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 .
This Office Action is in response to the applicant’s RCE filing on 02/22/2026.
Applicant’s cancelation of claims 1-24, 26-28, and 30-35 is acknowledged and require no further examining. Claims 25, 29, and 36-39 are pending and examined below.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/22/2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on 08/07/2024 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 11,229,995 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/02/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is 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 25, 29, and 36-39 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 claim 25 lines 15-16, the phrase “wherein said microprocessor is configured to execute a machine readable code to extend a battery life of the battery by adjusting the electric power supplied from the battery” renders claim 25 vague and indefinite because it is unclear how this action is different from previously claimed actions. The phrase “extend a battery life of the battery by adjusting the electric power” implies that the machine readable code is conducting the adjusting action that results in an extended battery life. Prior to the quoted phrase, the microprocessor is disclosed to execute a machine readable code to adjust the electric power. It is unclear how the “machine readable code to extend a battery life” is different from the “machine readable code to adjust the electric power” when both codes are conducting the same action of adjusting the electric power. For examining purposes, the prior art that teaches a microprocessor configured to execute a machine readable code to adjust the electric power is interpreted to teach a microprocessor configured to execute a machine readable code to extend a battery life.
Claims 29 and 36 are dependent of claim 25 and include all the same limitations.
Regarding claim 37 lines 16, the phrase “microprocessor executing machine readable code processing the nail length data” renders claim 37 vague and indefinite because it is unclear what action is being conducted. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness. [MPEP 2173.05(q)] For examining purposes, the phrase is interpreted as “processing the nail length data”.
Regarding claim 37 lines 17, the phrase “microprocessor executing machine readable code adjusting the electric power” renders claim 37 vague and indefinite because it is unclear what action is being conducted. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness. [MPEP 2173.05(q)] For examining purposes, the phrase is interpreted as “adjusting the electric power”.
Regarding claim 37 lines 21-22, the phrase “extending a battery life of the battery by said adjusting the electric power supplied from the battery” renders claim 37 vague and indefinite because it is unclear how this step is different from the other steps in the method. The phrase “extending a battery life of the battery by said adjusting the electric power” implies that actual action being conducted in the method step is adjusting the electric power that results in extending a battery life. Prior to the quoted phrase, the method discloses the step of adjusting the electric power supplied from the battery. It is unclear how the “extending a battery life” step is different from the “adjusting the electric power” step when both method steps include the same action of adjusting the electric power. For examining purposes, the prior art that teaches the method step of adjusting the electric power is interpreted to teach the method step of extending a battery life.
Claims 38-39 are dependent of claim 37 and include all the same limitations.
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.
Claims 25, 29, and 36-39 are rejected under 35 U.S.C. 103 as being unpatentable over reference Adams (6,796,475) in view of reference Briggs, Jr. (3,708,095) and Shkolnikov et al. (6,739,490).
Regarding claim 25, Adams discloses a fastening tool (10) comprising:
an electric motor (24) powered by an electric power and configured to selectively drive a driver blade (68) that drives a nail;
a battery (22) which supplies the electric power that drives the electric motor (24);
a nose assembly (36);
a microprocessor (200) configured to adjust the electric power supplied to the electric motor (24) to drive the nail.
(Figure 1, 3 and Column 4 lines 37-49, 63-66, Column 6 lines 8-13, Column 9 lines 40-43, Column 10 lines 35-41, Column 11 lines 25-27)
However, Adams does not disclose a nosepiece insert and a nail length sensor.
Briggs, Jr. disclose a fastening tool (10), comprising:
a nosepiece (20) having a nosepiece insert (54),
wherein the nosepiece insert (54) having a portion (74) which is adapted to be contacted by a head of a nail to be driven such that the nail is positioned for driving.
(Figure 4-6 and Column 2 lines 32-35, 54-61, Column 4 line 68 through Column 5 lines 1-3, Column 5 lines 48-55)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the nose assembly of Adams by incorporating the nosepiece as taught by Briggs, Jr., since column 1 lines 50-62 of Briggs, Jr. states such a modification would ensure adequate strength while aligning the nail within the drive track with the driver blade.
