DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 1 and 12 are objected to because of the following informalities: Regarding claims 1 and 12, “with which results in that the piston closes off . . .” appears to be grammatically incorrect. Examiner recommends amending this limitation to “which results in the piston closing off . . .” Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a fastening element” in claims 1 and 12 (interpreted to be a nail or bolt, see Para. 0022 of Applicant’s specification), “a coupling device” in claims 6 and 14 (interpreted to be a locking element, an inner sleeve, an outer sleeve, and a restoring spring, see Para. 0040-0041 of Applicant’s specification), “a locking element” in claims 7 and 15 (interpreted to be any structure which can lock, see below 35 USC 112 rejection below), and “an actuating element” in claims 11 and 19 (interpreted to be any structure which can actuate, see below 35 USC 112 rejection below).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7-11 and 15-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 7 and 15, the disclosure does not provide sufficient structure to satisfy the written description requirement for “a locking element”. The specification and drawings do not disclose the corresponding structure for “a locking element” as required by 35 USC 112(f). See below 35 USC 112(b) rejection.
Regarding claims 11 and 19, the disclosure does not provide sufficient structure to satisfy the written description requirement for “an actuating element”. The specification and drawings do not disclose the corresponding structure for “an actuating element” as required by 35 USC 112(f). See below 35 USC 112(b) rejection.
Regarding claims 8-10 and 16-18, claims 8-10 and 16-18 are rejected because they depend from a rejected claim.
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 1-20 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.
Regarding claim 1, “the closed-off part volume” lacks antecedent basis.
Regarding claims 7 and 15, claim limitation “a locking element” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification and drawings do not provide any corresponding structure for “a locking element” as required for 35 USC 112(f). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claims 11 and 19, claim limitation “an actuating element” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification and drawings do not provide any corresponding structure for “an actuating element” as required for 35 USC 112(f). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 12, “the closed-off part volume” lacks antecedent basis.
Regarding claims 2-6, 8-10, 13-14, 16, 18, and 20, claims 2-6, 8, 10, 13-14, 16, 18, and 20 are rejected because they depend from a rejected claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pedecini et al (US 2017/0100829), hereinafter Pedecini.
Regarding claim 1, Pedecini discloses an apparatus (Fig. 1, item 100) for driving a fastening element into a base material (Para. 0052-0056), the apparatus having a bolt receptacle (Para. 0052-0056) for the fastening element and a driving-in element (Fig. 4, item 62) which can be moved toward the bolt receptacle between a starting position (Fig. 3) (Para. 0052-0056) and a setting position (Fig. 4) (Para. 0052-0056), wherein the apparatus has a cylindrical container (Fig. 1, item 42, 44, 45) which defines a cylinder axis (Para. 0052-0056), wherein the driving-in element comprises a piston (Fig. 4) which is arranged in the cylindrical container (Para. 0052-0056) such that the piston can be moved along the cylinder axis (Para. 0052-0056), with which results in that the piston closes off a part volume of the cylindrical container (Para. 0052-0056), and a gas (Para. 0052-0056) which is arranged in the closed-off part volume of the cylindrical container (Para. 0052-0056) forms a gas spring (Para. 0052-0056), wherein the cylindrical container can be moved along the cylinder axis (Para. 0052-0056) (Fig. 3-4) toward the bolt receptacle (Para. 0052-0056) in order to tension the gas spring (Para. 0052-0056) when the driving-in element is situated in the starting position (Para. 0052-0056).
Regarding claim 12, Pedecini discloses a method (Para. 0052-0056) for driving a fastening element into a base material (Para. 0052-0056), by means of an apparatus (Fig. 1, item 100) having a bolt receptacle (Para. 0052-0056) for the fastening element (Para. 0052-0056) and a driving-in element (Fig. 1, item 62) which can be moved toward the bolt receptacle (Para. 0052-0056) between a starting position (Para. 0052-0056) and a setting position (Para. 0052-0056), the apparatus having a cylindrical container (Fig. 1, item 42, 44, 45) (Para. 0052-0056) which defines a cylinder axis (Fig. 3-4), the driving-in element comprising a piston (Para. 0052-0056) which is arranged in the cylindrical container (Para. 0052-0056) such that it can be moved along the cylinder axis (Para. 0052-0056), with the result that the piston closes off a part volume of the cylindrical container (Para. 0052-0056), and a gas (Para. 0052-0056) which is arranged in the closed-off part volume (Para. 0052-0056) of the cylindrical container forms a gas spring (Para. 0052-0056), the cylindrical container being moved toward the bolt receptacle (Para. 0052-0056) along the cylinder axis (Para. 0052-0056) in order to tension the gas spring (Para. 0052-0056), while the driving-in element is situated in the starting position (Para. 0052-0056).
Prior Art Rejection
Claims 2-11 and 13-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 10/20/2025 have been fully considered but they are not persuasive for the following reasons:
Regarding Applicant’s arguments that the 35 USC 112(a) rejections are overcome, Examiner disagrees. Applicant has cited to paragraphs [0006], [0040]-[0042], and [0044] for the description of “a locking element” and to paragraphs [0007], [0041], and [0044] for the description of “an actuating element”. However, neither the specification nor the drawings provide the associated structure for “a locking element” or “an actuating element”, as required by 35 USC 112(f). The cited paragraphs only provide further functional language for “a locking element” or “an actuating element” and do not provide sufficient structure for the limitations. Therefore, the rejection is maintained.
Regarding Applicant’s arguments that Pedecini does not teach wherein the cylindrical container can be moved along the cylinder axis toward the bolt receptacle”, Examiner disagrees. First, Pedecini teaches the chamber 45 can by a cylinder (see for example, Para. 0027 of Pedecini). Additionally, Figures 2 and 4 of Pedecini show the chamber 45 moving vertically within the housing. Therefore the rejection is maintained.
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 VERONICA MARTIN whose telephone number is (571)272-3541. The examiner can normally be reached Monday-Thursday 8:00-6:00.
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, Anna Kinsaul can be reached at (571)270-1926. 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.
/VERONICA MARTIN/Primary Examiner, Art Unit 3731