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 .
Claim Status
This Office action is in response to the Continuation filed 6/10/2025. Claims 1-20 are currently pending.
Claim Objections
Claim 6 is objected to because of the following informality: the second to last line reads “configured engage” when it should read “configured to engage.” Appropriate correction is required.
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 12-13 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 10,232,479 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite a power tool having two halves, a motor within the housing, a drive mechanism, a battery pack, and an isolation system having an interface member, a plurality of protrusions, and a plurality of isolators disposed on respective ones of the plurality of protrusions, wherein each isolator has two tapered ends.
Allowable Subject Matter
Claims 1-11 are allowed.
Claims 14 and 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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: Regarding claim 1, the primary reason for allowance is the inclusion of an interface member positioned between two portions of the housing and has opposing sidewalls, an upper wall connecting the sidewalls, and a set of parallel rails; and a terminal block extending through the upper wall of the interface member.
The closest reference, Uchida (US 2015/0357612), discloses a power tool comprising a housing having two portions (the left and right halves of 12 and 13 – Fig. 1); an interface portion (14 – Fig. 4) having opposing sidewalls, an upper wall (15 – Fig. 4) connecting the sidewalls, and a set of parallel rails (45 – Fig. 4); a terminal block (20 – Fig. 4) extending through the upper wall; and an elastomeric material (22 – Fig. 4) adjacent the opposing sidewalls and upper wall. However, Uchida does not disclose that the interface member is positioned between the two portions of the housing. If, in an alternative interpretation, the walls of 14 are interpreted to be included in the two portions of the housing, then the interface member does not have opposing sidewalls. Furthermore, it is not clear how to modify Uchida to include these features without substantially redesigning Uchida and engaging in impermissible hindsight.
Claim 6 also includes an interface member positioned between two portion of the power tool housing and having opposing sidewalls, a closed end, and a set of parallel rails. Hence, claim 6 is not anticipated or obvious for the same reasons as claim 1. Furthermore, this claim includes both an isolator positioned between the housing and each of the sidewalls and an elastomeric member adjacent the closed end. There is no known reference that includes the combination of interface member as claimed, isolator, and elastomeric member.
Therefore, the subject matter of claims 1 and 6 is novel and non-obvious.
Regarding claim 12, although the claim is subject to a double patenting rejection, there is no known reference that anticipates the claimed subject matter. Specifically, the plurality of protrusions extending from opposing sidewalls and a plurality of isolators received on a respective one of the protrusions.
The closest reference, Kondo (US 7766097 B2), discloses a power tool comprising a housing (14, 16, 18 – Fig. 1 and 20 – Fig. 5); an interface member (50 – Fig. 5) having opposing sidewalls; and a plurality of isolators (the left and right 42 – Fig. 5) positioned between the housing and the interface member. However, each sidewall does not have a plurality of protrusions with the respective isolators received thereon. Furthermore, it is not clear how Kondo may be modified to include this feature without substantially redesigning Konda and engaging in impermissible hindsight.
Therefore, the subject matter of claim 12, is not anticipated by any known reference or rendered obvious by any known combination of references.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
3/3/2026