DETAILED ACTION
Receipt is acknowledged of Applicant’s Response, dated 27 March 2026, which papers have been made of record.
Claims 1-20 are currently presented for examination, of which claims 9-11 have been withdrawn from consideration.
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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8 and 12-20, in the reply filed on 27 March 2026 is acknowledged. The traversal is on the ground(s) that Applicant alleges “that the subject matter of all claims is sufficiently related that a thorough search for the subject matter of any one group of claims would encompass a search for the subject matter of the remaining claims.” Applicant does not state which features are allegedly sufficiently related, nor assert that the representative claims of the respective groups would be obvious over each other.
This is not found persuasive because Applicant has not provided evidence beyond mere assertion that there is not a serious burden. Applicant does not address the factors which may be used to determine whether there is a serious burden, and so has not provided any evidence that the previous finding of burden was in error. The Office Action identifies different classifications for the distinct groups, and the MPEP at section 803 recites “for the purpose of the initial requirement, a serious search burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or a different field of search as defined in MPEP 808.02.” Applicant has not alleged that the different identified classifications are incorrect.
Furthermore, Applicant cannot overcome the fact that searching the method is not required for the apparatus as claimed. To keep the groups together would be a burden to the examiner. Regarding Applicant's argument that examination of the entire application would not place a serious burden on the examiner, this is not found persuasive because Applicant has not provided any evidence or showing to support such a conclusion. Clearly, consideration of additional claims drawn to one or more distinct groups of inventions in diverse categories (product and methods) mandates different fields of search with the associated concomitant hundreds to thousands of patents and time consuming evaluation of those patents which gives rise to a sizeable burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-8 and 12-20 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 the pronoun “its” at lines 4 and 10. It is difficult to determine to which previously presented claim element the pronoun refers. Applicant could overcome this rejection by reciting the claimed elements each time they are to be referenced.
The term “substantially” in claim 1 is a relative term which renders the claim indefinite. The term “substantially parallel” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “parallel” is understood to have an explicit and exclusive definition and interpretation, such that modification of the term creates ambiguity. Applicant does not appear to have provided an explicit definition or a standard for variations from actually being parallel which would be understood by one having ordinary skill in the art.
Claims 2-8 each depend from claim 1, and therefore are rejected for at least the reasons presented above with respect to claim 1.
The term “about” in claim 8 is a relative term which renders the claim indefinite. The term “about 5 degrees to 15 degrees” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicant does not appear to have provided an explicit definition or a standard for variations from the range recited which would be understood by one having ordinary skill in the art.
Claim 12 recites the pronoun “its” at lines 9 and 14. It is difficult to determine to which previously presented claim element the pronoun refers. Applicant could overcome this rejection by reciting the claimed elements each time they are to be referenced.
The term “substantially” in claim 1 is a relative term which renders the claim indefinite. The term “substantially parallel” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “parallel” is understood to have an explicit and exclusive definition and interpretation, such that modification of the term creates ambiguity. Applicant does not appear to have provided an explicit definition or a standard for variations from actually being parallel which would be understood by one having ordinary skill in the art.
Claims 12-20 each depend from claim 12, and therefore are rejected for at least the reasons presented above with respect to claim 12.
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.
Claims 1-3, 5-7, and 12-19
Claims 1-3, 5-7, 12-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication 2021/0138623 to Bierdeman et al. (hereinafter “Bierdeman”).
