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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-21, drawn to a tool with a driver blade that contacts spaced curved edges of opposite sides of the lead fastener in a magazine, classified in B25C 5/00.
II. Claims 22-45, drawn to a tool and method for driving fasteners with a magazine for the fasteners and a lock arm to prevent the movement of a contact trip member when there are fewer than a predetermined number of fasteners in the magazine, classified in B25C 1/008.
The inventions are independent or distinct, each from the other because:
Inventions of group I and group II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination I has separate utility such as in a fastening tool without the means to determine when fewer than a predetermined number of fasteners are left in a magazine, as evidenced by claims 1 and 21. Group II is not seen to require the specific shape of the contact surfaces, as these are not claimed in group II. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions are subcombinations usable together, with neither group claiming any specifics of the other group.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Newly submitted claims 22-45 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: None of the earlier patented claims claim the contact trip member or lock arm to prevent the driving of a fastener when the number of fasteners in the magazines is lower than a predetermined lower limit. All of the patented claims are directed to a tool for driving fasteners, with no claimed means to determine when the number of fasteners in the magazine drops below a lower limit or means to stop the driving means, features claimed in each of new claims 22-45.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 22-45 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
See MPEP 1450(II) for the possibility that this application would be suspended to merge with a later filed divisional if only the original patented claims remain.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,524,396 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Claim Rejections - 35 USC § 251
Claim 21 is rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
There are three steps to determine recapture: 1) determining whether and in what respect, the reissue claims are broader in scope than the patented claims, 2) determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution and, 3) determining whether the reissued claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence, avoid the recapture rule.
Step 1. Claim 21 does not explicitly claim curved edges on the driving contact surfaces of the driver blade. It replaces the “driving projections extending downwardly from the central portion and having a concave driving contact surface with a concave curvature” of claim 1, with “driving contact surfaces extending downwardly from the central portion and being configured to contact the curved edges of the lead fastener”. Along with the elimination of the hemispherical shape of the upper and lower cells, the current reissue claims have deleted “from an edge of the communication holes, where an upper end of the hook part is configured to be higher than the top surface of the lower cells” from the hook part that is configured to extend horizontally and vertically. The last indent of claim 1 claimed, “the relief portion being recessed and concave relative to both of the pair of driving contact surfaces and the pair of driving projections so as to provide a non-contact surface with respect to the lead fastener”, which has been changed to “the relief portion comprising a length that is centered relative to the driving edge so as to provide a non-contact surface with respect to the lead fastener.”
These changes boil down to the elimination of any concave surface on the driver blade.
Step 2. The ‘396 patent was allowed after an amendment was made on April 19, 2022, which amended claim 1 accordingly: “each of the driving projections extending downwardly from the central portion and having a concave driving contact surfacewith a concave curvature, the concave driving contact surfaces being configured to contact the curved edges of the lead fastener, and [[;]]
the central portion comprising a relief portion provided between the pair of driving projections, the relief portion comprising a length that is centered relative to the driving edge and the relief portion being recessed and concave relative to both of the pair of driving contact surfaces [[of]]and the pair of driving projections so as to provide a non-contact surface with respect to the lead fastener.”
The remarks filed with the amendment state, ” In a similar manner to claim 1, amended claim 14 recites that the driving edge of the driver blade has “a central portion” and “a pair of driving projections on opposite sides of the central portion” that are designed for contact with a curved edge on either side of the lead fastener, that “each driving projection extend[s] downwardly from the central portion” and has a driving contact surface in which at least a portion has a concave curvature, and that “the central portion compris[es] a relief portion provided between the pair of driving projections and in a center of the driving edge, the relief portion being recessed and concave relative to both of the driving contact surfaces and the pair of driving projections so as to provide a non-contact surface with respect to the lead fastener.”
The alleged combination of Maemori in view of Barlow fails to disclose, teach, or suggest at least the combination of features recited by amended claims 1 and 14.
As acknowledged in the Office Action, Maemori does not expressly teach that its alleged projections 5b, 5b, or tapered portion 5g and contacting portion 5h have a curvature. See Office Action, page 5. Further, Applicant notes that Maemori fails to disclose that its driving projections extend downwardly from the central portion and have a concave driving surface with a concave curvature (or at least a portion of each of the driving contact surfaces having a concave curvature), as clarified in the amended claims. The edges 5g and 5h (as shown in FIG. 16B) are neither concave nor do they extend downwardly from a central portion.” Thus, the addition of the concave surfaces of the driving edge resulted in the allowance of claim 1, making the concave surfaces a surrender generating limitation.
