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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fairbanks et al., US20190101147 (hereinafter, Fairbanks) in view of Del Re et at., US20040262461 (hereinafter, Del).
Regarding claim 1, Fairbanks teaches an insulated staple (20, see Fig. 1) comprising:
a staple (24, see Fig. 5) including a crown (50, see Fig. 5) extending between a pair of legs (48, see Fig. 5); and
an insulator (22, see Fig. 5) including an insulator bridge (42, see Fig. 5) defining a longitudinal axis (axis along the length of the insulator) and extending between a pair of insulator legs (66, see Fig. 5), the insulator also including a channel (recess between side walls 34 and 36 in Fig. 2) extending from an end of one of the insulator legs to an end of the other of the insulator legs;
wherein the channel is defined by a first insulator wall 36 and an opposite, second insulator 34 wall that is spaced from the first insulator wall in a direction perpendicular to the longitudinal axis of the insulator bridge (see Figs. 2 and 3B where the first and second insulator walls 36, 34 extends upwards in a direction perpendicular to the flat insulator bridge 42),
wherein the staple is at least partially received in the channel (see Fig. 6).
Fairbanks fails to teach wherein, in absence of the staple, a width of the channel at the insulator legs between the first insulator wall and the second insulator wall is less than a thickness of the staple legs to provide a friction fit between the staple legs and the insulator.
Del teaches a cable guard (see Figs. 1-5) having a channel 14, parallel legs 12a, 12b and bores 16a, 16b in Fig. 2 with a width smaller than a thickness of the staple legs (claim 4 and paragraph 0028).
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to have modified the width of the channel at the insulator legs of Fairbanks to be smaller than the thickness of the staple legs as taught by Del to create a force fit for secured installation of the staple.
Regarding claim 2, Fairbanks in view of Del teaches and/or make obvious of the insulated staple of claim 1, wherein Fairbanks further teaches the channel is further defined by an interior wall (56, see Fig. 2).
Regarding claim 3, Fairbanks in view of Del teaches and/or make obvious of the insulated staple of claim 2, wherein Fairbanks modified by Del further teaches the first and second insulator walls increase in thickness at the insulator legs to narrow the width of the channel between the first and second insulator walls.
Refer to rejection and rationale set forth in claim 1 where Fairbanks modified by Del teaches and/or make obvious of the wall thickness increase for force fit.
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Annotated Fig. 2.1
Regarding claim 4, Fairbanks in view of Del teaches and/or make obvious of the insulated staple of claim 2, wherein Fairbanks further teaches each of the insulator legs includes a side wall (SW, as indicated in annotated Fig. 2.2) that transversely extends between the first insulator wall (36) and the second insulator wall (34).
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Annotated Fig. 2.2
Regarding claim 5, Fairbanks in view of Del teaches and/or make obvious of the insulated staple of claim 4, wherein Fairbanks further teaches an opening (46, see Fig. 5) is defined between the side wall and the interior wall, and wherein the opening is sized to receive the leg of the staple (see Fig. 6).
Regarding claim 6, Fairbanks in view of Del teaches and/or make obvious of the insulated staple of claim 4, wherein the insulator legs surround a portion of the leg of the staple without surrounding the crown of the staple (see Figs. 1 and 6).
Regarding claim 7, Fairbanks in view of Del teaches and/or make obvious of the insulated staple of claim 1, wherein Fairbanks further teaches the insulator includes a plurality of protrusions (protrusions, as indicated in annotated Fig. 2.2) extending into the channel and defining therebetween a gap that (see Fig. 2), in absence of the staple, has a width less than the width of the staple crown to provide a friction fit between the staple crown and the insulator (Please refer to Figs. 1 and 4-6 showing a friction fit between the staple crown and the insulator).
