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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS’s) submitted on 03/28/2025 and 03/16/2026 comply with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 112
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 1-9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is not clear what applicant means by in claim, line 6 from bottom it recites “a base portion having a plat shape”. What sort of shape is plat? Since the specification shed no further light on this recitation, examiner interprets it to be a typographical omission to recite “plate”. Appropriate clarification and/or correction is required.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4,6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Fauteux et al. (US 20180326568).
Regarding claim 1, Fauteux et al. disclose:
An electric tool (20, abstract, fig. 1-5, 7, 10, 11, 13, 14) comprising:
a motor (22);
a plurality of switch elements (implicit para 104) configured to switch a current flowing through the motor (22);
a capacitor (151, 1151; par. 66) configured to stabilize a voltage to be applied to the plurality of switch elements, the capacitor having a cylindrical shape (fig. 2, 4, 5, 10, 11, 13, 14);
a circuit board (32) mounting the capacitor thereon (fig. 2, 4) and fixed to overlap with at least a part of the motor (22) when viewed in an axial direction defined with respect to a rotary shaft of the motor (22) (fig. 2);
a housing (fig. 1, 2) arranged to house the motor (22), the plurality of switch elements, the circuit board (32), and the capacitor (151, 1151) inside; and
a holder (24) arranged to hold a tip tool (fig. 1) to which rotational force is transmitted from the motor (22);
the circuit board (32) (fig. 4) including:
a base portion (52) having a plat shape; and
a protruding portion (54) having a shape of a plate which protrudes from an end part of the base portion in a predetermined direction (fig. 4), and
the capacitor (151, XX51) being arranged on the protruding portion (54) to overlap with at least a part of the motor (22) when viewed in a protruding direction that is the predetermined direction in which the protruding portion protrudes (fig. 2, 4).
Fauteux et al. discloses the invention as discussed above, but in different embodiments.
However, a skilled artisan would readily recognize the benefits of combining the teachings of Fauteux et al.to make applicant’s claimed invention.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing fo the invention to combine the teachings of Fauteux et al. to make applicant’s invention.
The motivation to do so would permit one to reduce cost and size (paras 3-6).
Regarding claim 2/1, Fauteux et al. disclose further comprising a plurality of fastening members (36) configured to fix the base portion onto the housing (par. 60), wherein the capacitor (151, XX51) is interposed between two fastening members out of the plurality of fastening members when viewed in the protruding direction, the two fastening members being located closer to the protruding portion than at least another fastening member belonging to the plurality of fastening members (fig. 4).
Regarding claim 3/2, Fauteux et al. disclose wherein the capacitor (51, XX51) is disposed on the protruding portion so that at least a part of the capacitor overlaps with a vertical bisector of a line segment connecting the two fastening members together when viewed along thickness of the base portion (fig. 4).
Regarding claim 4/1, Fauteux et al. disclose wherein the plurality of switch elements are mounted on the circuit board (implicit - par. 64).
Regarding claim 6/2, Fauteux et al. disclose wherein the plurality of switch elements are mounted on the circuit board (para 104).
Regarding 8/3, Fauteux et al. disclose wherein the plurality of switch elements are mounted on the circuit board (para 104).
Allowable Subject Matter
Claims 5, 7 and 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: In claim 5/4 inter alia, the specific limitations of “…, further comprising: a rotation controller configured to control the plurality of switch elements; a signal cable configured to transmit a control signal indicating specifics of control of the rotation controller to the circuit board; and a power cable configured to transmit electric power to be supplied to the motor to the circuit board, wherein the circuit board further includes: a signal cable connector configured to receive the signal cable connected thereto; and a power cable connector configured to receive the power cable connected thereto, the signal cable connector and the power cable connector are arranged on both sides of the capacitor on the protruding portion.”, in the combination as claimed are neither anticipated nor made obvious over the prior art made of record.
In claim 7/6 inter alia, the specific limitations of further comprising: a rotation controller configured to control the plurality of switch elements; a signal cable configured to transmit a control signal indicating specifics of control of the rotation controller to the circuit board; and a power cable configured to transmit electric power to be supplied to the motor to the circuit board, wherein the circuit board further includes: a signal cable connector configured to receive the signal cable connected thereto; and a power cable connector configured to receive the power cable connected thereto, the signal cable connector and the power cable connector are arranged on both sides of the capacitor on the protruding portion..”, in the combination as claimed are neither anticipated nor made obvious over the prior art made of record
In claim 9/8 inter alia, the specific limitations of “…, further comprising: a rotation controller configured to control the plurality of switch elements; a signal cable configured to transmit a control signal indicating specifics of control of the rotation controller to the circuit board; and a power cable configured to transmit electric power to be supplied to the motor to the circuit board, wherein the circuit board further includes: a signal cable connector configured to receive the signal cable connected thereto; and a power cable connector configured to receive the power cable connected thereto, the signal cable connector and the power cable connector are arranged on both sides of the capacitor on the protruding portion.”, in the combination as claimed are neither anticipated nor made obvious over the prior art made of record.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see PTO-892 for details.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAISHADH N DESAI whose telephone number is (571)270-3038. The examiner can normally be reached 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher M Koehler can be reached at 571-272-3560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NAISHADH N. DESAI
Primary Examiner
Art Unit 2834
/NAISHADH N DESAI/Primary Examiner, Art Unit 2834
Prosecution Insights