Shkolnikov et al. disclose a fastening tool (10) comprising: a motor (12); a power supply (42) that drives the motor (12); a nail length sensor (50, 64) configured to provide a nail length data of a nail length of the nail (20); and a microprocessor (82) configured to receive the nail length data and to execute machine readable code to process the nail length data. (Figure 3, 4 and Column 4 lines 42-47, Column 5 lines 11-21, Column 6 lines 22-25, Column 8 lines 1-15)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the tool of Adams by incorporating the nail length sensor and the process of adjusting the driving energy based on the nail length data as taught by Shkolnikov et al., since column 2 lines 65-67 through column 3 lines 1-2 of Shkolnikov et al. states such a modification would allow automatic adjusting of the power output based upon the length of the fastener.
In column 10 lines 37-41 of Adams, the speed of the motor is disclosed to be adjusted in order to adjust the amount of force used to drive the nail. In 3 lines 36-43 of Shkolnikov et al., the amount of force used to drive the nail is disclosed to be based on the detected length of the nail to be driven. Therefore, Adams in view of Shkolnikov et al. is interpreted to disclose the process of executing a machine readable code to adjust the electric power supplied from the battery to the electric motor to power the electric motor to selectively drive the driver blade to drive the nail having the indicated length.
When fastening tool drives a nail that requires less energy, the fastening tool will expend less energy in order to drive said nail, and maintain more energy within the battery. Furthermore, Adams in view of Shkolnikov et al. is interpreted to disclose the process of executing a machine readable code to adjust the electric power. Therefore, Adams in view Shkolnikov et al. is interpreted to disclose the process of executing a machine readable code to extend a battery life of the battery by adjusting the electric power supplied from the battery to the electric motor.
Regarding claim 29, Adams modified by Briggs, Jr. and Shkolnikov et al. disclose a longitudinal centerline of a nail track (Briggs, Jr. – 116), and a longitudinal centerline of the fastening tool (Briggs, Jr. – 10), wherein the longitudinal centerline of the nail track (Briggs, Jr. – 116) and the longitudinal centerline of the fastening tool (Briggs, Jr. – 10) are configured to have an offset angle greater than 5 degrees. (Briggs, Jr. – Figure 2 and Column 7 lines 18-24)
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Regarding claim 36, Adams modified by Briggs, Jr. and Shkolnikov et al. disclose the portion (Briggs, Jr. – 74) is a nail stop bridge that bridges a nail channel (Briggs, Jr. – see Figure 4 below). (Briggs, Jr. – Figure 6)
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Regarding claim 37, Adams discloses a method comprising the steps of:
providing a fastening tool (10) having an electric motor (24) powered by an electric power and configured to selectively drive a driver blade (68) that drives a nail;
providing a battery (22) which supplies the electric power that drives the electric motor (24);
providing a nose assembly (36) of the fastening tool (10);
providing at least one of the nail;
providing a microprocessor (200);
adjusting the electric power supplied from the battery (22) to the electric motor (24) to power the electric motor (22); and
selectively driving the nail.
(Figure 1, 3 and Column 4 lines 37-49, 63-66, Column 6 lines 8-13, Column 9 lines 40-43, Column 10 lines 35-41, Column 11 lines 25-27)
However, Adams does not disclose the steps of providing nosepiece insert and providing a nail length sensor.
Briggs, Jr. discloses a method for positioning a nail for driving, comprising the steps of:
providing a nosepiece of the fastening tool (10),
wherein the nosepiece has a nosepiece insert (54), and
wherein the nosepiece insert (54) having a portion (74) which is adapted to be contacted by a nail head;
providing at least one nail to be driven;
positioning the at least one nail for driving; and
contacting a nail head of the at least one nail to the portion.
(Figure 4-6 and Column 2 lines 32-35, 54-61, Column 4 line 68 through Column 5 lines 1-3, Column 5 lines 48-55)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Adams by incorporating the nosepiece as taught by Briggs, Jr., since column 1 lines 50-62 of Briggs, Jr. states such a modification would ensure adequate strength while aligning the nail within the drive track with the driver blade.
Shkolnikov et al. disclose a fastening tool (10) comprising: a motor (12); a power supply (42) that drives the motor (12); a nail length sensor (50, 64) configured to provide a nail length data of a nail length of the nail (20); and a microprocessor (82) configured to receive the nail length data and to execute machine readable code to process the nail length data. (Figure 3, 4 and Column 4 lines 42-47, Column 5 lines 11-21, Column 6 lines 22-25, Column 8 lines 1-15)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Adams by incorporating the steps of providing a nail length sensor and adjusting the driving energy based on the nail length data as taught by Shkolnikov et al., since column 2 lines 65-67 through column 3 lines 1-2 of Shkolnikov et al. states such a modification would allow automatic adjusting of the power output based upon the length of the fastener.
