DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16th, 2013 is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction Requirement
Applicant’s election without traverse of Group II comprising claims 12-20 in the reply filed on 12/19/2025 is acknowledged.
Information Disclosure Sheet
The information disclosure statement (IDS) submitted on 12/05/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 12 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 10-11 of U.S. Patent No. 12,208,501. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application recite the same elements of the claims found in the US Patent, as illustrated in the table provided below. For clarity the relevant element of the instant application is presented in the left column, and the identical or synonymous element of the US patent is presented in the right column. Where needed, an explanation is provided for the purposes of the nonstatutory double patenting rejection.
US Application 18/966,455
US Patent 12,208,501
Claim 12:
A power tool comprising:
a housing including a motor housing portion and a handle portion extending therefrom,
the handle portion including a foot extending therefrom opposite the motor housing portion;
an electric motor positioned within the motor housing portion;
a mode selector switch positioned in the foot of the handle portion, the mode selector switch configured to adjust an operational mode of the power tool.
…a battery receptacle defined in a bottom surface of the foot in which a battery pack is receivable…
Claim 1:
A rotary power tool comprising:
a housing including a motor housing portion and a handle portion extending therefrom;
…a foot of the handle portion opposite the motor housing portion…
an electric motor positioned within the motor housing portion;
a non-contact speed selector switch separate from the trigger switch and configured to adjust a rotational speed of the motor … wherein the non-contact speed selector switch is positioned in a foot of the handle portion.
Claim 2:
…wherein the foot includes a bottom surface configured to be selectively coupled to a battery pack…
The main difference between the claims of the instant application and the US patent is that the application recites a “mode selector switch… configured to adjust an operation mode of the power tool,” while the US patent recites a “non-contact speed selector switch… configured to adjust a rotational speed of the motor.” While not identical, these elements are not patentably distinct. A non-contact speed selector switch is a type of mode selector switch, and the ability to adjust a rotational speed of the motor is the same as an ability to adjust an operation mode of the power tool. Furthermore, the instant application’s recitation of “a battery receptacle defined in a bottom surface of the foot in which a battery pack is receivable” is rendered obvious by the limitations of claim 2 of the US patent (as presented above). It would have been obvious to incorporate a surface capable of connecting with battery pack into the power tool in order to provide a portable means for providing reliable power to the tool.
The following claims are identified as identical between the instant application and the US patent.
US Application 18/966,455
US Patent 12,208,501
Claim 17
Claim 10
Claim 18
Claim 11
Claim 19:
wherein the operational mode that is adjustable by the mode selector switch is a rotational speed of the motor.
Claim 1:
a non-contact speed selector switch separate from the trigger switch and configured to adjust a rotational speed of the motor
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 12 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Najjar (US 2016/0301340 A1).
Regarding claim 12, Najjar discloses a power tool (See power tool of Fig 2) comprising:
a housing (Fig 2, #12) including a motor housing portion (Figure 2, #12) and a handle portion (Fig 2, #30) extending therefrom (Shown in figure 2), the handle portion (#30) including a foot (Figure 2, #34) extending therefrom opposite the motor housing portion (Shown in figure 2);
a battery receptacle defined in a bottom surface of the foot (Figure 2 illustrates that the bottom surface of the foot #34 has a battery receptacle #28) in which a battery pack is receivable (Described in ¶ [0030]);
an electric motor (Fig 2, #20 positioned within the motor housing portion (See Fig 2 illustrating a motor housing portion {#12} housing the motor {#20});
a trigger switch (Fig 2, #36) configured to activate and deactivate the motor (Described in ¶'s [0030] - [0032]); and
a mode selector switch (See Fig 2, #42) positioned in the foot of the handle portion (Figure 2 illustrates the switch positioned in the foot of the handle portion), the mode selector switch configured to adjust an operational mode of the power tool (Described in ¶ [0030] - "...Coupled to the top of the battery receptacle 28 is a speed selector switch 42, which provides an input to the controller 40. The speed selector switch 42 allows the user to select among a plurality of maximum motor speeds. For example, in one possible embodiment the speed selector switch 42 may have three positions—low speed, medium speed, and high speed with the normal mode.").
Regarding claim 18, Najjar further discloses wherein a longitudinal axis of the motor housing portion defines a forward direction (Shown in figure 2, towards element #28 of the figure) and rearward direction of the power tool (Shown in figure 2, towards element #16 of the figure), with the forward direction being adjacent an output shaft of the power tool (Shown in figure 2, #28), wherein at least a portion of the foot extends forward of the handle (Figure 2 illustrates that a portion of the foot extends forward of the handle #30), and wherein the mode selector switch is positioned in the foot forward of the handle (Figure 2 illustrates that the mode selector switch #42 is located in a position of the foot forward of the handle #30).
Regarding claim 19, Najjar further discloses wherein the operational mode that is adjustable by the mode selector switch is a rotational speed of the motor (Described in ¶ [0030]).
Regarding claim 20, Najjar further discloses wherein the operational mode includes a first operational mode coinciding with a first rotational speed of the electric motor, and a second operational mode coinciding with a different, second rotational speed of the electric motor (Described in ¶ [0030] - "...The speed selector switch 42 allows the user to select among a plurality of maximum motor speeds. For example, in one possible embodiment the speed selector switch 42 may have three positions—low speed, medium speed, and high speed with the normal mode.").
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 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Najjar in view of Kokinelis (US 2014/0015383 A1).
Regarding claim 13, Najjar teaches wherein the mode selector switch includes a movable actuator (Figure 2, #42).
