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 .
Status of Claims
Receipt is acknowledged of claims, filed on 03/13/2026, which has been placed of record and entered in the file.
Status of the claims:
Claims 1-20, are pending for examination.
Election/Restrictions
Applicant’s election without traverse of Group I drawn to claims 1-8 in the reply filed on 03/13/2026 is acknowledged.
However due to applicants amendment of claims 9-20, Claims 9-20 are rejoined as they now depend from claim 1. Consequently, Claims 1-20 are currently pending and being examined in this office action.
Drawings
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, the following features must be shown or the feature(s) canceled from the claim(s).
Mode select switch (claim 1)
Lock-on switch (claim 6)
Motor lock-on switch (Claim 9)
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 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 1-20 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the phrase “wherein the mode select switch is positioned rearward of the power switch in a direction parallel to the tool axis such that the power switch” renders claim 1 to be non-complying with the written description requirement because the feature appears to be new matter. Looking at the figures (Fig. 3A, Fig. 4, and Fig. 12), the lock-on switch (mode select switch) is on the front wall of the handle, below the trigger, and not strictly “rearward” in the same horizontal plane as the rigger along the tool axis (X-X). The tool ais is horizontal, and the handle drops down. The spec in paragraph ([0042]) describes the lock-on switch as being “below the trigger” on the fifth gripping region 45, which is on the front wall portion of the handle. The Specification does not disclose a mode select switch is positioned rearward of the power switch in a direction parallel to the tool axis such that the power switch. Therefore, the feature is considered new matter.
Regarding claim 7, the phrase “a finger rest disposed on a bottom portion of the motor and transmission housing portion axially forward of the power switch in a direction parallel to the tool axis” renders claim 7 to be non-complying with the written description requirement because the feature appears to be new matter. Looking at the figures (Fig. 3A-3B, Fig. 4, and Fig. 12), the finger rest (43, 45, 80, 84) is on the front wall of the handle, below the trigger, and not strictly “forward” in the same horizontal plane as the trigger along the tool axis (X-X). The tool axis is horizontal, and the handle drops down. The Specification does not disclose a finger rest disposed on a bottom portion of the motor and transmission housing portion axially forward of the power switch in a direction parallel to the tool axis. Therefore, the feature is considered new matter.
Regarding claim 9, the phrase “motor lock-on switch disposed on a surface of the housing” renders claim 9 to be non-complying with the written description requirement because the feature appears to be new matter. The term “motor lock-on switch” does not appear anywhere in the specification. Therefore, the feature is considered new matter.
Regarding claim 18, the phrase “a finger rest disposed on a bottom portion of the motor and transmission housing portion axially forward of the power switch in a direction parallel to the tool axis” renders claim 7 to be non-complying with the written description requirement because the feature appears to be new matter. Looking at the figures (Fig. 3A-3B, Fig. 4, and Fig. 12), the finger rest (43, 45, 80, 84) is on the front wall of the handle, below the trigger, and not strictly “forward” in the same horizontal plane as the trigger along the tool axis (X-X). The tool axis is horizontal, and the handle drops down. The Specification does not disclose a finger rest disposed on a bottom portion of the motor and transmission housing portion axially forward of the power switch in a direction parallel to the tool axis. Therefore, the feature is considered new matter.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 1-20, the claims are generally indefinite as they contain numerous phrases and terms that appear to contain terms and/or phrases that are not in alignment with the way it is described in the disclosure and which makes the claims difficult to follow or fully ascertain their scope. Some pertinent examples are shown below.
Regarding claim 1, the phrase “wherein the mode select switch is positioned rearward of the power switch in a direction parallel to the tool axis such that the power switch” renders claim 1 vague and indefinite because it is unclear if “mode select switch is positioned rearward of the power switch in a direction parallel to the tool axis” accurately describes a switch that is primarily below of the trigger as described in the specification. For examining purposes, the claim will be interpreted as best understood from the orientation as provided in figures in applicants disclosure.
Regarding claim 7, the phrase “a finger rest disposed on a bottom portion of the motor and transmission housing portion axially forward of the power switch in a direction parallel to the tool axis” renders claim 1 vague and indefinite because it is unclear if “a finger rest is axially forward of the power switch in a direction parallel to the tool axis” accurately describes a finger rest that is primarily below the trigger as described above. For examining purposes, the claim will be interpreted as best understood from the orientation as provided in figures in applicants disclosure.