Step 3. Claim 21 is seen to eliminate the concave surfaces without adding any additional structure to claim 1. As such, the new claims are not seen to be materially narrowed in other respects.
As such, claim 21 is seen to impermissibly recapture surrender subject matter.
It is noted that the above recapture rejection makes the second and third bullet points in the March 8,2024 error statement invalid. However, the first bullet point pertaining to the driving projections is valid for claim 21, so the declaration is acceptable (but the concave surfaces need to added to claim 21 to overcome the recapture rejection).
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pre-Grant Publication 2010/0288815 to Maemori (hereinafter “Maemori”).
In regards to Claim 21, Maemori teaches a tool (100; Fig. 1) comprising: a housing (100); a magazine (3) carried by the housing, the magazine configured to hold a plurality of fasteners (300; Fig. 2) and configured to present a lead fastener (30) of the plurality of fasteners into a drive channel (par[0087]); a driver blade (5; Fig. 16A) provided in the housing and configured for movement within the drive channel to drive the lead fastener into a workpiece (par[0093]); a drive system configured to drive the movement of the driver blade (par[0092]);
the driver blade having a driving edge (5g-i; Fig. 16B) configured for contact with the lead fastener ([0163]), the driving edge comprising: a central portion a pair of driving contact surfaces (5b) each configured for contact with curved edges of either side of the lead fastener above its legs (“The projections 5b, 5b are positioned on both sides of the driving portion 5d and contact positions of the staple 30 supported by the staple guide 50 (see FIG. 11B) over the legs 30b, 30b.” 4[0163]), each of the driving projections comprising a driving contact surface (5g, 5h), the driving contact surfaces being configured to contact the curved edges of the lead fastener (“Each of the projections 5b, 5b provided on both sides of the forward end of the driving portion 5d shown in FIG. 16B contains a tapered portion 5g and a contacting portion 5h. The contacting portion 5h is provided on a forward end of each of the projections 5b, 5b and contacts the position of the staple 30 over the leg 30b.” 4[0164]); a relief portion (5i) provided between the pair of driving projections, the relief portion being recessed relative to both of the driving contact surfaces of the pair of driving projections (see Fig. 16B showing 5i is recessed in comparison to projections 5b). Maemori does not discuss surfaces configured for contact with spaced curved edges of opposite sides of the lead fastener, but the angled surfaces will inherently contact the edges, so they are seen to meet the claim language.
Claim(s) 1, 2, 6, 10, 14, 15, 19, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US PGPub 2015/0060513 to Young (hereinafter “Young”).
In regard to claims 1 and 14, Young discloses a tool 10 comprising a housing 12 and a magazine 16 carried by the housing and configured to hold a plurality of fasteners 18 and to present a lead fastener into a drive channel 14. A driver blade 30, powered by a drive system, in the housing moves to drive the lead fastener into a workpiece. The driving edge of the driving blade comprises a central portion and a pair of driving projections on opposite sides of the central portion, the driving projections configured for contact with spaced curved edges of opposite sides of the lead fastener above the legs of the lead fastener. Each of the driving projections extend down from the central portion and have a concave driving contact surface with a concave curvature configured to contact the curved edges of the lead fastener. Paragraph 63 of Young states, “The engagement portion 32 is crescent shaped, such that it conforms to the form of the crown 34 of the staple 18. Such a configuration may allow the engagement portion 32 to guide the staple 18 in the passage 28 and prevent movement of the staple 18 away from the longitudinal axis of the passage 28 (e.g. rotation or lateral movement of the staple 18 in the passage 28). In other words, receipt of the crown 34 of the staple 18 in the concave engagement portion 32 helps to self-centre the staple 18 whilst it is being driven. In use, the power delivery source can be configured such that the driver blade 30 is accelerated as it engages the staple 18 and drives the staple 18 into the workpiece. In this respect, the staple will be held in the crescent (i.e. in continuous contact) throughout the driving action of the driver blade 30 (i.e. from engagement with the driver blade to the staple being embedded in a workpiece).” As shown in the annotated portion of Figure 3A below, the central portion of the driving edge comprises a relief portion shown with concave edges and provided between the pair of driving projections and comprises a length that is centered relative to the pair of driving contact surfaces and the pair of driving projections to provide a non-contact surface with respect to the lead fastener.