Najjar does not specifically teach a stationary sensor, and wherein the actuator is not in physical contact with the sensor.
Kokinelis teaches a power tool comprising a switch (shown in Figure 6) comprising a movable actuator (Figure 6, #72) and a stationary sensor (Figure 6, #92), and wherein the actuator is not in physical contact with the sensor (Figure 6 illustrates that the actuator is not in physical contact with the sensor. This is further described in ¶ [0040]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Najjar to incorporate the teachings of Kokinelis to include a stationary sensor positioned on the mechanical switch with the motivation that the sensor would output data to the controller based on the sensed position of said switch, as described by Kokinelis in ¶ [0040].
Regarding claim 14, Najjar does not specifically teach wherein the mode selector switch includes a circuit board configured to support the sensor.
Kokinelis teaches wherein the mode selector switch includes a circuit board (Figure 6, #90) configured to support the sensor (Figure 6 illustrates a Hall-effect sensor {#92} positioned on the circuit board {#90}).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Najjar to incorporate the teachings of Kokinelis to include a circuit board to support the sensor, in order to provide a well-known electro-mechanical structure to aid in the performance of the mode selector switch, as described by Kokinelis in ¶ [0040].
Regarding claim 15, Najjar does not specifically teach wherein the sensor is a Hall-effect sensor, wherein the actuator includes a magnet, and wherein the mode selector switch is configured to adjust the operational mode of the power tool based on a position of the magnet relative to the Hall-effect sensor.
Kokinelis teaches wherein the sensor is a Hall-effect sensor (Described in ¶ [0040]), wherein the actuator (Figure 6, #72) includes a magnet (Figure 6, #78), and wherein the mode selector switch is configured to adjust the operational mode of the power tool based on a position of the magnet relative to the Hall-effect sensor (Described in ¶'s [0040] - [0041]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Najjar to incorporate the teachings of Kokinelis to include a magnet positioned on the mechanical switch with the motivation that the use of a magnet on the switch would allow for the hall sensor to output data to the controller based on the sensed position of said switch, as described by Kokinelis in ¶ [0040]. Further, one of ordinary skill would recognize that a magnet is an inherent structure necessary for a Hall sensor to determine the position of a mechanical switch element, and output said signals to the controller (see MPEP 2163.07(a)).
Regarding claim 16, Najjar does not specifically teach wherein the magnet is disposed on a lower surface of the actuator that is oriented parallel to a surface of the circuit board on which the Hall-effect sensor is disposed.
Kokinelis teaches wherein the magnet is disposed on a lower surface of the actuator (Figure 5 illustrates that the shuttle {#72} has the magnet {#78} disposed on the lower surface) that is oriented parallel to a surface of the circuit board on which the Hall-effect sensor is disposed (Shown in figure 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Najjar to incorporate the teachings of Kokinelis to include a magnet positioned on the mechanical switch with the motivation that the use of a magnet on the switch would allow for the hall sensor to output data to the controller based on the sensed position of said switch, as described by Kokinelis in ¶ [0040]. Further, one of ordinary skill would recognize that a magnet is an inherent structure necessary for a Hall sensor to determine the position of a mechanical switch element, and output said signals to the controller (see MPEP 2163.07(a)).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Najjar in view of Kokinelis, and in further view of Kuehne (US 2013/0025899 A1).
Regarding claim 17, Najjar does not specifically teach wherein the mode selector switch includes a circuit board disposed within the foot of the handle portion, wherein the mode selector switch includes a plurality of recesses disposed on an underside of a movable portion of the mode selector switch such that the plurality of recesses are positioned within the foot, and wherein the mode selector switch includes a detent spring positioned beneath the movable portion of the mode selector switch and disposed adjacent the circuit board.
Kokinelis teaches wherein the mode selector switch includes a circuit board (Figure 6, #90) disposed within the foot of the handle portion (Najjar as modified by Kokinelis teaches that the circuit board is positioned in the foot of the handle portion, where the identified mode selector switch is located).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Najjar to incorporate the teachings of Kokinelis to include a circuit board to support the sensor, in order to provide a well-known electro-mechanical structure to aid in the performance of the mode selector switch, as described by Kokinelis in ¶ [0040].
However, Najjar in view of Kokinelis does not specifically teach wherein the mode selector switch includes a plurality of recesses disposed on an underside of a movable portion of the mode selector switch such that the plurality of recesses are positioned within the foot, and wherein the mode selector switch includes a detent spring positioned beneath the movable portion of the mode selector switch and disposed adjacent the circuit board.
Kuehne teaches wherein the mode selector switch includes a plurality of recesses (Figure 9, #302) disposed on an underside of a movable portion of the mode selector switch such that the plurality of recesses are positioned within the foot (Shown in figures 8-9. This is further described in ¶ [0040]), and wherein the mode selector switch includes a detent spring positioned beneath the movable portion of the mode selector switch and disposed adjacent the circuit board (Described in ¶'s [0037] & [0040]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Najjar in view of Kokinelis to incorporate the teachings of Kuehne to include wherein the mode selector switch includes a plurality of recesses within the foot and wherein the switch includes a detent spring, in order to provide a structure for ensuring that the switch stays in one of a plurality of positions, as recognized by Kuehne in ¶ [0039] – [0040].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB A SMITH whose telephone number is (571) 272-3974 and email address is Jacob.Smith@uspto.gov. The examiner can normally be reached on M-F 7:30AM - 5:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at (571) 270-1926. 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.
/JACOB A SMITH/Examiner, Art Unit 3731