Regarding claim 1, Bierdeman discloses a driving tool (10) comprising: a driver (26) that is movable in an up-down direction (see paragraph [0069]; along axis 62 in Fig. 3) for striking a driven member (fasteners; see paragraph [0079]; motion of driver causes driving of fastener into workpiece); a lifter (66) allocated on either left side or right side of the driver (26; see Fig. 3, lifter is located to one side of the driver), wherein the lifter (66) rotates around a rotation axis extending in a front-rear direction (see paragraph [0069]) to return the driver to its initial position (causes driver to return from bottom dead center position to top dead center position); and a magazine (14) allocated on a side of the driver (26) opposite the lifter (66; see Fig. 2; magazine appears to be located into the page, lifter located out of the page), wherein the magazine feeds driven members from rear to front (fasteners in magazine understood to travel from left to right with respect to Fig. 1) at a feeding angle (magazine shown extending at an angle relative to vertical direction at driving tip; see Fig. 2), wherein the feeding angle is inclined in a left-right direction relative to the rotation axis of the lifter (see Fig. 2), wherein the driver (26) is planar (see Fig. 10 and paragraph [0083]; driver 26 and driver 226 understood to have a planar configuration) with its thickness direction (thickness of member 26 out of the page or into the page with respect to Fig. 3) oriented in a feeding direction (out of the page) of the driven members (fasteners understood to travel through magazine 14, shown unnumbered in the bottoms of Figures. 3-5), wherein the driver has a striking portion (lowermost portion with respect to Fig. 3) configured to strike the driven member (fastener; not shown) and a plurality of engaging portions (74, 74A) projecting from the striking portion toward the lifter (66) to engage successively with the lifter (see paragraph [0069]), wherein each of the plurality of engaging portions (74, 74A) has an engaging portion front surface (front surface; more easily seen with respect to equivalent driver 226 in Fig. 10) coplanar with a front surface of the striking portion (terminal end of the driving member understood to be planar) and an engaging portion rear surface (rear face of driving member, not visible, but thickness shown in equivalent driver 226 in Fig. 10) coplanar with a rear surface of the striking portion (terminal end of driving member 26 understood to have constant thickness; see Fig. 10), and wherein engagement surfaces (see Figs. 3-5) of the plurality of engaging portions (74, 74A) are configured in a plane that is substantially parallel to the rotation axis (see Figs. 3 and 10; driving member 26 front surface faces out of page, as does surface defined at axis of rotation of lifter 66).
Regarding claim 2, Bierdeman discloses the limitations of claim 1, and further Bierdeman discloses further comprising a plurality of engagement pins (120) that are arranged along an outer circumferential edge of the lifter (66) and successively engages the plurality of engaging portions (74, 74A) of the driver (26; see Figs. 3-5).
Regarding claim 3, Bierdeman discloses the limitations of claim 2, and further Bierdeman discloses that the lifter (66) includes a front flange (118A) to support a front end of the plurality of engagement pins (120) and a rear flange (118B) to support a rear end of the plurality of engagement pins (120; see Fig. 7, flanges extend at front and rear of the pins).
Regarding claim 5, Bierdeman discloses the limitations of claim 1, and further Bierdeman discloses further comprising a piston (see paragraph [0067]) that is movable by gas pressure (pressurized gas; see paragraph [0067]), wherein the driver (26) has a plate-shaped coupling portion (entire body of driver understood to be plate shaped, see equivalent driver 226 in Fig. 10, and all of driver at least indirectly coupled to piston; see paragraph [0067]) that is coupled to the piston (piston; see paragraphs [0067] and [0069]), a front surface of the coupling portion is flush with the front surface of the striking portion (terminal end of the driving member understood to be planar such that front surface of driver is coplanar with the remainder of the driver), and a rear surface of the coupling portion is flush with the rear surface of the striking portion (terminal end of the driving member understood to be planar, such that rear surface at striking portion is coplanar with the remainder of the driver).
Regarding claim 6, Bierdeman discloses the limitations of claim 1, and further Bierdeman discloses that an end of the striking portion (lowermost end of driver 26 with respect to Fig. 3) is thinner than a body of the striking portion (striking portion of driver at projections 74 is thicker in left-right direction with respect to Figure 3).
Regarding claim 7, Bierdeman discloses the limitations of claim 3, and further Bierdeman discloses that the front flange (118A) of the lifter (66) has a relief surface around an entire circumference that is inclined with respect to a plane (see Fig. 7; edge of flange appears to be chamfered at perimeter thus inclined) orthogonal to the rotation axis (about axis 90) for avoiding interference with the engaging portion of the front surface (front surface adjacent 74, 74A; see Fig. 5).
