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
Applicant’s 7-27-2026 Amendment was received. Claim 1 was amended. Claims 12-13 were presented. Claims 1-13 are pending.
Drawings
The drawings are objected to because the numbers and labeling are hand drawn and illegible. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "24/25/26/27" have used to designate the same structure in the figures. This is because they use the same leader line. 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. 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.
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, “wherein the tank is an exchangeable tank cartridge,” of Claim 5, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Therefore, “a housing-integral, funnel portion for collecting lubricant, wherein, by way of the funnel portion, the collected lubricant can be fed directly to the filling opening and/or can be led away from the receiving device,” of Claim 7, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Therefore, “a first distance between the filling opening and the standing plane is smaller than a second distance between a receiving opening of the receiving device and the standing plane,” of Claim 8 and 13, 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 standing portion in Claims 1, 12 and 13; a receiving device in Claims 1, 12 and 13.
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 § 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.
Claims 1-3, 6, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 8,286,359 to Ashfield in view of US 20190262753 A1 to Miura, with evidence from US 2010/0218967 to Ro Kamp (hereinafter “967 Ro Kamp”) and US 2010/028386 Ro Kamp (hereinafter ‘386 RoKamp”).
In re Claim 1, Ashfield teaches a hand-held battery-operated electric machining device (see Figs. 3-4), comprising:
a standing portion, wherein the standing portion is designed for contact with a substrate in a standing plane (the bottom surface of the chain saw in Fig. 4, is capable of contacting a substrate in a standing plane, such as the ground);
a receiving device (see Fig. 4, #76) for exchangeably receiving an electric battery pack in a receiving direction of the receiving device (see Fig. 4, #86), wherein the receiving device has a receiving space extending along the receiving direction and configured to be substantially complementary to the battery pack;
a housing section facing a tool (see Fig. 3, #70 faces the chain bar #52); and
a tank, which, on an inside, delimits a tank interior of the electric machining device to store a lubricant, wherein, viewed at right angles to the standing plane, the tank and the receiving device are arranged at least partly beside one another at right angles to the longitudinal extension direction (the lubrication system of Ashfield includes a tank, which, on an inside, delimits a tank interior of the electric machining device to store a lubricant, wherein, viewed at right angles to the standing plane, the tank and the receiving device are arranged at least partly beside one another at right angles to the longitudinal extension direction – see cap #73 which underneath includes a space for receiving cutting fluid – see also annotated Fig. 4).
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Ashfield teaches the battery inserted from “rear” to “front” and not from “top” to “bottom” of the chain saw. As such, Ashfield does not teach wherein the receiving space has a cross-sectional area extending parallel to the standing plane, wherein the cross-sectional area has two long sides extending along a longitudinal extension direction of the electric machining device and located substantially in parallel opposite one another, and two narrow sides extending at right angles to the longitudinal extension direction and located substantially in parallel opposite one another, wherein the two narrow sides extend substantially parallel to the housing portion facing the tool.
However, Miura teaches that it is known in the battery powered chain saw art to provide a receiving space for a battery that is inserted from the “top” to the “bottom” (see Miura, Fig. 2 and Fig. 1, #50). In the same field of invention, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to replace the battery and battery insertion direction from “rear” to “front” to a “top” to “bottom” direction, including the aperture or hole that the battery is inserted into, as taught by Miura. Doing so is the substitution of one known battery connection arrangement for another known battery connection arrangement to achieve the result of attaching a battery to a chain saw to power the chain saw (see MPEP 2143, I, B). The examiner notes that each manufacture has a different style connection method, and different style or sized batteries.
Adding the top down battery style of Miura, including the associated receiving structure, to the chain saw of Ashfield would provide for wherein the receiving space has a cross-sectional area extending parallel to the standing plane, wherein the cross-sectional area has two long sides extending along a longitudinal extension direction of the electric machining device (see annotated Fig. 2, below) and located substantially in parallel opposite one another, and two narrow sides extending at right angles to the longitudinal extension direction and located substantially in parallel opposite one another (see annotated Fig. 2, below), wherein the two narrow sides extend substantially parallel to the housing portion facing the tool (see annotated Fig 2, below in view of Figs. 3-4 of Ashfield).