Regarding claim 9, the phrase “motor lock-on switch disposed on a surface of the housing” renders indefinite because it is unclear what element is being referred to as the motor lock on switch. This limitation does not appear any where in the specification. The specification only disclose a lock-on switch (74) at [0033]. The modifier “motor” is unexplained and not defined anywhere in the disclosure. A person of ordinary skill in the art cannot determine with reasonable certainty whether “motor lock out switch” is the same as lock on switch 74, or whether it connotes a structurally and functionally different switch that locks the motor directly as opposed to locking the trigger. Correction and clarification is required.
Regarding claim 15, the claim recites “the top portion having a first depth and a first width, the intermediate portion having a second depth and a second width, and the bottom portion having a third depth and a third width, the first depth greater than the second depth, the second depth greater than the third depth, and the second width greater than the third width.” Which renders the claim indefinite because the claim does not define the direction in which the depth is measured or the reference points from which each depth measurement is taken. Additionally, the claim does not define the location along the handle at which each width could measured from. Without reference locations, a person of ordinary skill in the art cannot determine with reasonable certainty determine where along top, intermediate, or bottom handle portions to take the width measurement, or which cross section of the handle corresponds to each claimed width. Clarification and correction is required.
Regarding claim 18, the phrase “a finger rest disposed on a bottom portion of the motor and transmission housing portion axially forward of the power switch in a direction parallel to the tool axis” renders claim 1 vague and indefinite because it is unclear if “a finger rest is axially forward of the power switch in a direction parallel to the tool axis” accurately describes a finger rest that is primarily below the trigger as described above. For examining purposes, the claim will be interpreted as best understood from the orientation as provided in figures in applicants disclosure.
Regarding claim 19, the phrase “the power tool is configured to be selectively grasped in a first grip position using the top portion, the intermediate portion, and the bottom portion of the handle portion or a second grip position using the first concave recess and the second concave recess, the top portion of the handle portion, and the intermediate portion of the handle portion, the first grip position different than the second grip position, and wherein both the first grip position and the second grip position enable simultaneous actuation of the mode select switch and the power switch” renders the claim indefinite because the claim attempts to define two grip positions but the recitation is structurally broke. Indeed, it is unclear what structural features define the first grip position, the second grip position and what relationship between the two position is. The claim as written does not inform with reasonable certainty where one grip position ends and the other begins. Correction and clarification is required.
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andriolo (US 20030146008 A1) in view of Kannan et al. (US 20150170848 A1).
Regarding claim 1, Andriolo discloses a power tool (Figs. 1-2; [0002]-[0003]) comprising:
a housing (11) including a motor (13) and transmission housing portion (Fig. 2) extending along a tool axis (X-X) from a rear end portion to a front end portion (Figs. 1-2), and
a handle portion (16) extending from the motor and transmission housing portion (Fig. 2) along a handle axis (Y-Y) transverse to the tool axis (X-X);
a motor (13) and a transmission (14, 15) at least partially disposed in the motor and transmission housing portion (Fig. 2);
a tool accessory holder ([0003]-[0004]; “tool-holder chuck”) configured to be rotatably driven by the motor via the transmission and configured to be coupled to a tool accessory ([0003]-[0004]);
a power switch (18) coupled to the handle portion (16) and actuatable from outside the housing (11) and configured to control power delivery to the motor (13; [0028]); and
a mode select switch (19) actuatable from outside the housing and configured to control a mode of operation of the power tool ([0029], [0041]-[0043]),
wherein the mode select switch (19) is positioned rearward of the power switch (18; 19 is rearward of 18 in the X-X direction) in a direction parallel to the tool axis (19 is rearward of 18 in the X-X direction) such that the power switch (18) and the mode select switch (19) are configured to be simultaneously actuatable by a user with one hand (Fig. 3) while gripping the housing with the one hand in a position for actuating the power switch to control power delivery to the motor and actuating the mode select switch to change the mode of operation of the power tool (Figs. 3-4, [0027], [0041]-[0043] and claims 6-7).
However, To the extent that it is argued that Andriolo mode select switch is not explicitly disclosed as being actuatable from outside the housing and configured to control a mode of operation of the power tool.
