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 amendment filing on 04/06/2026.
Applicant’s cancelation of claims 1-15 and 17-24 is acknowledged and require no further examining. Claims 16 and 25 are pending and examined below.
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.
Claim 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 25 of copending Application No. 17/561,592 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because discloses the same limitations disclosed in claims 16-18 of the present application.
Claim 16 of the present application discloses a fastening tool comprising: an electric motor; a battery; a nail length sensor; and a microprocessor. Claim 25 of copending Application No. 17/561,592 discloses a fastening tool comprising: an electric motor; a battery; a nosepiece; a nail length sensor; and a microprocessor. The functional description following the phrase “configured to” is treated as a functional recitation. In other words, “it is not a structural limitation, and the prior art is considered to meet the limitations of an apparatus claim as long as the prior art is fully capable of performing the functional recitation.” [MPEP 2114 (II)] Claim 25 of the copending application discloses the electric motor is configured to drive a nail. The motor is interpreted to be fully capable of driving a nail of a plurality of nails. Therefore, claim 25 of the copending application is interpreted to disclose all the same limitations disclosed in claims 16-18 of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 25 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 25 of copending Application No. 17/581,592 in view of reference Adams (6,796,475).
Regarding claim 25, claim 25 of the copending Application No. 17/561,592 disclose most of the limitations. However, claim 25 of the copending application does not disclose a magazine comprising a first nail and a second nail.
Adams disclose a fastening tool (10) comprising a magazine (42) including a plurality of nails. (Figure 1 and Column 5 lines 1-4)
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 claim 25 of the copending application by incorporating the magazine as taught by Adams, since column 5 lines 4-8 of Adams states such a modification would allow the fastening tool to operate on different numbers, types, and sizes of fasteners.
This is a provisional nonstatutory double patenting rejection.
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 16 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over reference Adams (6,796,475) in view of reference Birk et al. (6,796,476).
Regarding claim 16, Adams discloses a fastening tool (10) comprising:
an electric motor (24) configured to selectively drive a driver blade (68) that drives a nail;
a battery (22) which supplies electrical power that drives the electric motor (24); and
a microprocessor (200) configured execute machine readable code which is configured to adjust a driving energy expended to the electric motor (24) to drive the nail.
(Figure 1, 3 and Column 4 lines 37-49, Column 6 lines 8-13, Column 9 lines 30-32, 40-43, Column 10 lines 35-41)
In column 5 lines 1-4 of Adams, the fastening tool is disclosed to include a magazine assembly (42) that includes a strip of fasteners. This implies that the fastening tool is capable of operating on a plurality of fasteners. Therefore, Adams is interpreted to disclose an electric motor configured to selectively drive a driver blade that drives a nail of a plurality of nails.
However, Adams does not disclose a nail length sensor.
Birk et al. disclose a fastening tool (10) comprising:
a motor (12, 16) configured to selectively drive a driver blade (40) that drives a nail (20);
a power supply (42) that drives the motor (12, 16);
a nail length sensor (50) providing a nail length of a nail length of the nail (20); and
a microprocessor (81) configured to receive the nail length data and to execute machine readable code to process the nail length data.
(Figures 1, 2, 6 and Column 3 lines 1-2, Column 4 lines 3-8, 30-33, 40-49, Column 5 lines 66-67 through Column 6 line 1, Column 8 lines 45-53, Column 9 lines 17-21)
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 fastening tool of Adams by incorporating the nail length sensor as taught by Birk et al., since column 2 lines 66-67 through column 3 lines 1-2 of Birk et al. states such a modification would allow automatic adjusting of the power output based upon the length of the fastener.
Regarding claim 25, Adams discloses a fastening tool (10) comprising:
a magazine (42) configured to have a first nail having a first nail length loaded into the magazine (42), and configured to have a second nail having a second nail length loaded into the magazine (42);
an electric motor (24);
a battery (22) having a battery life;
wherein the battery (22) is configured to power the electric motor (24) to selectively drive the first nail into a workpiece and to selectively drive the second nail to the workpiece; and
a microprocessor (200) configured execute machine readable code which is configured to adjust a driving energy expended to the electric motor (24) to drive the nail.
(Figure 1, 3 and Column 4 lines 37-49, Column 6 lines 8-13, Column 9 lines 30-32, 40-43, Column 10 lines 35-41)
However, Adams does not disclose a nail length sensor.
Birk et al. disclose a fastening tool (10) comprising:
a motor (12, 16) configured to selectively drive a driver blade (40) that drives a nail (20);
a power supply (42) that drives the motor (12, 16);
a nail length sensor (50) providing a nail length of a nail length of the nail (20); and
a microprocessor (81) configured to receive the nail length data and to execute machine readable code to process the nail length data.
(Figures 1, 2, 6 and Column 3 lines 1-2, Column 4 lines 3-8, 30-33, 40-49, Column 5 lines 66-67 through Column 6 line 1, Column 8 lines 45-53, Column 9 lines 17-21)
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 fastening tool of Adams by incorporating the nail length sensor as taught by Birk et al., since column 2 lines 66-67 through column 3 lines 1-2 of Birk et al. states such a modification would allow automatic adjusting of the power output based upon the length of the fastener.