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The Examiner notes that Miura discloses the battery and housing opening are rectangular (see Miura, Para. 0030-31) which necessarily requires two “narrow” sides and two “long” sides. The examiner notes that there are only two orientations for inserting the rectangular battery into the rectangular hole of the chain saw. The first is where the “long” side of the battery is in the same plane as the chain saw bar. The second is where the “short” side of the battery is in the same plane as the chain saw.
967 Ro Kamp, Fig. 3, and 386 RoKamp, Fig. 1, evidences that these two orientations are known in the art. It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to orient the battery of Miura in the tool of Ashfield, in either orientation, since it has been held that rearranging the parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 – MPEP 2144.04, VI, C.
In re Claim 2, modified Ashfield, in re Claim 1, teaches wherein the receiving device has a receiving device thickness measured at right angles to the longitudinal extension direction and parallel to the standing plane (see annotated Fig. 4, below), wherein the tank has a tank thickness measured at right angles to the longitudinal extension direction and parallel to the standing plane (see annotated Fig. 4, below), in a direct extension of the receiving device thickness, wherein a sum of the receiving device thickness and the tank thickness substantially corresponds to a device thickness of the electric machining device measured at right angles to the longitudinal extension direction and parallel to the standing plane (see annotated Fig. 4, the tank thickness and the receiving device thickness substantially correspond to the device thickness), wherein a ratio of the receiving device thickness to the device thickness is substantially 1/2 to 3/4 and/or wherein a ratio of the tank thickness to the device thickness is substantially 1/4 to ½ (see Fig. 4).
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In re Claim 3, modified Ashfield, in re Claim 1, teaches wherein the tank has a tank length measured along the longitudinal extension direction, wherein the receiving device has a receiving device length measured along the longitudinal extension direction, wherein the tank length and the receiving device length are substantially of equal length.
In re Claim 6, modified Ashfield, in re Claim 1, teaches wherein the tank has a filling opening (see Ashfield, Figs. 3-4, #73, the lubricating system, has a filling opening), present on a filling nozzle of the tank (see Ashfield, Figs. 3-4, the nozzle on which the cap for the lubricating system #73 is secure), for filling lubricant into the tank interior (the interior reservoir of the lubricating system #73), wherein the electric machining device has a removable cover (see Ashfield, Figs. 3-4, #73 including a removable cap) for closing the filling opening in a lubricant-tight manner.
In re Claim 10, modified Ashfield, in re Claim 1, teaches wherein the electric machining device has a user-operable locking device (see Miura, Fig. 2, #51) for releasable locking of the battery pack received on the receiving device (see Para. 0034), wherein the receiving space is arranged between the tank and the locking device at right angles to the longitudinal extension direction (see Miura, Fig. 2, #51 in view of Figs. 3-4 of Ashfield).
In re Claim 11, modified Ashfield, in re Claim 1, teaches a machining system, comprising: a hand-held battery-operated electric machining device according to claim 1 (see argument above in re Clam 1); an electric battery pack for storing electrical energy (see Miura, Fig. 2, #50), wherein the battery pack is exchangeably received by the receiving device of the electric machining device (see Miura, Figs. 2 and 1 in view of Ashfield Figs. 3-4); and a tool device (see Ashfield, Fig. 3, #52), which is attached to the electric machining device and which is driven while consuming electrical energy from the received battery pack (see Ashfield, Col. 1, ll. 44 – Col. 2, ll. 2).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,286,359 to Ashfield in view of US 20190262753 A1 to Miura, and further in view of US 2015/0321377 to Onose.