Regarding claim 8, Fairbanks in view of Del still teaches and/or make obvious of the staple collation comprising:
a plurality of insulated staples (Fig. 1), each including
[a staple including a crown extending between a pair of legs; and
an insulator including an insulator bridge defining a longitudinal axis and extending between a pair of insulator legs, the insulator also including a channel extending from an end of one of the insulator legs to an end of the other of the insulator legs;
wherein the channel is defined by a first insulator wall and an opposite, second insulator wall that is spaced from the first insulator wall in a direction perpendicular to the longitudinal axis of the insulator bridge,
wherein the staple is at least partially received in the channel, and
wherein, in absence of the staple, a width of the channel at the insulator legs between the first insulator wall and the second insulator wall is less than a thickness of the staple legs to provide a friction fit between the staple legs and the insulator; and]
(Please refer to rejection set forth above in claim 1 for portion in the bracket)
a plurality of frangible connectors (26, see Figs. 2 and 4) extending from the insulator and coupling adjacent insulated staples.
(Claim 8 is substantially similar to claim 1, except staple collation and a plurality of frangible connectors. Please refer to rejection set forth above for claim 1)
Regarding claim 9, Fairbanks in view of Del teaches and/or make obvious of the staple collation of claim 8, wherein the channel is further defined by an interior wall.
(Claim 9 is substantially similar to claim 2. Fairbanks in view of Del still teaches and/or make obvious of the limitation of claim 9, therefore please refer to rejection set forth above for claim 2)
Regarding claim 10, Fairbanks in view of Del teaches and/or make obvious of the staple collation of claim 9, wherein the first and second insulator walls increase in thickness at the insulator legs to narrow the width of the channel between the first and second insulator walls.
(Claim 10 is substantially similar to claim 3. Fairbanks in view of Del still teaches and/or make obvious of the limitation of claim 10, therefore please refer to rejection set forth above for claim 3)
Regarding claim 11, Fairbanks in view of Del teaches and/or make obvious of the staple collation of claim 9, wherein each of the insulator legs includes a side wall that transversely extends between the first insulator wall and the second insulator wall.
(Claim 11 is substantially similar to claim 4. Fairbanks in view of Del still teaches and/or make obvious of the limitation of claim 11, therefore please refer to rejection set forth above for claim 4)
Regarding claim 12, Fairbanks in view of Del teaches and/or make obvious of the staple collation of claim 11, wherein an opening is defined between the side wall and the interior wall, and wherein the opening is sized to receive the leg of the staple.
(Claim 12 is substantially similar to claim 5. Fairbanks in view of Del still teaches and/or make obvious of the limitation of claim 12, therefore please refer to rejection set forth above for claim 5)
Regarding claim 13, Fairbanks in view of Del teaches and/or make obvious of the staple collation of claim 11, wherein the insulator legs surround a portion of the leg of the staple without surrounding the crown of the staple.
(Claim 13 is substantially similar to claim 6. Fairbanks in view of Del still teaches and/or make obvious of the limitation of claim 13, therefore please refer to rejection set forth above for claim 6)
Regarding claim 14, Fairbanks in view of Del teaches and/or make obvious of the staple collation of claim 8, wherein the insulator includes a plurality of protrusions extending into the channel and defining therebetween a gap that, in absence of the staple, has a width less than the width of the staple crown to provide a friction fit between the staple crown and the insulator.
(Claim 14 is substantially similar to claim 7. Fairbanks in view of Del still teaches and/or make obvious of the limitation of claim 14, therefore please refer to rejection set forth above for claim 7)
Regarding claim 15, [An insulated staple comprising:
a staple including a crown extending between a pair of legs; and
an insulator including an insulator bridge defining a longitudinal axis and extending between a pair of insulator legs, the insulator also including a channel extending from an end of one of the insulator legs to an end of the other of the insulator legs;
wherein the staple is at least partially received in the channel,]
(Please refer to rejection set forth for claim 1 for the portion in [] above)
[wherein the channel is defined by a first insulator wall, an opposite, second insulator wall that is spaced from the first insulator in a direction perpendicular to the longitudinal axis of the insulator bridge, and an interior wall,]
(Please refer to rejection set forth for claim 2 for the portion in [] above)
[wherein one or both of the first and second insulator walls increase in thickness at the insulator legs to narrow a width of the channel at the insulator legs between the first insulator wall and the second insulator wall to less than a thickness of the staple legs which provides a friction fit between the staple legs and the insulator.]
