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 .
This action is in response to the application filed on 08/15/12.
Claims 1-19 are pending and have been examined.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the written description fails to make use of the term “a switching network”.
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 1-5 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The written description, and the original claims, have been carefully reviewed by the examiner, and it is the opinion of the examiner that the claims present subject matter which fails to find support in the disclosure as originally presented. That is, claim 1 present new matter which is not supported by the disclosure, as originally filled.
Claim 1 recites, “control a switching network to drive the motor”. There is no support for this subject matter in the written description, including the claims, as originally filed. Accordingly, applicant is require to either amend the claims to cancel the new matter or present clarification as how/where the subject matter of the present claim is found in the disclosure, as originally filed. Appropriate correction is required.
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 1-19 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.
Claim 1 recites: "wherein a value is adjustable via a user interface on the secondary computing device before being received by the controller" and further recites: "wherein the value of the operational parameter is different in the first mode than the second mode." The claim is indefinite because it is unclear what "value" is being adjusted. The claim initially recites information corresponding to an operational parameter, but does not clearly identify whether the adjustable value corresponds to the operational parameter, the information received from the secondary computing device, or another value. Accordingly, the scope of the limitation cannot be determined with reasonable certainty. Applicant is required to amend the claim to identify the particular value being adjusted and its relationship to the operational parameter.
Claim 6 recites: "wherein a memory related to an operating parameter of the power tool is adjusted based on an input to the user interface received by the wireless device." The limitation "a memory related to an operating parameter" is indefinite because it is unclear what relationship exists between the memory and the operating parameter. The claim does not specify whether the memory stores the operating parameter, stores information associated with the operating parameter or is otherwise related to the operating parameter. Further, it is unclear whether the "memory" itself is adjusted or whether the operating parameter stored in the memory is adjusted. The claim language therefore fails to provide clear boundaries for the claimed subject matter.
Claim 11 recites: "wherein the at least one parameter is adjusted to increase work efficiency." The term "work efficiency" is a subjective term of degree that lacks an objective boundary in the claim. The claim does not define how work efficiency is measured or what criteria determine whether an adjustment increases work efficiency. Thereby it is unclear what is the scope of the claimed limitation.
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) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gass et al. (6,536,536).
Regarding claims 1 and 6, Gass discloses a power tool comprising: a housing (Fig. 1) having a motor housing portion (at the vicinity of motor 20; rear housing portion; Fig. 1), a handle (16), and a battery mounting portion (48; Fig. 1), wherein the handle is connected to the motor housing portion and the battery mounting portion (Fig. 1), wherein the battery mounting portion is configured to connect to a battery pack (54); a motor (20) in the motor housing portion; a trigger (50) configured to be actuated to activate the motor; a mode select module (38, 226); wherein the secondary computing device comprises a user interface (40, 220), a controller (26) including an electronic processor and a memory (col. 10, lines 8-10) and configured to: control a switching network to drive the motor, receive information corresponding to an operational parameter of a first mode and a second mode of operation of the power tool from an secondary computing device (40’; col. 15, lines 10-67; col. 16, lines 1-67), the power tool receiving the information from the secondary computing device via wireless communication (col. 6, lines 50-54), wherein a value is adjustable via a user interface on the secondary computing device before being received by the controller (col. 15, lines 10-50; col. 16, lines 34-46; col. 17, lines 55-57), control the power tool to operate in accordance with the first mode, receive an input from a user to select the second mode, and control the power tool to operate in accordance with the second mode in response to receiving the input, wherein the value of the operational parameter is different in the first mode than the second mode (col. 14, lines 13-67; col. 15, lines 1-67; and, col. 16, lines 1-67; Figs. 11-12 and 14-18).
Regarding claims 2 and 7, Gass discloses wherein the operational parameter is a speed of the motor (col. 10, lines 29-34).
Regarding claims 3 and 8, Gass discloses wherein the operational parameter is a fastening torque (col. 10, lines 29-34).
Regarding claim 4, Gass discloses wherein the information from the secondary computing device transferred to the power tool via wireless communication is stored (in the controller’s memory) by the power tool (col. 6, lines 41-67).
Regarding claim 5, Gass discloses further comprising an indicator (i.e. display 220) on the power tool configured to operate in response to the information from the secondary computing device.
Regarding claim 9, Gass discloses wherein the operating parameter may be reset to a baseline value (col. 22, lines 56-67; and col. 23, lines 1-8).
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.
Claim(s) 10-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gass et al. (6,536,536) in view of Barker et al. (5,105,130).
Regarding claim 10, Gass discloses a power tool comprising: a housing (10); a motor (20) in the housing; a tool output (32) configured to be selectively driven by the motor; a manually depressible trigger (50) configured to operate the motor; a wireless device (26) configured to receive a wireless signal; wherein the wireless device is configured to wirelessly interface with a secondary computing device (40’), the secondary computing device including a user interface (Fig. 11) configured to accept a user input; and wherein at least one operating parameter of the power tool is adjusted based upon the user input, but fails to disclose wherein the user input is related to a workpiece type. Barker discloses a power tool comprising control means and a user interface (6) through which an operator specifies characteristics of the workpiece (shown on display 7) before operating the tool. Specifically, Barker discloses permitting an operator to input the material of the workpiece (e.g., wood, steel, masonry) via the user interface so that the control means selects appropriate operating parameters (such as motor speed) for machining the workpiece. It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to have provided the user interface of Gass with the functionality of Barker, thereby allowing a user to select a workpiece type or material before operation. Such a modification would have predictably enabled the controller of Gass to adjust operating parameters based upon the selected workpiece, improving tool performance, reducing operator error, and providing operating parameters better suited for different workpiece materials. Using known user-selectable workpiece characteristics to configure machine operating parameters represents the predictable application of a known technique to improve a similar device.
As far as claim 11 was understood, the adjustment of Gass’ operating parameters (e.g., speed and torque) would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention, such as work efficiency and/or optimizes the tool performance, improves accuracy andr educes operator error.
Regarding claim 12, Gass discloses wherein the at least one parameter relates to motor speed (col. 10, lines 29-34).
Regarding claim 13, Gass discloses wherein the at least one parameter relates to a sampling rate (col. 10, lines 29-67; and col. 11, lines 1-10).
Regarding claim 14, Gass discloses storing and executing a control program in the controller memory (col. 10, lines 1-38). Although Gass does not expressly describe the stored program as an “algorithm”, one of ordinary skills in the art would have understood that the stored control program necessarily implements an algorithm, i.e. a sequence of instructions or computational steps executed by the controller to perform the control functions disclosed by Gass. It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention that the operating parameters may relate to the operation of the controller’s algorithm because modifying operating parameters of a programmable controller inherently affects the execution or operation of the stored control program.
Regarding claim 15, Gass discloses a display (Fig. 11).
Regarding claims 16-19, Gass discloses a mode select module (38, 226).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE LOPEZ whose telephone number is (571)272-4464. The examiner can normally be reached Monday thru Friday 8:30 am to 4:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at (571) 270 - 1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELLE LOPEZ/ Primary Examiner, Art Unit 3731
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