In re Claim 4, modified Ashfield, in re Claim 1, does not teach wherein the tank has at least one, transparent, viewing window for visual detection of a level of stored lubricant, wherein the at least one viewing window is detectable visually from outside along and/or at right angles to the longitudinal extension direction.
However, Onose teaches that it is known in the chain saw art to provide a tank with a transparent viewing window for visual detection of a level of store lubricant (see Onose, Fig. 8, Para. 0028). In the same field of invention, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add a window to the lubricate tank as taught by Onose. Doing so the worker can easily check whether or not the chain oil is filled up to a corresponding portion (see Onose, Para. 0028).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,286,359 to Ashfield in view of US 20190262753 A1 to Miura, and further in view of US 5,896,669 to Uhl.
In re Claim 5, modified Ashfield, in re Claim 1, does not teach wherein the tank is an exchangeable tank cartridge. However, Uhl teaches that it is known in the art of chain saws to provide an oil storage device is an exchangeable tank carriage ( the Examiner notes that “exchangeable tank cartridge,” by attachment screws in bore #78s – see also Col. 6, ll. 3-13 and 51-65)). In the same field of invention, chain saws, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to provide a removable oil tank, as taught by Uhl. Doing so allows the user to replace a single part without having to replace the entire assembly if there is a leak or damage.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,286,359 to Ashfield in view of US 20190262753 A1 to Miura, and further in view of US 4,632,268 to Melzi.
In re Claim 7, modified Ashfield, in re Claim 1, does not teach wherein the electric machining device has a housing-integral, funnel portion for collecting lubricant, wherein, by way of the funnel portion, the collected lubricant can be fed directly to the filling opening and/or can be led away from the receiving device.
However, Melzi teaches that it is known in the art of oil storage to provide a funnel portion (see Melzi, Fig. 12-13, recess panel portion #58) for collecting lubricate, wherein, by way of the funnel portion, the collected lubricant can be fed directly to the filling opening (see Fig. 12-13, #54 is angled such that oil is fed into the opening #30). Such an arrangement directs any overflow of oil into the opening.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 8,286,359 to Ashfield in view of US 20190262753 A1 to Miura, and further in view of US 2011/0162219 to OKOUCHI.
In re Claim 8, modified Ashfield, in re Claim 6, does not teach wherein a first distance between the filling opening and the standing plane is smaller than a second distance between a receiving opening of the receiving device and the standing plane.
However, OKOUCHI teaches that it is known in the art of chain saws to provide a lubrication opening (see OKOUCHI, Fig. 1, #38) closer to the “bottom” surface of the saw than the opening of the battery (see OKOUCHI, Fig. 1, #50). It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to place the opening of the lubrication tank of modified Ashfield below the top portion the battery opening, as taught by OKOUCHI. Changing the size of the lubrication tank would have been within the level of ordinary skill in the art, at the earliest effective filing date. One of ordinary skill understands that more fluid allows the user to cut longer but also adds weight to the saw and a tank that holds less fluid is lighter but requires stopping and filling up more often. In other words, the size, and therefore the position of the opening of the lubrication tank is an engineering tradeoff that one of ordinary skill in the art balances when designing a chain saw.
In re Claim 9, modified Ashfield, in re Claim 1, does not teach wherein the tank has a tank height measured at right angles to the standing plane starting from the standing plane, wherein the receiving device has a receiving device height measured at right angles to the standing plane starting from the standing plane, wherein the tank height is smaller than the receiving device height. However, OKOUCHI teaches that it is known in the art of chain saws to provide a lubrication opening (see OKOUCHI, Fig. 1, #38) closer to the “bottom” surface of the saw than the opening of the battery (see OKOUCHI, Fig. 1, #50). It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to place the opening of the lubrication tank of modified Ashfield below the top portion the battery opening, as taught by OKOUCHI. Changing the size of the lubrication tank would have been within the level of ordinary skill in the art, at the earliest effective filing date. One of ordinary skill understands that more fluid allows the user to cut longer but also adds weight to the saw and a tank that holds less fluid is lighter but requires stopping and filling up more often. In other words, the size, and therefore the position of the opening of the lubrication tank is an engineering tradeoff that one of ordinary skill in the art balances when designing a chain saw.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,286,359 to Ashfield in view of US 20190262753 A1 to Miura, with evidence from US 2010/0218967 to Ro Kamp (hereinafter “967 Ro Kamp”) and US 2010/028386 Ro Kamp (hereinafter ‘386 RoKamp”), and further in view of D481,601.