(Please refer to rejection set forth for claims 1 and 3 for the portion in bracket above)
Regarding claim 16, The insulated staple of claim 15, wherein each of the insulator legs includes a side wall that transversely extends between the first insulator wall and the second insulator wall.
(Claim 16 is substantially similar to claim 4. Fairbanks in view of Del still teaches and/or make obvious of the limitation of claim 16, therefore please refer to rejection set forth above for claim 4)
Regarding claim 17, Fairbanks in view of Del teaches and/or make obvious of the insulated staple of claim 16, wherein an opening (46) is defined between the side wall (SW) and an interior wall (56) of the channel, and wherein the opening is sized to receive the leg of the staple.
Regarding claim 18, The insulated staple of claim 15, wherein the insulator legs surround a portion of the leg of the staple without surrounding the crown of the staple.
(Claim 18 is substantially similar to claim 6. Fairbanks in view of Del still teaches and/or make obvious of the limitation of claim 18, therefore please refer to rejection set forth above for claim 6)
Regarding claim 19, The insulated staple of claim 15, wherein the insulator includes a plurality of protrusions extending into the channel and defining therebetween a gap that, in absence of the staple, has a width less than the width of the staple crown to provide a friction fit between the staple crown and the insulator.
(Claim 19 is substantially similar to claims 7 and 14. Fairbanks in view of Del still teaches and/or make obvious of the limitation of claim 19, therefore please refer to rejection set forth above for claims 7 and 14.)
Regarding claim 20, The insulated staple of claim 15, wherein the first insulator wall and the second insulator walls include protrusions that extend inwardly into the channel along the insulator bridge.
(Claim 20 is substantially similar to claim 7. Fairbanks in view of Del still teaches and/or make obvious of the limitation of claim 20, therefore please refer to rejection set forth above for claim 7.)
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 and 8 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-2 & 11 and 12-13 & 20, respectively of U.S. application number 17/332,150. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1 and 11 of application ‘150 encompasses and anticipates the structural limitation of the claim 1 of present application.
For instant, claims 1-2 and 11 of the application ‘150 is mapped to claim 1 of current application: ’080.
Regarding claim 1, An insulated staple (Claim 1, line 1) comprising:
a staple including a crown extending between a pair of legs (Claim 1, line 2); and
an insulator including an insulator bridge defining a longitudinal axis and extending between a pair of insulator legs, the insulator also including a channel extending from an end of one of the insulator legs to an end of the other of the insulator legs (Claim 1, lines 3-5);
wherein the channel is defined by a first insulator wall and an opposite, second insulator wall that is spaced from the first insulator wall in a direction perpendicular to the longitudinal axis of the insulator bridge (see claim 2),
wherein the staple is at least partially received in the channel (Claim 1, line 6), and
wherein, in absence of the staple, a width of the channel at the insulator legs is less than a thickness of the staple legs to provide a friction fit between the staple legs and the insulator (Claim 11, lines 1-3).
Regarding claim 8, A staple collation comprising:
a plurality of insulated staples, each including
a staple including a crown extending between a pair of legs (claim 12, lines 1-3); and
an insulator including an insulator bridge defining a longitudinal axis and extending between a pair of insulator legs, the insulator also including a channel extending from an end of one of the insulator legs to an end of the other of the insulator legs (claim 12, lines 4-6);
wherein the channel is defined by a first insulator wall and an opposite, second insulator wall that is spaced from the first insulator wall in a direction perpendicular to the longitudinal axis of the insulator bridge (see claim 13),
wherein the staple is at least partially received in the channel (claim 12, line 7), and
wherein, in absence of the staple, a width of the channel at the insulator legs is less than a thickness of the staple legs to provide a friction fit between the staple legs and the insulator (claim 20); and
a plurality of frangible connectors extending from the insulator and coupling adjacent insulated staples (Claim 12, lines 16-17).
Response to Arguments
Applicant's arguments filed 09/04/2025 have been fully considered but they are not persuasive.
Rejection based on existing and/or newly found prior art has been set forth above. Please refer to the rejection and rationale above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIL K MAGAR whose telephone number is (571)272-8180. The examiner can normally be reached M-F 7:30-5:30.
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/DIL K. MAGAR/Examiner, Art Unit 3675
/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675