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 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 1-3, 5-14, and 16 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.
Regarding claim 1, “fixed walls” fails to comply with the written description requirement because the specification does not disclose multiple fixed walls. The specification describes “a fixed wall” having a first wall portion and a second wall portion (see for example Para. 0258 of Applicant’s specification), but does not describe more than one fixed wall, as claimed in amended claim 1.
Regarding claims 2-3, 5-14, and 16, claims 2-3, 5-14, and 16 are rejected because they depend from rejected claim 1.
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.
Claims 1-3, 5-9 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Scabin et al (US 2014/0001226), hereinafter Scabin, in view of Pack (US 3,810,495).
Regarding claim 1, Scabin discloses a binding machine (Fig. 1, item 2), comprising:
a magazine (Fig. 1, item 10) configured to hold a plurality of staples (Fig. 2, item S) stacked in an up-down direction (Fig. 1) having a first leg portion (Fig. 2, item L), a second leg portion (Fig. 2, item L), and a main body portion (Fig. 2) connecting the first leg portion and the second leg portion, each of the staples further including an opening (Fig. 2, opening is between legs L) between the first leg portion and the second leg portion (Fig. 2);
a driver (Fig. 1, item 23) configured to move the staple (Para. 0037-0039) held by the magazine in a forward direction (Para. 0037-0039) with the opening at the front (Para. 0037-0039);
a guiding portion (Fig. 2, item 46, one of cincher anvils 46) provided to face a surface facing an inside of the staple (Fig. 2, cincher anvil 46 faces toward the interior open space of the staple) configured to guide an inside of the first leg portion (Para. 0039-0040, 0046) when the staple is moved by the driver (Para. 0039-0040, 0046);
fixed walls (Fig. 1, nose portion of tool 2 has multiple walls and surfaces which guide the staple) configured to face outside surfaces of the first leg portion and the second leg portion (Fig. 1) and configured to guide the outside surfaces of the first leg portion and the second leg portion (Fig. 1) when the staple is moved by the driver (Fig. 1, nose portion of tool 2 has multiple walls and surfaces which guide the staple); and
a displacement portion (Fig. 2, item 46, other of cincher anvils 46) configured to bind an object (Para. 0039-0040, 0046) to be bound inserted into the opening (Para. 0039-0040, 0046) by displacing the first leg portion or the second leg portion of the staple moved by the driver (Para. 0039-0040, 0046) from an outside to an inside thereof (Para. 0039-0040, 0046), wherein
the guiding portion is positioned at a front of the main body portion (Fig. 1, guiding portion is at a front of magazine 10), that is configured to be in contact with the main body portion (Scabin, Para. 0039-0040, 0046), is retracted from a guide position (Para. 0039-0040, 0046) for guiding the inside of the first leg portion (Para. 0039-0040, 0046) by coming into contact with the staple to be pressed (Fig. 3-4, cincher anvil 46 comes into contact with staple L) (Para. 0039-0040, 0046) when the staple is moved by a predetermined distance by the driver (Para. 0039-0040, 0046).
Scabin is silent about the guiding portion provided so that, when the staple is moved by the driver, the guide portion is positioned between the first leg portion and the second leg portion and faces a surface facing an inside of the staple that is a region surrounded by the first leg portion, the second leg portion, and the main body portion; and the guiding portion has an inclined surface that is inclined in an upward direction corresponding to the direction in which the plurality of staples are stacked toward a rearward direction and is retracted along a direction in which the plurality of staples are stacked by coming into contact with the main body portion of the staple to be pressed.