In re Claim 12, Ashfield teaches a hand-held battery-operated electric machining device (see Figs. 3-4), comprising:
a standing portion, wherein the standing portion is designed for contact with a substrate in a standing plane (the bottom surface of the chain saw in Fig. 4, is capable of contacting a substrate in a standing plane, such as the ground);
a receiving device (see Fig. 4, #76) for exchangeably receiving an electric battery pack in a receiving direction of the receiving device (see Fig. 4, #86), wherein the receiving device has a receiving space extending along the receiving direction and configured to be substantially complementary to the battery pack;
a housing section facing a tool (see Fig. 3, #70 faces the chain bar #52); and
a tank, which, on an inside, delimits a tank interior of the electric machining device to store a lubricant, wherein, viewed at right angles to the standing plane, the tank and the receiving device are arranged at least partly beside one another at right angles to the longitudinal extension direction (the lubrication system of Ashfield includes a tank, which, on an inside, delimits a tank interior of the electric machining device to store a lubricant, wherein, viewed at right angles to the standing plane, the tank and the receiving device are arranged at least partly beside one another at right angles to the longitudinal extension direction – see cap #73 which underneath includes a space for receiving cutting fluid – see also annotated Fig. 4).
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Ashfield teaches the battery inserted from “rear” to “front” and not from “top” to “bottom” of the chain saw. As such, Ashfield does not teach wherein the receiving space has a cross-sectional area extending parallel to the standing plane, wherein the cross-sectional area has two long sides extending along a longitudinal extension direction of the electric machining device and located substantially in parallel opposite one another, and two narrow sides extending at right angles to the longitudinal extension direction and located substantially in parallel opposite one another, wherein the two narrow sides extend substantially parallel to the housing portion facing the tool.
Additionally, Ashfield does not teach and wherein, viewed parallel to the standing plane and at right angles to the longitudinal extension direction, the receiving device and the tank overlap each other at least in some regions or completely
wherein the tank has a filling opening, present on a filling nozzle of the tank, for filling lubricant into the tank interior, and wherein a first distance between the filling opening and the standing plane is smaller than a second distance between a receiving opening of the receiving device and the standing plane.
However, Miura teaches that it is known in the battery powered chain saw art to provide a receiving space for a battery that is inserted from the “top” to the “bottom” (see Miura, Fig. 2 and Fig. 1, #50). In the same field of invention, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to replace the battery and battery insertion direction from “rear” to “front” to a “top” to “bottom” direction, including the aperture or hole that the battery is inserted into, as taught by Miura. Doing so is the substitution of one known battery connection arrangement for another known battery connection arrangement to achieve the result of attaching a battery to a chain saw to power the chain saw (see MPEP 2143, I, B). The examiner notes that each manufacturer has a different style connection method, and different style or sized batteries.
Adding the top down battery style of Miura to the chain saw of Ashfield would provide for wherein the receiving space has a cross-sectional area extending parallel to the standing plane, wherein the cross-sectional area has two long sides extending along a longitudinal extension direction of the electric machining device (see annotated Fig. 2, below) and located substantially in parallel opposite one another, and two narrow sides extending at right angles to the longitudinal extension direction and located substantially in parallel opposite one another (see annotated Fig. 2, below), wherein the two narrow sides extend substantially parallel to the housing portion facing the tool (see annotated Fig 2, below in view of Figs. 3-4 of Ashfield).