In column 10 lines 37-41 of Adams, the speed of the motor is disclosed to be adjusted in order to adjust the amount of force used to drive the nail. In 3 lines 36-43 of Shkolnikov et al., the amount of force used to drive the nail is disclosed to be based on the detected length of the nail to be driven. Therefore, Adams in view of Shkolnikov et al. is interpreted to disclose the method step of adjusting the electric power supplied from the battery to the electric motor to power the electric motor based upon the processing of the nail length data by the microprocessor.
When fastening tool drives a nail that requires less energy, the fastening tool will expend less energy in order to drive said nail, and maintain more energy within the battery. Furthermore, Adams in view of Shkolnikov et al. is interpreted to disclose the method step of adjusting the electric power. Therefore, Adams in view Shkolnikov et al. is interpreted to disclose the method step of extending a battery life of the battery by adjusting the electric power supplied from the battery to the electric motor.
Regarding claim 38, Adams modified by Briggs, Jr. and Shkolnikov et al. disclose the contacting step positions the at least one nail for driving by a driver blade (Briggs, Jr. – 26). (Briggs, Jr. – Figures 4, 5 and Column 2 lines 61-67)
Regarding claim 39, Adams modified by Briggs, Jr. and Shkolnikov et al. disclose the using the portion of the nosepiece insert (Briggs, Jr. – 54) to guide the at least one nail for a distance that is shorter than the nail length of the at least one nail. (Briggs, Jr. – Figures 4, 5)
However, Adams modified by Briggs, Jr. and Shkolnikov et al. disclose do not explicitly disclose the distance in a range of from 10% to 90% of the nail length of the at least one nail.
It would have been obvious to the person of ordinary skill in the art to have adjust the length of the nail stop in respect to the length of the nail, since it has been held wherein the conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. [MPEP 2144.04 (II-A)] It would be beneficial to incorporate the modification since such a modification would help ensure the head of a nail engages the nail stop.
On page 6 paragraph 30 of the Specification, the nail stop is disclosed having a nail stop length in a range of 10% to 90% of the nail length, less than 25% of the nail length, or less than 10% of the nail length. The Specification shows no criticality for claimed features in claim 15. Therefore, it would have been prima facie obvious to modify Adams, Briggs, Jr., and Shkolnikov et al. to obtain the invention as specified in claim 15 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art.
Response to Arguments
The Amendments filed on 02/22/2026 have been entered. Applicant’s cancelation of claims 1-24, 26-28, and 30-35 is acknowledged and require no further examining. Claims 25, 29, and 36-39 are pending in the application.
In response to the arguments of the rejections under 35 U.S.C. 103 with reference Adams (6,796,475) modified by reference Briggs, Jr. (3,708,095) and Shkolnikov et al. (6,739,490), Examiner finds the arguments not persuasive.
Applicant states:
Adams’ “advantageously” providing constant speed “throughout a range of operating conditions” (Id.) is contrary to and would be inoperable to achieve Applicant’s claims which recite “adjusting the electric power supplied from the battery to the electric motor”.
The goal of Adams is not disclosed to have constant flywheel speed under all conditions. In column 4 lines 37-42 of Adams, the control system is disclosed to “advantageously provides consistent speed control throughout a range of operation conditions”. (emphasis added) In other words, the control system is configured to prevent random speed fluctuations rather than preventing any change in speed. In column 3 lines 10-15 of Adams, the ability of consistently and adaptively providing a given amount of driving force is disclosed to extend “the portability of a hand tool by allowing use of batteries rather having to be corded”. In other words, the control system is given a desired amount of drive force and ensures that driving force is consistently and adaptively provided. Adams is not indicating that the desired amount of driving force is never changed.
In column 10 lines 35-37 of Adams, the fastening tool is disclosed to comprise a speed adjustment input (224) that allows the user to adjust the speed of the motor. This implies that the goal of Adams is not to maintain constant speed under all conditions, but rather to ensure the selected speed is consistent. In column 10 lines 45-49, Adams provides an example of adjusting the settings of the fastening tool in order “to save electrical power when a battery is partially discharged”. In column 10 lines 49-52, Adams discloses an input that accepts a selection from the sensor input in order to “advantageously adjust speed and timing considerations”. This implies the speed or amount of power supplied to motor is adjustable, and then the adjusted speed or amount of power supplied to the motor is maintained during the driving operation.