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In regard to claim 2, the above figure shows the relief portion centered in a lateral direction relative to the pair of driving projections.
In regard to claim 6, the contact surfaces, as shown by the driving projection, above, have a higher end close to the relief portion and a lower end.
In regard to claim 10, the driver blade shown above is seen to have a concave driving portion and a concave relief portion. No straight line is discussed, so the transition surface between the two is seen as curved over at least a portion of its length.
In regard to claim 15, The above figure shows driving contact surfaces on the pair of driving projections.
In regard to claim 19, The figure above shows the concave curvature. The curve having a higher end and a lower end is considered inherent.
In regard to claim 21, Young discloses a tool 10 comprising a housing 12 and a magazine 16 carried by the housing and configured to hold a plurality of fasteners 18 and to present a lead fastener into a drive channel 14. A driver blade 30, powered by a drive system, in the housing moves to drive the lead fastener into a workpiece. The driving edge of the driving blade comprises a central portion and a pair of driving contact surfaces on opposite sides of the central portion, the driving contact surfaces configured for contact with curved edges of opposite sides of the lead fastener above the legs of the lead fastener. Each of the driving contact surfaces extend down from the central portion and have a concave driving contact surface with a concave curvature configured to contact the curved edges of the lead fastener. Paragraph 63 of Young states, “The engagement portion 32 is crescent shaped, such that it conforms to the form of the crown 34 of the staple 18. Such a configuration may allow the engagement portion 32 to guide the staple 18 in the passage 28 and prevent movement of the staple 18 away from the longitudinal axis of the passage 28 (e.g. rotation or lateral movement of the staple 18 in the passage 28). In other words, receipt of the crown 34 of the staple 18 in the concave engagement portion 32 helps to self-centre the staple 18 whilst it is being driven. In use, the power delivery source can be configured such that the driver blade 30 is accelerated as it engages the staple 18 and drives the staple 18 into the workpiece. In this respect, the staple will be held in the crescent (i.e. in continuous contact) throughout the driving action of the driver blade 30 (i.e. from engagement with the driver blade to the staple being embedded in a workpiece).” As shown in the annotated portion of Figure 3A below, the central portion of the driving edge comprises a relief portion provided between the pair of driving projections and comprises a length that is centered relative to the pair of driving contact surfaces and the pair of driving projections to provide a non-contact surface with respect to the lead fastener.
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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.
Claim(s) 3-5,7-9,11-13,16-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young.
As discussed above, Young is seen to disclose all of the claimed features of the independent claims. Claims 3-5,7-9,11-13,16-18 and 20 depend from these claims and claim specific dimensions of portions of the driving edge. Young does not give dimensions for his device, which may well match the claimed dimensions. Further, as stated on line 6 of column 21 of the ‘396 patent, “As a result of the geometry of the driving edge 15 of the driver blade 120, then, one can see in FIG. 26 that buckling and/or bending of the legs 152 (such as shown and compared to fasteners shown in FIGS. 1-2 which are driven using a flat surfaced driving blade) is prevented and/or substantially prevented.” None of the claims claim the overall dimensions, just dimensions of various components or portions of the driving edge. It seems that to prevent buckling of the staple, the overall shape and dimensions are important, but the dimensions of a single part, as currently claimed is considered obvious based on the available materials, the size of the fastener being driven and the relative sizes of the components to each other. As such, the dimensions claimed are not seen to impart patentability to the claims. Young teaches matching the concavity of the driving edge to that of the fastener being driven improves centering of the fastener. Any of the claimed dimensions would have been obvious from the teaching of Young depending on the size of the fastener being driven.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Manabe (US 7,510,106) and Barlow (US 2003/0115738, both cited in the original prosecution) shows a fastener device with a driving surface with angled driving contact points.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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, Patricia Engle can be reached at (571) 272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM C DOERRLER/ Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
/Patricia L Engle/ SPRS, Art Unit 3993