DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Terminal Disclaimer
The terminal disclaimer filed on May 18, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent 12, 159,989 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4, 11, and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The written description requirement of 35 U.S.C. §112(a) mandates that the specification must reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.
In the present application, while the specification generically refers to "devices" including tools, batteries, and chargers, and discusses assignment and authorization of devices (see, e.g., [0022], [0071], [0079]), there is no explicit disclosure or specific embodiment describing or illustrating the assignment of a **battery pack charger** to a **battery pack** such that the charger only operates when connected to a specific battery pack, or vice versa. The only detailed assignment or authorization examples provided pertain to tool-battery or tool-location pairings.
The closest language ([0079]) states:
"...the controller in the tool and/or the charger determines whether the respective tool or charger is in the locked state or the unlocked state; when an authorized battery is inserted into the tool and/or the charger, then the respective controller may change the tool and/or charger to the unlocked state..."
However, this passage does not describe, exemplify, or convey possession of a system in which a database assigns a specific charger to a specific battery pack, nor does it describe the charger-battery assignment as claimed.
Accordingly, the originally filed specification does not reasonably convey to one skilled in the art that the inventors had possession of the claimed subject matter at the time of filing with respect to the assignment of a battery pack charger to a battery pack.
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 (i.e., changing from AIA to pre-AIA ) 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.
(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.
Claim(s) 1-3, 5-10, 12-16 and 18-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by KREUZER et al. (US 20200272124 A1).
Regarding claims 1, 8, 14, KREUZER discloses:
a device including a first controller operatively connected to a first wireless transceiver; (Figure 2, tool 20 including communication receiving provisions 140 and communication transmitting provisions 150);
a wireless communication node including a second controller and a second wireless transceiver, ([0050-0053], one or more electronic mobile devices 30, 30′, 30″ and 30′″ communicating with the registration-and-control component 40 tools 20. The mobile device(s) inherently include a controller and transceiver);
the wireless communication node corresponding to an operable location, ([0110] Moreover, while the smart tool is connected to the smartphone, other use data can be transferred from the smart tool memory to the smartphone. Such use data can then be transferred from the smartphone to the registration-and-control component of the cloud server for the purpose of further analyzing the data, resulting, for example, in the programming or composition of preventative maintenance alerts or usage reports to which an authorized user would have access through any mobile device or computer.
[0112] The present subject matter also enables easier tracking of the physical location of the tool. The tool can be equipped with a GPS module. Such GPS modules are typically in the form of electronic circuitry and are capable of identifying their location and providing coordinates for the GPS-tracked location. If an owner or authorized user wants to know the physical location of the tool, the owner or user can send a signal from an internet enabled device to the cloud server, which in turn can “ping” the tool via the cellular connection. As long as the smart tool is powered “on” and within cellular range, it can send back its GPS coordinates. The tool can also be configured to send its GPS coordinates every time it is powered on, thereby allowing an owner to monitor the tool.)
and a database ([0041] The registration-and-control component of the present subject matter includes a database and data storage provisions in which user information is stored and securely retained.); configured to: receive a first input registering the device with the database, receive a second input registering the wireless communication node with the database, and receive a third input assigning the device to the wireless communication node, ([0091], an operator could use a mobile device to issue another activation signal with an activation code to enable the tool to be used again. Re-activation of a tool using the mobile device would not require communication between the mobile device and the registration-and-control component. Alternatively, users can designate a mobile device as a “trusted device,” to enable tool use without further connection with the server.)
Regarding claims 2, 9, 15, KREUZER discloses:
the device is a first device, wherein the job site security system further includes a second device, and wherein the database is configured to: receive a fourth input assigning the first device to the second device, wherein, when the first device is assigned to the second device, the first device only operates when connected to the second device; ([0054] disclosing the registration-and-control component 40 registering the tools along with the mobile device 30 such that the operation of the tools 20 may be controlled by the mobile device 30).
Regarding claims 3, 10, 16, KREUZER discloses:
the first device is a power tool and the second device is a battery pack,
([0058]…the tool 20 may also comprise one or more sensors collectively shown as 170 to sense one or more parameters, typically in real-time relating to tool use, operating conditions, and/or ambient conditions. Nonlimiting examples of such sensors include temperature sensors, pressure sensors, force sensors, electrical current sensors, electrical voltage sensors, accelerometers, counters, and time sensors to measure time periods of use or particular conditions of use. Many currently available tools and tool systems include electronic controls for operating the tool. Thus, one or more of components 110, 120, and 130 may in certain applications be readily configured in the tool(s) of interest. The communication provisions 140, 150 as previously described correspond to the communication format of the mobile device(s). [0061] Electronic lock provisions can also include one or more physical components such as a switch that connects or disconnects actuation circuit(s) and/or power supplies of the tool(s). In certain embodiments, the electronic lock provisions utilize one or more field effect transistors (FET) to provide switching or activation of the tool of interest. These circuits when used for enabling tool operation as described herein are referred to as FET-based electronic lock provisions.)