Furthermore, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., never maintains a consistent supply of electric power to the motor) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 25 discloses “adjust the electric power supplied from the battery to the electric motor”. Claim 25 does not disclose never maintaining a consistent supply of electric power to the motor. In column 10 lines 35-37 of Adams, the fastening tool is disclosed to comprise a speed adjustment input (224) that allows the user to adjust the speed of the motor. Therefore, Adams does disclose adjusting the electric power supplied from the battery to the electric motor
Applicant states:
Applicant’s independent claim 25 respectfully recites a number of limitations not disclosed, taught or suggested by Adams.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Adams is not relied upon for the teaching of a nail length sensor to indicate a nail length data. Adams is relied upon for the teaching of a fastening tool comprising: an electric motor; a battery; and a microprocessor. Shkolnikov et al. is relied upon for the teaching of having a microprocessor configured to receive nail length data and to execute machine readable code to process the nail length data. When modifying Adams in view of Shkolnikov et al., the fastening tool is interpreted to comprises: an electric motor; a battery; a nail length sensor; and a microprocessor configured to receive nail length data and to execute machine readable code to process the nail length data.
In column 10 lines 37-41 of Adams, the speed of the motor is disclosed to be adjusted in order to adjust the amount of force used to drive the nail. In 3 lines 36-43 of Shkolnikov et al., the amount of force used to drive the nail is disclosed to be based on the detected length of the nail to be driven. Therefore, Adams in view of Shkolnikov et al. is interpreted to disclose the process of executing a machine readable code to adjust the electric power supplied from the battery to the electric motor to power the electric motor to selectively drive the driver blade to drive the nail having the indicated length.
When fastening tool drives a nail that requires less energy, the fastening tool will expend less energy in order to drive said nail, and maintain more energy within the battery. Furthermore, Adams in view of Shkolnikov et al. is interpreted to disclose the process of executing a machine readable code to adjust the electric power. Therefore, Adams in view Shkolnikov et al. is interpreted to disclose the process of executing a machine readable code to extend a battery life of the battery by adjusting the electric power supplied from the battery to the electric motor.
Applicant states:
Briggs discloses a pneumatic fastener driving device, not electric.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Briggs, Jr. is not relied upon for the teaching of an electric motor. Briggs, Jr. is relied upon for the teaching of a nosepiece having a nosepiece insert. Adams is relied upon for the teaching of a fastening tool comprising: an electric motor; a battery; and a microprocessor. When modifying Adams in view of Briggs, Jr., the fastening tool is interpreted to comprises: an electric motor; a battery; a nail length sensor; a microprocessor, and a nosepiece having a nosepiece insert.
Applicant states:
Shkolnikov et al. is not an electric tool.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Shkolnikov et al. is not relied upon for the teaching of an electric motor. Shkolnikov et al. is relied upon for the teaching of having a microprocessor configured to receive nail length data and to execute machine readable code to process the nail length data. Adams is relied upon for the teaching of a fastening tool comprising: an electric motor; a battery; and a microprocessor. When modifying Adams in view of Shkolnikov et al., the fastening tool is interpreted to comprises: an electric motor; a battery; a nail length sensor; and a microprocessor configured to receive nail length data and to execute machine readable code to process the nail length data.
In column 10 lines 37-41 of Adams, the speed of the motor is disclosed to be adjusted in order to adjust the amount of force used to drive the nail. In 3 lines 36-43 of Shkolnikov et al., the amount of force used to drive the nail is disclosed to be based on the detected length of the nail to be driven. Therefore, Adams in view of Shkolnikov et al. is interpreted to disclose the process of executing a machine readable code to adjust the electric power supplied from the battery to the electric motor to power the electric motor to selectively drive the driver blade to drive the nail having the indicated length.
When fastening tool drives a nail that requires less energy, the fastening tool will expend less energy in order to drive said nail, and maintain more energy within the battery. Furthermore, Adams in view of Shkolnikov et al. is interpreted to disclose the process of executing a machine readable code to adjust the electric power. Therefore, Adams in view Shkolnikov et al. is interpreted to disclose the process of executing a machine readable code to extend a battery life of the battery by adjusting the electric power supplied from the battery to the electric motor.
Conclusion
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/PATRICK B FRY/Examiner, Art Unit 3731 April 20, 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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