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 .
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 .
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.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,209,582 in view of US Patent No. 8,282,363 (herein Ohi). The claims of US Patent 12,209,582 do not teach a roll cage for the pump, motor, or tank components. However, Ohi teaches a portable pump (10; FIG. 1) including a motor driven pump (24) and a tank (20, 50), and a roll cage (25; C. 3 Lines 34-42) covering one or both of the components. It would have been obvious to one of ordinary skill in the art of pumps at the time the invention was filed to provide a roll cage feature in the pump of Patent No. 12,209,582, as taught by Ohi, in order to protect the pump components in the case that the pump is dropped for example.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Steinfels et al (US PGPub No. 2008/0181794).
Steinfels teaches:
limitations from claims 1 and 7, a cordless compressor (10; FIG. 2 and FIG. 10 for example) comprising: an air storage tank (94); a pump (130) for pressuring air within the air storage tank (paragraphs 39, 52, and 60 for example); a motor (120) for driving the pump; a roll cage covers portions of at least one of the air storage tank, the pump, and the motor (paragraph 40: “…protective elements may include roll bars 12 that extend from the exterior surface of the compressor housing 110, end caps 26, or tank 94…”; a controller circuit (240, see FIG. 13; additionally/alternatively, the components included under “on/off” in FIG. 14) electrically connected to the motor; a pressure switch assembly (366) connected to the controller circuit (see FIG. 13 and the dashed lines in FIG. 14), wherein the pressure switch assembly has first and second pressure switches (see paragraph 74 in which it is taught that pressure switches, either singular or plural, are used to control electricity to the motor 120 based on a sensed air reservoir 94 pressure) or a pressure sensor (paragraph 76, transducer 241 monitors reservoir 94 pressure and controls electricity to the motor 120) for sensing pressure within the air storage tank (paragraph 66, 74, 76, 77-78; FIG. 13-14); a discharge port (leading to ~36, as seen in FIG. 14; paragraph 66) connected to the air storage tank (94); and a regulator (368) disposed between the discharge port and the air storage tank: wherein the controller circuit controls de-activation of the motor depending upon status of the first and second pressure switches or pressure sensor (paragraphs 63-64, 66, 74, and 76-77, the motor is controlled based on high and low pressure settings);
limitations from claims 2 and 8, further comprising a battery pack docking station electrically connected to the motor (300; paragraph 38), wherein a power tool battery pack is electrically connectable to the battery pack docking station (paragraph 38 disclosing that the battery may be a battery pack releasably mounted to the compressor housing);
limitations from claims 3 and 9, wherein the controller circuit determines a characteristic (voltage, current, capacity) of the power tool battery pack electrically connected to the battery pack docking station (paragraph 95-96);
limitations from claims 4 and 10, wherein the controller circuit controls de-activation of the motor depending upon the status of the first and second pressure switches (paragraphs 63-64, 66, 74, and 76-77, the motor is controlled based on high and low pressure settings) and the determined characteristic of the power tool battery pack (paragraphs 88-90 and 95-99 for example in which battery voltage and/or current is relied upon to turn off the motor);
limitations from claims 5 and 11, wherein the controller identifies a component within the power tool battery pack to determine the characteristic of the power tool battery pack (paragraph 65 teaching a regulator circuit with a multi-voltage adaptor for different battery types and quantities; paragraph 76 teaching control circuit 240 including components for sensing parameters related to a battery state);
limitations from claims 6 and 12, further comprising an AC power cord for connecting the motor to an AC power source (source 302; paragraphs 62 and 64);
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive. Applicant has amended the claims to require a roll cage covering portions of one of the air storage tank, the pump, and motor. Applicant argues that Steinfels et al (US PGPub No. 2008/0181794) does not teach such roll cage (response Page 7). However, as notated in the above rejection of Claims 1 and 7, Steinfels teaches “…protective elements may include roll bars 12 that extend from the exterior surface of the compressor housing 110, end caps 26, or tank 94…” at paragraph 40. Therefore Steinfels teaches a roll cage at least on one of the motor, pump, and/or tank.
Regarding the double patenting rejection, the applicant argues that the amended claims do overcome the rejection because the prior US Patent does not teach the limitations regarding the roll cage. The examiner agrees, but has now relied upon a secondary reference to Ohi teaching a roll cage, and maintains a non-statutory double patenting rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S BOBISH whose telephone number is (571)270-5289. The examiner can normally be reached Mon-Fri 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Essama Omgba can be reached at 469-295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER S BOBISH/Examiner, Art Unit 3746