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The Examiner notes that Miura discloses the battery and housing opening are rectangular (see Miura, Para. 0030-31) which necessarily requires two “narrow” sides and two “long” sides. The examiner notes that there are only two orientations for inserting the rectangular battery into the rectangular hole of the chain saw. The first is where the “long” side of the battery is in the same plane as the chain saw bar. The second is where the “short” side of the battery is in the same plane as the chain saw.
967 Ro Kamp, Fig. 3, and 386 RoKamp, Fig. 1, evidences that these two orientations are known in the art. It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to orient the battery of Miura in the tool of Ashfield, in either orientation, since it has been held that rearranging the parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 – MPEP 2144.04, VI, C.
Further D481,601 teaches that it is known in the art of chain saws wherein, viewed parallel to the standing plane and at right angles to the longitudinal extension direction, the receiving device and the tank overlap each other at least in some regions or completely (see annotated Fig. 3, below).
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In the same field of invention, chain saws, it would have been obvious to one ordinary skill in the art, at the earliest effective filing date, to align the oiling system with the battery, in the manner claimed, since it has been held that rearranging the parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 – MPEP Doing so is the substation of one known orientation for another known orientation to achieve the result of providing two requires systems to a chain saw (power and lubrication). See MPEP 2143, I, B.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,286,359 to Ashfield in view of US 20190262753 A1 to Miura, with evidence from US 2010/0218967 to Ro Kamp (hereinafter “967 Ro Kamp”) and US 2010/028386 Ro Kamp (hereinafter ‘386 RoKamp”), and further in view of D481,601 and US 2011/0162219 to OKOUCHI.
In re Claim 13, Ashfield teaches a hand-held battery-operated electric machining device (see Figs. 3-4), comprising:
a standing portion, wherein the standing portion is designed for contact with a substrate in a standing plane (the bottom surface of the chain saw in Fig. 4, is capable of contacting a substrate in a standing plane, such as the ground);
a receiving device (see Fig. 4, #76) for exchangeably receiving an electric battery pack in a receiving direction of the receiving device (see Fig. 4, #86), wherein the receiving device has a receiving space extending along the receiving direction and configured to be substantially complementary to the battery pack;
a housing section facing a tool (see Fig. 3, #70 faces the chain bar #52); and
a tank, which, on an inside, delimits a tank interior of the electric machining device to store a lubricant, wherein, viewed at right angles to the standing plane, the tank and the receiving device are arranged at least partly beside one another at right angles to the longitudinal extension direction (the lubrication system of Ashfield includes a tank, which, on an inside, delimits a tank interior of the electric machining device to store a lubricant, wherein, viewed at right angles to the standing plane, the tank and the receiving device are arranged at least partly beside one another at right angles to the longitudinal extension direction – see cap #73 which underneath includes a space for receiving cutting fluid – see also annotated Fig. 4).
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Ashfield teaches the battery inserted from “rear” to “front” and not from “top” to “bottom” of the chain saw. As such, Ashfield does not teach wherein the receiving space has a cross-sectional area extending parallel to the standing plane, wherein the cross-sectional area has two long sides extending along a longitudinal extension direction of the electric machining device and located substantially in parallel opposite one another, and two narrow sides extending at right angles to the longitudinal extension direction and located substantially in parallel opposite one another, wherein the two narrow sides extend substantially parallel to the housing portion facing the tool.
Additionally, Ashfield does not teach and wherein, viewed parallel to the standing plane and at right angles to the longitudinal extension direction, the receiving device and the tank overlap each other at least in some regions or completely, wherein the tank has a filling opening, present on a filling nozzle of the tank, for filling lubricant into the tank interior, and wherein a first distance between the filling opening and the standing plane is smaller than a second distance between a receiving opening of the receiving device and the standing plane.