When the 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. Therefore, Adams modified by Birk et al. is interpreted to disclose a fastening tool energy control system comprising a nail length sensor and a microprocessor, wherein the fastening tool energy control system is configured to extend the battery life by controlling the energy expended in driving the nails.
Response to Arguments
The Amendments filed on 04/06/2026 have been entered. Applicant’s cancelation of claims 1-15 and 17-24 is acknowledged and require no further examining. Claims 16 and 25 are pending in the application.
In response to the arguments to the rejections under nonstatutory double patenting, Examiner finds the arguments not persuasive.
Applicant states:
Applicant respectfully acknowledges this rejection and asserts that the amendments of pending independent claims 16 and 25 renders this rejection moot.
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). The amendment indicating fastening tool comprises a battery does not render the examined application claim patentably distinct.
Claim 25 of copending Application No. 17/561,592 discloses a fastening tool comprising: an electric motor; a battery; a nosepiece; a nail length sensor; and a microprocessor. The functional description following the phrase “configured to” is treated as a functional recitation. In other words, “it is not a structural limitation, and the prior art is considered to meet the limitations of an apparatus claim as long as the prior art is fully capable of performing the functional recitation.” [MPEP 2114 (II)] Therefore, copending application is interpreted to disclose all the same limitations disclosed in the amended claims 16 of the present application.
In response to the arguments of the objections towards the claims, in view of the amendments to the claims, Examiner withdraws the claim objections.
In response to the arguments of the rejections under 35 U.S.C. 112(b), in view of the amendments to the claims, Examiner withdraws the 112(b) rejections.
In response to the arguments of the rejections under 35 U.S.C. 103 with reference Adams (6,796,475) modified by Birk et al. (6,796,476), Examiner finds the arguments not persuasive.
Applicant states:
Applicant’s advances achieved approximately ten years later, 2012, solve an advanced problem well beyond Adams in view of Birk.
In response to applicant's argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
Applicant states:
Adams does not disclose, teach or suggest Applicant’s claim recitations regarding “nail length”, “nail length data”, or adjusting “the driving energy expended to the electric motor form the battery to drive the nail having the nail length based upon the input to the microprocessor.”
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 or the process of receiving nail length data. Adams is relied upon for the teaching of a fastening tool comprising: an electric motor; a battery; a magazine; and a microprocessor configured to adjust the driving energy expended to the electric motor. Birk et al. is relied upon for the teaching of a nail length sensor providing nail length data to the microprocessor, wherein the microprocessor executes machine readable data code to process the nail length data.
As acknowledged by Applicant in the arguments, Adams discloses adjusting the driving energy expended to the electric motor based on the type of fastener. The person of ordinary skill in the art would understand that fasteners with different lengths would be considered fasteners of different types. When modifying Adams in view of Birk et al., the microprocessor is interpreted to receive nail length data from the nail length sensor, and adjust the driving energy expended to the electric motor based on the nail length data, i.e. the type of fastener being used. Therefore, Adams modified by Birk et al. do disclose all the claimed limitations.
Applicant states:
In fact, Adams expressly teaches against using “electrical current” drawn by the motor as a variable control.
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., using electrical current as a variable control) 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).
In claim 16, the microprocessor is disclosed to adjust the driving energy expended to the electric motor is based on the nail length data from the nail length sensor. Claim 16 does not disclose the microprocessor adjusting the driving energy expended to the electric motor is based on the electrical current drawn by the motor.
In claim 25, the microprocessor is disclosed to adjust the driving energy expended to the electric motor is based on the first nail length data and second nail length data from the nail length sensor. Claim 25 does not disclose the microprocessor adjusting the driving energy expended to the electric motor is based on the electrical current drawn by the motor.
Applicant states:
Applicant respectfully asserts a word search of Adams for the terms “length” and “nail length”, return no hits. Adams is silent as regard a disclosure of “nail length”.
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 using nail length data. Adams is relied upon for the teaching of a fastening tool comprising: an electric motor; a battery; a magazine; and a microprocessor configured to adjust the driving energy expended to the electric motor. Birk et al. is relied upon for the teaching of a nail length sensor providing nail length data to the microprocessor, wherein the microprocessor executes machine readable data code to process the nail length data.
Applicant states:
As such, Birk does not disclose, teach, or suggest Applicant’s claim “an electric motor configured to selectively drive a driver blade that drives a nail” (Ind. Claim 16)
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, Birk et al. is not relied upon for the teaching of an electric motor. Birk et al. is relied upon for the teaching of a nail length sensor providing nail length data to the microprocessor, wherein the microprocessor executes machine readable data code to process the nail length data. Adams is relied upon for the teaching of a fastening tool comprising: an electric motor configured to selectively drive a drive blade that drives a nail; a battery; a magazine; and a microprocessor configured to adjust the driving energy expended to the electric motor.