Regarding claims 5, 12, 18, KREUZER discloses:
wherein the database is further configured to: transmit a first signal to the device indicative of the device being assigned to the wireless communication node,( [0033] In one aspect, the present subject matter provides a system for governing operation of a tool. The system comprises a cloud-based server with sufficient memory to store smart tool access data for a plurality of smart tools. The system also includes a user interface to provide user-access to the cloud-based server. The cloud-based server includes a processor able to match the smart tool access data of each smart tool to a user authorized to use at least one of the plural smart tools. The smart tool system also includes a cloud-based registration-and-control component. Assignment/authorization signals sent from cloud/mobile to tool via wireless/cellular.)
Regarding claim 6, KREUZER discloses:
a lockable storage unit, wherein the lockable storage unit includes the wireless communication node, ([0059] Electric or electronic lock provisions incorporated into smart tools of the present subject matter can take various forms and configurations. The lock provisions can be configured to enable tool use upon receiving an activation signal. Activation signals can be issued from the registration-and-control component or the mobile device, or can be based upon signals from both. Typically, an activation signal issues from the registration-and-control component and is relayed by the mobile device to a smart tool.)
Regarding claims 7, 13, KREUZER discloses:
the device is a first device of a plurality of devices, and the wireless communication node is a first wireless communication node of a plurality of wireless communication nodes; and the plurality of devices and the plurality of wireless communication nodes are configured to form a mesh network; ([0054] The system 10 comprises one or more communication links between the tool(s) 20 and the mobile device(s) 30 collectively shown in FIG. 1 as link(s) A. More particularly, other nonlimiting examples of tools include a drill 22 which can communicate with the mobile device 30 via link(s) A′, a table saw 24 which can communicate with the mobile device 30 via link(s) A″, and a miter saw 26 which can communicate with the mobile device 30 via link(s) A′″. )
Regarding claims 19, KREUZER discloses:
the device is only capable of being operated when within a designated range of the wireless communication node. ([115], …the electronic communication provisions include wireless and/or cellular communication provisions; and the tool-lock provisions include devices for locking or otherwise disabling a particular tool, automatically, after a tool operation parameter limit or other condition has occurred. Nonlimiting examples of tool operation parameter limits include number of cycles (e.g., no more than 10, 25, 50, 100, 500 cycles of operation; or no movement beyond 100 meters, 200 meters, or 300 meters from a specified location or job site; or no smart tool operational activity between specified times-of-day, such as, 9:00 am and 5:00 pm; and combinations of these limits. Therefore, location-based lockout: tool only works when authorized/within range/assigned node.)
Regarding claims 20, KREUZER discloses:
receiving a fourth input indicating the designated range. Such a parameter limit can be selected from predetermined conditions which include but are not limited to: ([0101] – [0105], the location is considered during registration with various parameters such as (i) number of smart tool actuations; (ii) date; (iii) period of time; (iv) number of cycles; (v) amount of time; (vi) distance from a specified location; and (vii) combinations of (i)-(vi).)
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 4, 11 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over KREUZER et al.
Regarding claims 4, 11, 17, KREUZER does not explicitly disclose wherein the first device is a battery pack charger and the second device is a battery pack. However, Kreuzer does disclose a job site security system comprising a plurality of devices (tools, batteries, chargers), wireless communication nodes, and a database (cloud/server) for registering devices and assigning authorized pairings (see, e.g., Kreuzer [0033]-[0037], [0054-0056], [0071], [0125]-[0131]). Kreuzer explicitly discloses assigning a tool (first device) to a battery (second device), such that the tool only operates when the authorized battery is present or connected ([0071], [0127]-[0131]). The system includes controllers and wireless transceivers in each device, and the assignment/authorization is managed by the database.
While Kreuzer does not explicitly disclose assigning a battery pack charger to a battery pack such that the charger only operates when connected to an authorized battery pack, it would have been obvious to one of ordinary skill in the art to extend the same assignment and authorization logic to a charger and a battery pack. The rationale for such a modification includes: Security for prevent theft; safety of using the device; and system consistency of applying the same control and tracking logic to all devices in the system (tools, batteries, chargers) as described in Kreuzer.
Further, this lends to predictable results: The system architecture and logic for tool-battery pairing is identical to that for charger-battery pairing, and Kreuzer’s system already includes wireless communication and control for chargers ([0056], [0127]).
Accordingly, it would have been a simple and predictable extension for one of ordinary skill in the art, motivated by the above reasons, to configure the Kreuzer system such that the database assigns a battery pack charger to a battery pack, and the charger only operates when connected to the assigned/authorized battery pack, as required by claim 4.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Burch et al. (US 20140240125 A1), relates to systems and methods for wirelessly tracking power tools and related devices.
Wenger et al. (US 20140070924 A1), relates to power tools and more specifically to a system and method for identifying a power tool.
Zeiler et al. (US 20140006295 A1), relates to electronic identifiers stored in commercial products.
Zeiler et al. (US 20130109375 A1), relates to systems and methods for tracking power tools and related devices.
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/DAVETTA W GOINS/Supervisory Patent Examiner, Art Unit 2689
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