However, Miura teaches that it is known in the battery powered chain saw art to provide a receiving space for a battery that is inserted from the “top” to the “bottom” (see Miura, Fig. 2 and Fig. 1, #50). In the same field of invention, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to replace the battery and battery insertion direction from “rear” to “front” to a “top” to “bottom” direction, including the aperture or hole that the battery is inserted into, as taught by Miura. Doing so is the substitution of one known battery connection arrangement for another known battery connection arrangement to achieve the result of attaching a battery to a chain saw to power the chain saw (see MPEP 2143, I, B). The examiner notes that each manufacturer has a different style connection method, and different style or sized batteries.
Adding the top down battery style of Miura to the chain saw of Ashfield would provide for wherein the receiving space has a cross-sectional area extending parallel to the standing plane, wherein the cross-sectional area has two long sides extending along a longitudinal extension direction of the electric machining device (see annotated Fig. 2, below) and located substantially in parallel opposite one another, and two narrow sides extending at right angles to the longitudinal extension direction and located substantially in parallel opposite one another (see annotated Fig. 2, below), wherein the two narrow sides extend substantially parallel to the housing portion facing the tool (see annotated Fig 2, below in view of Figs. 3-4 of Ashfield).
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The Examiner notes that Miura discloses the battery and housing opening are rectangular (see Miura, Para. 0030-31) which necessarily requires two “narrow” sides and two “long” sides. The examiner notes that there are only two orientations for inserting the rectangular battery into the rectangular hole of the chain saw. The first is where the “long” side of the battery is in the same plane as the chain saw bar. The second is where the “short” side of the battery is in the same plane as the chain saw.
967 Ro Kamp, Fig. 3, and 386 RoKamp, Fig. 1, evidences that these two orientations are known in the art. It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to orient the battery of Miura in the tool of Ashfield, in either orientation, since it has been held that rearranging the parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 – MPEP 2144.04, VI, C.
Further D481,601 teaches that it is known in the art of chain saws wherein, viewed parallel to the standing plane and at right angles to the longitudinal extension direction, the receiving device and the tank overlap each other at least in some regions or completely (see annotated Fig. 3, below).
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In the same field of invention, chain saws, it would have been obvious to one ordinary skill in the art, at the earliest effective filing date, to align the oiling system with the battery, in the manner claimed, since it has been held that rearranging the parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 – MPEP Doing so is the substation of one known orientation for another known orientation to achieve the result of providing two requires systems to a chain saw (power and lubrication). See MPEP 2143, I, B.
Further, OKOUCHI teaches that it is known in the art of chain saws to provide a lubrication opening (see OKOUCHI, Fig. 1, #38) wherein the tank has a filling opening, present on a filling nozzle of the tank (see OKOUCHI, Fig. 1, #38), for filling lubricant into the tank interior, and wherein a first distance between the filling opening and the standing plane is smaller than a second distance between a receiving opening of the receiving device and the standing plane (see OKOUCHI, Fig. 1, #50, showing the fill opening closer to the “bottom” surface of the saw than the opening of the battery).
It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to place the opening of the lubrication tank of modified Ashfield below the top portion the battery opening, as taught by OKOUCHI. Changing the size of the lubrication tank would have been within the level of ordinary skill in the art, at the earliest effective filing date. One of ordinary skill understands that more fluid allows the user to cut longer but also adds weight to the saw and a tank that holds less fluid is lighter but requires stopping and filling up more often. In other words, the size, and therefore the position of the opening of the lubrication tank is an engineering tradeoff that one of ordinary skill in the art balances when designing a chain saw.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicant’s arguments regarding some of drawing objections were persuasive; however, drawing objections remain – see above.
Applicant’ argues that the drawings are discernible. The Examiner disagrees. As an example the figure below illustrates that the labels are not discernible. Note: below are simply examples, and not a complete illustration what is not discernible, throughout all the figures.
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Applicant argues that reference characters 24-27 identify separate structures. However, 27/26 use the same leader line and point to the same structure. 24-25 also use the same leader line and point to the same structure. As such, it cannot be said that these reference numbers identify different structures. At a minimum each of these reference numbers should have a separate leader line pointing out separate structures.
