery of Rodplph‘s circular saw, as modified by Yoa, with the 36 V voltage taught by Okouchi, in order to provide an appropriate voltage to the motor for achieving the desired power output during operation of the circular saw. As described in paragraph [0071] of the Specification, a battery having a rated voltage of 18 V or more and 80 V or less may be used, with 36 V expressly identified as an example. Thus, the claimed “rated voltage” does not require a voltage characteristic different from the voltage rating disclosed by Okouchi.
Conclusion
15. The prior art made of record and not relied upon is considered pertinent to
applicant’s disclosure.
Konstantin (EP 3181306 A1), Suzuki et al. (D959,226 S), and McCurry (2023/0198067 A1) teach a circular saw.
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/GHASSEM ALIE/Primary Examiner, Art Unit 3724
September 30, 2026
