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.
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.
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.
Patent Owner elected group 1, consistent with the constructive election, in the April 2, 2026 remarks.
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
Claims 21,46 and 48-52 are 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”. 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 and the relief portion being recessed 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 April 2, 2026 amendment further added, “wherein the relief portion has a central surface that is linear in profile as viewed from a front of the tool.”
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 surface of the relief portion found in the final indent of claim 1. The new language, “wherein the relief portion has a central surface that is linear in profile as viewed from a front of the tool” is not seen as further limiting the claim after the elimination of the concave surfaces, but rather a positive recitation that the concave curvature has been eliminated. As the concave curvature was argued to be lacking in Maemori, the elimination of the concave curvature results in recapture of surrendered subject matter.
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 § 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.
Claim 47 is 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 47 claims, “the relief portion is concave relative to both the driving contact surfaces and the pair of driving projections”. While this does incorporate language that was added to original claim 1 to overcome the art, it is unclear due to claim 47’s dependence of claim 21. Claim 21 now claims, “the relief portion has a central surface that is linear in profile as viewed from a front of the tool”. It is unclear how the relief portion is both concave and linear. Merriam Webster defines concave as “1: hollowed or rounded inward like the inside of a bowl 2:arches in: curving in-used of the side of a curve or surface on which neighboring normal to the curve or surface converge and on which lies the chord joining two neighboring points of the curve or surface.”
Allowable Subject Matter
Claims 1-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: It is agreed that the relief portions of Young and Maemori contact the fastener when the fastener is being driven. Because of this ,the references teach away from the relief portion of the driver blade providing “a non-contact surface with respect to the lead fastener”.
Response to Arguments
PO has amended claim 1 to reincorporate the “driving projections” limitations, but this does not include the “concave” limitations from the final amendment before allowance of the parent application. The new limitation of claim 21, that the relief portion has a linear profile is not seen as a further limitation that had been previously overlooked, but rather a direct contradiction of language that was added to obtain allowance of the claim. The driver blade had already been claimed. The claim was found allowable after the claim was amended (and argued) to add “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.” Claim 21 has been amended to eliminate the concave surface of the relief portion. Stating that the relief portion is linear is not seen as sufficient structure to overcome recapture as it is seen as merely reiterating that the relief portion is not concave.
The art rejections have been withdrawn. The argument that the relief portions of Maemori and Young contact the fastener during driving is persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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