Applicant argues that the figures illustrate an exchangeable tank. The Examiner disagrees. There is no structure illustrated that allows for the tank to be exchanged. Further, there is no illustration of the tank removed and a second tank being installed. Additionally, there is no illustration of the tank removed. As such, the figures do not illustrate structure that allows the tank to be exchanged, or the tank being exchanged.
Applicant acknowledges that the funnel portion #28 and filling openings #25 are internal to the housing and not shown. The examiner notes that structure that allows the collection of lubricant, feeding the collected lubricant directly to filling opening 25, and/or leads lubricant away from receiving device 3, is not shown in the figures. As such, the drawing objections remain.
Applicant argues that Ashfield and Miura do not teach the receiving space has a cross-sectional area extending parallel to the standing plane. The Examiner disagrees. As best understood, the claim requires a space, or opening having a cross-sectional area parallel to the ground. When the battery of Ashfield is replaced with battery style of Miura, the gap in which the battery is inserted includes a space that is parallel to the standing plane, when the chain saw is on the ground. Fig. 3 of Miura illustrates this.
According to Applicant, Miura does not identify any cross-sectional area of battery receiving chamber 16, any standing plane, or any parallel relationship between such a cross-sectional area and a standing plane. The Examiner disagrees. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). See MPEP 2125, I.
Here, the claim is directed to a space, not the side walls of the tool. The space in that receives the battery in Miura, has a rectangular receiving space that has a cross-sectional area extending parallel to the standing plane (see Figs. 1-2), with two long sides and two narrow sides extending at right area. The claim simply requires two sides that are longer, even infinitesimally, than the other two sides. Miura states that the chamber can be a “substantially rectangular receptacle” for receiving a rectangular housing (see Miura, Para. 0030-31). A rectangle shape necessarily requires two sides that are longer than the remaining two sides.
Applicant argues that “Miura does not disclose the claimed "two narrow sides," Miura necessarily cannot disclose the further requirement that those same sides "extend substantially parallel to the housing portion facing the tool." The Examiner disagrees. Miura discloses the battery and housing opening are rectangular which necessarily requires two “narrow” sides and two “long” sides. The examiner notes that there are only two orientations, for inserting the rectangular battery into the rectangular hole of the chain saw. The first is where the “long” side of the battery is in the same plane as the chain saw bar. The second is where the “short” side of the battery is in the same plane as the chain saw. It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to orient the battery of Miura in the tool of Ashfield, in either orientation, since it has been held that rearranging the parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 – MPEP 2144.04, VI, C.
Applicant argues “Miura states that cutter 20 is attached to the right side of body housing 11, that guide bar 21 extends longitudinally, and that a rear portion of guide bar 21 is attached to the right side of body housing 11. See Miura at [0038]. Miura similarly states that cutter 20 may be attached to one side, such as the right side, of body 10. See Miura at [0063]. These teachings merely locate the cutter on one side of Miura's body; they do not state or suggest that the alleged narrow sides of battery receiving chamber 16 extend substantially parallel to any housing portion facing that cutter.” The Examiner agrees that the location of the cutter in Miura does not orient the battery. One of ordinary skill in the art understand that the are two possible orientations. The first illustrated in US 2010/0218967 to Ro Kamp, Fig. 3, and the second illustrated in US 2010/028386 Ro Kamp, Fig. 1. Either of which is within the level of ordinary skill in the art.
Applicant argues that Ashfield does not teach “"wherein, viewed at right angles to the standing plane, the tank and the receiving device are arranged at least partly beside one another at right angles to the longitudinal extension direction." The Examiner disagrees. As illustrated below the structure of Ashfield reads on the claims.
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Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN RILEY whose telephone number is (571)270-7786. The examiner can normally be reached Monday - Friday, 8:30 AM - 5:00 PM.
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/JONATHAN G RILEY/Primary Examiner, Art Unit 3724
