DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 6, 8, 11, 12, 14, and 16 of U.S. Patent No. 12,318,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 5, 6, 11, 12, 14, and 16 of the patent "anticipate" application claims 1-20. It is apparent that the application claims differ from the patent claims in that the patent claims are more specific.
Here, patent claim 1 requires elements (A) a body having a handle configured to be grasped by a user; (B) a motor; (C) a rechargeable battery pack configured to provide power to the motor; (D) a manually depressible actuator configured to actuate the power tool; (E) a first circuit board; (F) a second circuit board spaced apart from the first circuit board; (G) a controller; (H) a driver connected to the controller, the driver configured to control at least one function of the motor; (I) a first power supply of a first voltage; (J) a second power supply of a second voltage; (K) a wireless receiver configured to receive data from a user interface device separate from the power tool; (L) wherein the first voltage is more than double the second voltage; (M) wherein the first power supply is configured to provide power to the driver; (N) wherein performance of the power tool is configured to be changed based upon data received through the wireless receiver, while application claim 1 only requires elements A, B, C, G, H, I, J, K, L, and M. Any remaining differences are only differences in verbiage without any difference in meaning. Application claim 1 is not patentably distinct from patent claim 1 because the more specific patent claim anticipates the broader application claim.
Here, patent claim 1 requires elements (A) a body having a handle configured to be grasped by a user; (B) a motor; (C) a rechargeable battery pack configured to provide power to the motor; (D) a manually depressible actuator configured to actuate the power tool; (E) a first circuit board; (F) a second circuit board spaced apart from the first circuit board; (G) a controller; (H) a driver connected to the controller, the driver configured to control at least one function of the motor; (I) a first power supply of a first voltage; (J) a second power supply of a second voltage; (K) a wireless receiver configured to receive data from a user interface device separate from the power tool; (L) wherein the first voltage is more than double the second voltage; (M) wherein the first power supply is configured to provide power to the driver; (N) wherein performance of the power tool is configured to be changed based upon data received through the wireless receiver, while application claim 12 only requires elements A, B, C, E, F, H, I, J, K, L, and M. Any remaining differences are only differences in verbiage without any difference in meaning. Application claim 12 is not patentably distinct from patent claim 1 because the more specific patent claim anticipates the broader application claim.
Here, patent claim 1 requires elements (A) a body having a handle configured to be grasped by a user; (B) a motor; (C) a rechargeable battery pack configured to provide power to the motor; (D) a manually depressible actuator configured to actuate the power tool; (E) a first circuit board; (F) a second circuit board spaced apart from the first circuit board; (G) a controller; (H) a driver connected to the controller, the driver configured to control at least one function of the motor; (I) a first power supply of a first voltage; (J) a second power supply of a second voltage; (K) a wireless receiver configured to receive data from a user interface device separate from the power tool; (L) wherein the first voltage is more than double the second voltage; (M) wherein the first power supply is configured to provide power to the driver; (N) wherein performance of the power tool is configured to be changed based upon data received through the wireless receiver, while application claim 18 only requires elements A, B, C, D, E, G, H, I, J, K, L, and M. Any remaining differences are only differences in verbiage without any difference in meaning. Application claim 18 is not patentably distinct from patent claim 1 because the more specific patent claim anticipates the broader application claim.
Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Patented claims 1, 5, 6, 8, 11, 12, 14, and 16 disclose all of the structure defined in application claims 1-20. Therefore, patented claims 1, 5, 6,8, 11, 12, 14, and 16 are in essence a “species” of the generic invention of application claims 1-20. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ 2d 2010 (Fed. Cir. 1993). Since application claims 1-20 are anticipated by patented claims 1, 5, 6, 8, 11, 12, 14, and 16, application claims 1-20 are not patentably distinct from patented claims 1, 5, 6, 8, 11, 12, 14, and 16.
The application claims and patented claims match-up as follows:
Application Claims
Patent Claims US Patent No. 12,318,906
1
1
2
14
3
12
4
16
5
1
6
1
7
6
8
5
9
6
10
8
11
1
12
1
13
11
14
11
15
11
16
14
17
1
18
1
19
14
20
6
Claims 1-20 would be allowable if a proper Terminal Disclaimer and the requisite fee is filed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Du et al. (US Patent Publ. No. 2007/0210733) disclose a power tool.
Gass et al. (US Patent Publ. No. 2003/0196824) disclose a power tool.
Furui et al. (US Patent Publ. No. 2014/0159920) disclose a power tool including a wireless communicator.
Brown et al. (US Patent Publ. No. 2014/0008087) disclose a power tool including a plurality of power supplies.
Wood et al. (US Patent Publ. No. 2013/0193891) disclose a power tool including a plurality of circuit boards and a plurality of power supplies.
Takeyama et al. (US Patent Publ. No. 2013/0119791) disclose a power tool including a plurality of power supplies.
Schubert et al. (US Patent No. 3,718,211) disclose an electric coupling unit including a plurality of power supplies.
Irlander (US Patent No. 5,955,791) disclose a power tool providing first and second voltages.
Takeshima et al. (US Patent No. 5,062,491) disclose a power tool providing first and second voltages.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Linda J. Hodge whose telephone number is (571)272-0571. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/LINDA J. HODGE/Examiner, Art Unit 3731