Applicant states:
In view of the above, Applicant respectfully asserts that Birk’s battery which is used to run the fan motor, doe not disclose teach or suggest Applicant’s claimed “an electric motor configured to selectively drive a drive blade that drives a nail of a plurality of nails” and “a battery which supplies electric power that drives the electric motor” (Ind. Claim 16) which is configured to selectively drive a driver blade.
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, Birk et al. is not relied upon for the teaching of an electric motor. Birk et al. is relied upon for the teaching of a nail length sensor providing nail length data to the microprocessor, wherein the microprocessor executes machine readable data code to process the nail length data. Adams is relied upon for the teaching of a fastening tool comprising: an electric motor configured to selectively drive a drive blade that drives a nail; a battery; a magazine; and a microprocessor configured to adjust the driving energy expended to the electric motor.
As acknowledged by Applicant in the arguments, Adams discloses adjusting the driving energy expended to the electric motor based on the type of fastener. The person of ordinary skill in the art would understand that fasteners with different lengths would be considered fasteners of different types. When modifying Adams in view of Birk et al., the microprocessor is interpreted to receive nail length data from the nail length sensor, and adjust the driving energy expended to the electric motor based on the nail length data, i.e. the type of fastener being used, wherein the electric motor to selectively drives a drive blade that drives a nail. Therefore, Adams modified by Birk et al. do disclose all the claimed limitations.
Applicant states:
More specifically, Birk’s disclosure of combustion of fuel “at a power level relative to the length of the fastener” Id., does not rectify the deficiencies of Adams and their combination does not disclose, teach or suggest Applicant’s claims.
Birk et al. is not relied upon for the teaching of the use of combustion fuel. Birk et al. is relied upon for the teaching of a nail length sensor providing nail length data to the microprocessor, wherein the microprocessor executes machine readable data code to process the nail length data. In column 2 lines 66-67 through column 3 lines 1-2 of Birk et al., it is known in the art that there is a need for “an improved system for automatically adjusting the power output of a framing tool based upon the length of the fastener”. When modifying Adams in view of Birk et al., the person of ordinary skill in the art would be motivated to modify the invention of Adams by automatically adjusting the power output of the tool based upon the length of the fastener in order to have an improved system.
Applicant states:
Birk uses combustion power and does not have Applicant’s “electric motor configured to selectively drive a drive blade that drives a nail of a plurality of nails”.
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, Birk et al. is not relied upon for the teaching of an electric motor. Birk et al. is relied upon for the teaching of a nail length sensor providing nail length data to the microprocessor, wherein the microprocessor executes machine readable data code to process the nail length data. Adams is relied upon for the teaching of a fastening tool comprising: an electric motor configured to selectively drive a drive blade that drives a nail; a battery; a magazine; and a microprocessor configured to adjust the driving energy expended to the electric motor.
Applicant states:
As discussed above, Adams and Birk have technical goals different from Applicant and addressed problems from an earlier decade of technology.
In response to applicant's argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
Applicant states:
Birk fails to rectify the deficiencies of Adams and does not disclose, teach or suggest, Applicant’s claimed microprocessor which “adjusts the driving energy expended to the electric motor from the battery to drive the second nail having the second nail length if said first nail length data and said second nail length data are different” (Ind. Claim 25).
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, Birk et al. is not relied upon for the teaching of an electric motor. Birk et al. is relied upon for the teaching of a nail length sensor providing nail length data to the microprocessor, wherein the microprocessor executes machine readable data code to process the nail length data. Adams is relied upon for the teaching of a fastening tool comprising: an electric motor configured to selectively drive a drive blade that drives a nail; a battery; a magazine; and a microprocessor configured to adjust the driving energy expended to the electric motor.
As acknowledged by Applicant in the arguments, Adams discloses adjusting the driving energy expended to the electric motor based on the type of fastener. The person of ordinary skill in the art would understand that fasteners with different lengths would be considered fasteners of different types. When modifying Adams in view of Birk et al., the microprocessor is interpreted to receive the first nail length data and the second nail length data from the nail length sensor, and adjust the driving energy expended to the electric motor if the first nail length data is different from the second nail length data, i.e. if the first nail is a different type of nail than the second nail. Therefore, Adams modified by Birk et al. do disclose all the claimed limitations.
Applicant states:
Birk also does not teach Applicant’s claimed “fastener tool energy control system extends a battery life by controlling the energy expended to the electric motor from the battery in driving the first nail and the second nail.” Id.
When the 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. Therefore, Adams modified by Birk et al. is interpreted to disclose a fastening tool energy control system comprising a nail length sensor and a microprocessor, wherein the fastening tool energy control system is configured to extend the battery life by controlling the energy expended in driving the nails.
Conclusion
THIS ACTION IS MADE FINAL. 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 PATRICK B FRY whose telephone number is (571)272-0396. The examiner can normally be reached on Mon-Thur 7am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK B FRY/Examiner, Art Unit 3731 June 10, 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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