Regarding claim 12, Bierdeman discloses a driving tool (10) comprising: a tool body (10) having a body housing (30) and a cylinder (34) allocated within the body housing; a piston (see paragraph [0067]) being reciprocally movable in an up-down direction within the cylinder; a driver (26) coupled to the piston (see paragraph [0067]) via a coupling portion (see paragraph [0069]; driver and piston are coupled), wherein the driver is movable in an up-down direction for striking a driven member (fasteners; see paragraph [0079]; motion of driver causes driving of fastener into workpiece); a lifter (66) allocated on either left side or right side of the driver (26; see Fig. 3, lifter is located to one side of the driver), wherein the lifter (66) rotates around a rotation axis extending in a front-rear direction (see paragraph [0069]) to return the driver to its initial position (causes driver to return from bottom dead center position to top dead center position); and a magazine (14) allocated on a side of the driver (26) opposite the lifter (66; see Fig. 2; magazine appears to be located into the page, lifter located out of the page), wherein the driver (26) is planar (see Fig. 10 and paragraph [0083]; driver 26 and driver 226 understood to have a planar configuration) with its thickness direction (thickness of member 26 out of the page or into the page with respect to Fig. 3) oriented in a feeding direction (out of the page) of the driven members (fasteners understood to travel through magazine 14, shown unnumbered in the bottoms of Figures. 3-5), wherein the driver has a striking portion (lowermost portion with respect to Fig. 3) configured to strike the driven member (fastener; not shown) and a plurality of engaging portions (74, 74A) projecting from the striking portion toward the lifter (66) to engage successively with the lifter (see paragraph [0069]), wherein each of the plurality of engaging portions (74, 74A) has an engaging portion front surface (front surface; more easily seen with respect to equivalent driver 226 in Fig. 10) coplanar with a front surface of the striking portion (terminal end of the driving member understood to be planar) and an engaging portion rear surface (rear face of driving member, not visible, but thickness shown in equivalent driver 226 in Fig. 10) coplanar with a rear surface of the striking portion (terminal end of driving member 26 understood to have constant thickness; see Fig. 10), and wherein engagement surfaces (see Figs. 3-5) of the plurality of engaging portions (74, 74A) are configured in a plane that is substantially parallel to the rotation axis (see Figs. 3 and 10; driving member 26 front surface faces out of page, as does surface defined at axis of rotation of lifter 66).
Regarding claim 13, Bierdeman discloses the limitations of claim 12, and further Bierdeman discloses that the tool body (10) comprises a driving nose portion (lowermost portion below cylinder housing 34; see Fig. 2), wherein the driving nose portion further comprises a driver guide (see Annotated Figure, unnumbered guide member) and a contact arm (see Annotated Figure).
PNG
media_image1.png
440
632
media_image1.png
Greyscale
Regarding claim 14, Bierdeman discloses the limitations of claim 12, and further Bierdeman discloses that the magazine (14) is coupled to the driving nose portion (see Fig. 2) at a rear side (magazine appears to be coupled in rear direction towards battery portion 54).
Regarding claim 15, Bierdeman discloses the limitations of claim 12, and further Bierdeman discloses that the cylinder (34) comprises a downward motion end damper (spring 350 shown in equivalent lifter assembly 266 in Fig. 12) allocated at a bottom of the cylinder for shock absorption.
Regarding claim 16, Bierdeman discloses the limitations of claim 12, and further Bierdeman further discloses comprising a lift mechanism (lifter assembly 88; see paragraph [0071]) configured for returning the driver (26) and the piston to an upper initial position after the driver and the piston reaches downward motion end (BDC and TDC; see paragraph [0069]).
Regarding claim 17, Bierdeman discloses the limitations of claim 12, and further Bierdeman discloses that the lifter (66) further comprises a plurality of engagement pins (120) , wherein each of the plurality of engagement pins (120) is configured to engaged with the plurality of engaging portions (74, 74A; see Figs. 3-5).
Regarding claim 18, Bierdeman discloses the limitations of claim 17, and further Bierdeman discloses that the lifter (66) includes a front flange (118A) for supporting a front end of the plurality of engagement pins (120; see Fig. 7, flanges extend at front and rear of the pins).