Kannan in a related invention teaches a power tool having a power switch (Trigger, Fig. 2) and mode select switch (Lock-on mechanism; Figs. 1-2) actuatable from outside the housing (Figs. 1-2) and configured to control a mode of operation of the power tool ([0024]).
Therefore, 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 the power tool of Andriolo by incorporating mode select switch actuatable from outside the housing and configured to control a mode of operation of the power tool as taught by Kannan in order to allow a means for an environmentally controlled transportation of the valves from a feed container to the application means.
Andriolo in view of Kannan further teaches:
Regarding claim 2, wherein the power switch (18 of Andriolo) is disposed on the handle portion (16 of Andriolo).
Regarding claim 3, wherein the mode select switch (19 of Andriolo) is disposed on the handle portion (16 of Andriolo).
Regarding claim 4, wherein the handle portion (16 of Andriolo) has a proximal end portion coupled to the motor and transmission housing portion and a distal portion disposed away from the proximal end portion along the handle axis (Fig. 2 of Andriolo).
Regarding claim 5, wherein the mode select switch (19 of Andriolo) is disposed on the handle portion distally of the power switch (Fig. 2 of Andriolo).
Regarding claim 6, wherein the mode select switch (19 of Andriolo) comprises a lock-on switch ([0029] of Andriolo).
Regarding claim 7, further including a finger rest (region of 27 of Andriolo) disposed on a bottom portion of the motor and transmission housing portion (housing of 11) axially forward of the power switch (19 of Andriolo) in a direction parallel to the tool axis ([0026]-[0027], and Figs. 3-4 of Andriolo).
Regarding claim 8, wherein: the motor and transmission housing portion defines a first concave recess (Fig. 4 where 23 rests of Andriolo) on a first side of the motor and transmission housing portion (portion of 11 of Andriolo) and a second concave recess (where 21 rests; Fig. 4 of Andriolo) on a second side of the motor and transmission housing portion, the second side of the motor and transmission housing portion opposite the first side of the motor and transmission housing portion (Figs 3-4 of Andriolo); the first concave recess provides a first grip area for a thumb (23 of Andriolo) of the one hand of the user; and the second concave recess provides a second grip area for a forefinger (21 of Andriolo) of the one hand of the user.
Claims 15-17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andriolo (US 20030146008 A1) in view of Kannan et al. (US 20150170848 A1) as applied to claim 1, and in further view of Lopano et al. (US 20100252293 A1).
Regarding claim 15, Andriolo as modified above teaches the power tool including the handle portion (16 Andriolo) includes a top portion adjacent the motor and transmission housing portion (Figs. 2-3), a bottom portion (proximate 27 of Andriolo), and an intermediate portion between the top portion and the bottom portion (Figs. 2-3 of Andriolo) but is silent regarding a bottom portion adjacent the battery receptacle, the top portion having a first depth and a first width, the intermediate portion having a second depth and a second width, and the bottom portion having a third depth and a third width, the first depth greater than the second depth, the second depth greater than the third depth, and the second width greater than the third width.
Lopano in a related invention teaches a power tool (10) having a handle portion (40) with a bottom portion (44) adjacent the battery receptacle (28), the top portion having a first depth and a first width, the intermediate portion having a second depth and a second width, and the bottom portion having a third depth and a third width, the first depth greater than the second depth, the second depth greater than the third depth, and the second width greater than the third width ([0036]-[0043]; Figs 1-6).
Therefore, It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the handle portion of Andriolo as modified with the progressive handle depth and width as taught by Lopano, thereby improving the ergonomic design of the handle and thereby reduce reduce user fatigue and/or stress during periods of extended use ([0004]).
Regarding claim 16, wherein the first depth is approximately 45 mm to 55 mm, the second depth is approximately 40 mm to 45 mm, and the third depth is approximately 35 mm to 40 mm ([0034] of Lopano).
Regarding claim 17, wherein the second width is approximately 31 mm to 36 mm, and the third width is approximately 28 mm to 35 mm ([0034] of Lopano).
Regarding claim 20, wherein the mode select switch (19 of Andriolo) comprises a lock-on switch ([0029] of Andriolo).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS E IGBOKWE whose telephone number is (571)272-1124. The examiner can normally be reached on M-F 8 a.m. - 5 p.m..
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/NICHOLAS IGBOKWE/
Examiner, Art Unit 3731
/ANDREW M TECCO/Primary Examiner, Art Unit 3731
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