However, Pack teaches a binding machine (Pack, Fig. 5) comprising a guiding portion (Pack, Fig. 5, item 122) (Pack, Fig. 11a-11c, item 122, 126) provided so that, when the staple (Pack, Fig. 5, item 222) is moved by the driver (Pack, Fig. 11a, item 28), the guide portion is positioned between the first leg portion (Pack, Fig. 8, item 228) and the second leg portion Pack, Fig. 8, item 232) and faces a surface facing an inside of the staple (Pack, Col. 5, line 33-Col. 6, line 35) that is a region (Pack, Col. 5, line 33-Col. 6, line 35) surrounded by the first leg portion, the second leg portion, and the main body portion (Pack, Col. 5, line 33-Col. 6, line 35); and the guiding portion has an inclined surface (Scabin, Fig. 2, clincher anvil has an inclined surface) that is inclined in an upward direction (Scabin, Fig. 2) corresponding to the direction in which the plurality of staples are stacked (Pack, Col. 5, line 33-Col. 6, line 35) toward a rearward direction and is retracted along a direction (Pack, Fig. 11a-11c, left-right direction) (Pack, Col. 5, line 33-Col. 6, line 35) in which the plurality of staples are stacked (Pack, Col. 5, line 33-Col. 6, line 35) by coming into contact with the main body portion (Pack, Fig. 5) (Pack, Col. 5, line 33-Col. 6, line 35) of the staple to be pressed (Pack, Col. 5, line 33-Col. 6, line 35).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Scabin and Pack to modify the binding machine of Scabin to include the guiding portion configuration, as taught by Pack. A person of ordinary skill in the art would have been motivated to make such change in order to decrease the overall expense of the stapling process by utilizing an automated tool to cut back on labor (Pack, Col. 1, lines 35-45).
Regarding claim 2, the modified Scabin teaches the binding machine according to claim 1, wherein the guiding portion is configured to move in a downward direction (Scabin, Para. 0039-0040, 0046) in which the guide portion is separated from the driver along the direction In which the plurality of staples are stacked (Pack, Col. 5, line 33-Col. 6, line 35) and configured to retract from the guide position (Scabin, Para. 0039-0040, 0046).
Regarding claim 3, the modified Scabin teaches the binding machine according to claim 2, wherein the guiding portion is configured to come into contact with the staple (Scabin, Para. 0039-0040, 0046) and configured to move in the downward direction (Scabin, Para. 0039-0040, 0046) corresponding to the direction in which the plurality of staples are stacked (Pack, Col. 5, line 33-Col. 6, line 35).
Regarding claim 5, the modified Scabin teaches the binding machine according to claim 1, wherein the guiding portion is configured to move in an upward direction (Scabin, Para. 0039-0040, 0046) corresponding to the direction in which the plurality of staples are stacked (Pack, Col. 5, line 33-Col. 6, line 35) and configured to retract from the guide position (Scabin, Para. 0039-0040, 0046).
Regarding claim 6, the modified Scabin teaches the binding machine according to claim 5, wherein the guiding portion is configured to come into contact with the staple (Scabin, Para. 0039-0040, 0046) and configured to move in the upward direction (Scabin, Para. 0039-0040, 0046) corresponding to the direction in which the plurality of staples are stacked (Pack, Col. 5, line 33-Col. 6, line 35).
Regarding claim 7, the modified Scabin teaches the binding machine according to claim 6, wherein the guiding portion has an inclined surface (Scabin, Fig. 2, clincher anvil has an inclined surface) that is inclined in a downward direction corresponding to the direction in which the plurality of staples are stacked (Pack, Col. 5, line 33-Col. 6, line 35) toward a rearward direction (Scabin, Fig. 2) (Scabin, Para. 0039-0040, 0046) and that is configured to be in contact with the staple (Scabin, Fig. 2) (Scabin, Para. 0039-0040, 0046).
Regarding claim 8, Scabin discloses the binding machine according to claim 1, wherein the guiding portion is provided above the magazine in the up-down direction (Fig. 1, clincher anvil 46 is provided above the magazine when looking at the tool from various directions) (Para. 0039-0040, 0046).
Regarding claim 9, Scabin discloses the binding machine according to claim 1, wherein the guiding portion has a wall surface (Fig. 2, clincher anvil 46 has a wall surface) (Para. 0039-0040, 0046) that is configured to guide the inside of the first leg portion (Para. 0039-0040, 0046) and that is parallel to a forward-rearward direction (Fig. 2) (Para. 0039-0040, 0046).