Regarding claim 19, Bierdeman discloses the limitations of claim 17, and further Bierdeman discloses that the lifter (66) further comprises a rear flange (118B) for supporting a rear end of the plurality of engagement pins (120; see Fig. 7, flanges extend at front and rear of the pins).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4 and 20
Claims 4 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bierdeman as applied to claims 1 and 12 above, and further in view of United States Patent Application Publication 2022/0126433 to Leimbach et al. (hereinafter “Leimbach”)
Regarding claim 4, Bierdeman discloses the limitations of claim 1. Bierdeman does not fully illustrate the rear surface of the driving member (best seen in equivalent driver 226 in Fig. 10). Thus, it is not apparent whether there is a relief inclined with respect to the engaging portion rear surface.
It is known in the art of fastener driving tools to provide drivers having reliefs.
For example, Leimbach teaches such a driving tool. Leimbach teaches a fastener driving tool (10) which includes a driver (90) which engages a rotary lifter (100; see Fig. 6). The driver includes a plurality of projections (92) and reliefs therebetween (best seen in Figs. 6-7). The rear and side surfaces of the teeth 92 are shown extending at an angle relative to the midline of the driver 90, such that the corresponding reliefs will also have an inclined or angled surface defining the relief.
It would have been obvious to one having ordinary skill in the art to modify the method taught by Bierdeman to include another and conventional driver, such as the driver taught by Leimbach, having a plurality of reliefs on one face. (See MPEP 2143(1)(A)). The resulting device would predictably include a driver having capable of engaging with a rotary lifter in a predictable manner, without modification of the principles of operation of the device of Bierdeman. The reliefs taught by Leimbach include a surface which is inclined relative to the engaging portion rear surfaces of the driver.
Thus, the combination of Bierdeman and Leimbach teaches the limitations of claim 4.
Regarding claim 20, Bierdeman discloses the limitations of claim 12. Bierdeman does not fully illustrate the rear surface of the driving member (best seen in equivalent driver 226 in Fig. 10). Thus, it is not apparent whether there is a relief inclined with respect to the engaging portion rear surface.
It is known in the art of fastener driving tools to provide drivers having reliefs.
For example, Leimbach teaches such a driving tool. Leimbach teaches a fastener driving tool (10) which includes a driver (90) which engages a rotary lifter (100; see Fig. 6). The driver includes a plurality of projections (92) and reliefs therebetween (best seen in Figs. 6-7). The rear and side surfaces of the teeth 92 are shown extending at an angle relative to the midline of the driver 90, such that the corresponding reliefs will also have an inclined or angled surface defining the relief.
It would have been obvious to one having ordinary skill in the art to modify the method taught by Bierdeman to include another and conventional driver, such as the driver taught by Leimbach, having a plurality of reliefs on one face. (See MPEP 2143(1)(A)). The resulting device would predictably include a driver having capable of engaging with a rotary lifter in a predictable manner, without modification of the principles of operation of the device of Bierdeman. The reliefs taught by Leimbach include a surface which is inclined relative to the engaging portion rear surfaces of the driver.
Thus, the combination of Bierdeman and Leimbach teaches the limitations of claim 20.
Claim 8
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Bierdeman as applied to claim 1.
Regarding claim 8, Bierdeman discloses the limitations of claim 1. Bierdeman does not explicitly disclose that the feeding angle of the magazine is about 5 degrees to 15 degrees with respect to a direction parallel to the rotation axis of the lifter. Bierdeman appears to be silent as to the angle of the magazine (14).
The MPEP teaches that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was no patentability distinct from the prior art device. (MPEP 2144.04(IV)(A)). There is nothing of record that suggests that the recited range of angles for the feeding angle of the magazine would cause the device taught by Bierdeman to behave differently in use than any other angle. Accordingly, it would have been within the level of ordinary skill in the art to modify the dimensions or angular position of the magazine as a matter of design choice, without expecting any modification of the principles of operation of Bierdeman.
Thus, Bierdeman teaches the limitations of claim 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication 2020/0130157 to Rux teaches a driving tool (10) having a driver which is engaged to a rotary lifting mechanism (77; see Fig. 3).
United States Patent 3,964,659 to Eiben et al. teaches a driving tool having a magazine (11).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARRELL C. FORD whose telephone number is (313)446-6515. The examiner can normally be reached 8:30 AM to 5:15 PM, Monday to Friday.
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, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DARRELL C FORD/Examiner, Art Unit 3726
Prosecution Insights