Regarding claim 12, Scabin discloses the binding machine according to claim 1, further comprising: a second guiding portion (Fig. 2, item 40, 46, 42, 44) configured to move in the forward direction together (Para. 0039-0040, 0046) with the driver (Para. 0039-0040, 0046) and configured to guide an inside (Para. 0039-0040, 0046) of the second leg portion (Para. 0039-0040, 0046).
Regarding claim 13, Scabin discloses the binding machine according to claim 12, further comprising: a slider (Fig. 2, item 34, 35, 42, 44) (Para. 0039-0040, 0046) configured to move in the forward direction together (Para. 0039-0040, 0046) with the driver (Para. 0039-0040, 0046) and configured to cause the displacement portion to operate (Para. 0039-0040, 0046), wherein the second guiding portion is provided in the slider (Para. 0039-0040, 0046) and moves in the forward direction (Para. 0039-0040, 0046) as the slider moves in the forward direction (Para. 0039-0040, 0046).
Regarding claim 14, Scabin discloses the binding machine according to claim 13, further comprising: a movable support wall (Fig. 2, item 42, 44) configured to move to a position in a rearward direction (Para. 0039-0040, 0046) with respect to the second guiding portion (Para. 0039-0040, 0046) moved in the forward direction (Para. 0039-0040, 0046), and configured to guide the inside of the second leg portion (Para. 0039-0040, 0046) by the movement thereof (Para. 0039-0040, 0046).
Regarding claim 15, Scabin discloses the binding machine according to claim 1, wherein the guiding portion is positioned at a front of a main body portion (Fig. 1-2, clincher arm is positioned at the front of the main body portion C of staple S) of the staple (Para. 0039-0040, 0046), the main body portion connecting the first leg portion and the second leg portion (Fig. 2) (Para. 0039-0040, 0046).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Scabin in view of Pack in view of Cairatti (US 3,504,839).
Regarding claim 16, Scabin in view of Pack is silent about the binding machine according to claim 1, further comprising: a biasing member configured to bias the guiding portion in a direction opposite to a direction in which the guiding portion retracts.
However, Cairatti teaches a binding machine (Cairatti, Fig. 1) comprising a biasing member (Cairatti, Fig. 4, item 16a) configured to bias the guiding portion (Cairatti, Fig. 4, item 18) (Col. 2, lines 40-62) in a direction opposite to a direction (Col. 2, lines 40-62) in which the guiding portion retracts (Col. 2, lines 40-62).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Scabin, Pack, and Cairatti to modify the binding machine of Scabin in view of Pack to include the biasing member of Cairatti. A person of ordinary skill in the art would have been motivated to make such change in order to provide a tool which is capable of driving a staple properly without jamming the tool (Cairatti, Col. 1, lines 45-56).
Response to Arguments
Applicant's arguments filed 03/17/2026 have been fully considered but they are not persuasive for the following reasons:
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). As discussed in the 35 USC 103 rejection of claim 1 above, the combination of Scabin in view of Pack teaches the claimed limitations. Applicant argues that Scabin does not teach an inclined surface of the guiding portion, however Pack is relied upon to teach this element. Additionally, Applicant argues that Pack does not teach the guiding portion used to guide an inside of a staple leg portion, however Scabin is relied upon above to teach this element. Therefore the rejection is maintained.
In response to applicant's argument that a person of ordinary skill in the art would not have looked to Pack to modify Scabin, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As discussed in the 35 USC 103 rejection above, a person of ordinary skill in the art would recognize the benefit of the guiding portion configuration taught by Pack to decrease the overall expense of the stapling process by utilizing an automated tool to cut back on labor (Pack, Col. 1, lines 35-45). Therefore the rejection is maintained.
Allowable Subject Matter
Claims 10-11 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VERONICA MARTIN whose telephone number is (571)272-3541. The examiner can normally be reached Monday-Thursday 8:00-6:00.
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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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/VERONICA MARTIN/Primary Examiner, Art Unit 3731
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