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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/10/2025 has been entered.
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 1-3, 5-12, and 14 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, “to align the fastening elements on their way to the loading position” is indefinite because it is unclear what “their” refers to. For examination purposes, “on their way” is being interpreted to mean “to align the fastening elements while the fastening elements move to the loading position”.
Regarding claims 2-3 and 5-11, claims 2-3 and 5-11 are rejected because they depend from rejected claim 1.
Regarding claim 12, “to align the fastening elements on their way to the loading position” is indefinite because it is unclear what “their” refers to. For examination purposes, “on their way” is being interpreted to mean “to align the fastening elements while the fastening elements move to the loading position”.
Regarding claim 14, “to align the fastening elements on their way to the loading position” is indefinite because it is unclear what “their” refers to. For examination purposes, “on their way” is being interpreted to mean “to align the fastening elements while the fastening elements move to the loading position”.
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 1-2, 9-10, and 12 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Yip et al (US 2018/0093370), hereinafter Yip.
Regarding claim 1, Yip discloses a fastening tool (Fig. 1, item 10) for applying fastening elements (Fig. 2, item 38) to a workpiece (Para. 0058-0060), the fastening tool comprising:
an impact tool (Fig. 2, item 34) configured to convey one fastening element at a time along an impact axis (Para. 0058-0060) from a loading position within the fastening tool to a workpiece (Para. 0069-0076), wherein the fastening tool is configured to accommodate a magazine (Para. 0058-0060) in which a plurality of fastening elements (Para. 0058-0060) are arranged displaceably one behind another (Para. 0058-0060) along a loading path in a conveying direction (Para. 0058-0060) towards the loading position (Para. 0058-0060); and
an adjustment tool (Fig. 7, 8A-8C) (Para. 0069-0076) having at least one adjustment surface (Fig. 8A, item 114, 116) (Para. 0069-0076) which is guided movably counter to the conveying direction of the plurality of fastening elements (Para. 0069-0076) in such a way that the adjustment tool engages in the loading path (Para. 0069-0076), wherein:
the adjustment tool is arranged pivotably (Para. 0069-0076) between an adjustment position and a release position (Para. 0069-0076);
each fastening element of the plurality of fastening elements includes a base (Para. 0069-0076) and two legs (Para. 0069-0076) fastened to the base, wherein the adjustment tool includes at least two adjustment surfaces (Fig. 8A, item 114, 116) (Para. 0069-0076);
the at least two adjustment surfaces are lateral inclined surfaces (Para. 0069-0076) oriented opposite one another in such a way that in each of the lateral inclined surfaces comes into contact (Para. 0069-0076) with a leg of at least one fastening element (Para. 0069-0076), and
in order to align the fastening elements on their way to the loading position (Para. 0074-0075, guide fingers 114, 116 apply a force on fastening elements as the fastening elements move into the loading position), at least one adjustment surface is configured to, regarding a particular fastening element (Para. 0069-0076), at least one of: 1) displace the particular fastening element counter to the conveying direction (Para. 0069-0076) when the adjustment tool is moved counter to the conveying direction of the plurality of fastening elements (Para. 0074-0075, fastening element is moved in the direction opposite of the conveying direction by the force applied by the guide fingers 114, 116 and the spring 140, the force applied by the guide fingers 114, 116 occurs when spring 140 biases guide fingers 114, 116 in the direction opposite of the conveying direction), or 2) displace the particular fastening element in at least one direction perpendicular to the conveying direction into a desired position when the adjustment tool is moved counter to the conveying direction of the plurality of fastening elements.
Regarding claim 2, Yip discloses the fastening tool according to claim 1, wherein the adjustment tool is arranged pivotably (Para. 0069-0076) between an adjustment position (Para. 0069-0076) and a release position (Para. 0069-0076), wherein the adjustment tool in the adjustment position engages with the particular fastening element (Para. 0069-0076) which has been at least one of displaced (Para. 0069-0076), and wherein the adjustment tool in the release position releases (Para. 0069-0076) of the plurality of fastening elements along the loading path towards the loading position (Para. 0069-0076).
Regarding claim 9, Yip discloses the fastening tool according to claim 8, wherein the adjustment tool has a shape of a pivoting lever (Para. 0069-0076) and tapers towards a free end (Para. 0069-0076) in a region of the stop surface (Para. 0069-0076), wherein the region of the stop surface is perpendicular to the conveying direction (Para. 0069-0076) when the adjustment tool is in the adjustment position (Para. 0069-0076) (Fig. 7, 8A-8C).
Regarding claim 10, Yip discloses the fastening tool according to claim 1, wherein the plurality of fastening elements include a base (Para. 0069-0076) (Fig. 16, between legs 164) and two legs (Fig. 16, item 164) fastened to the base (Para. 0069-0076), wherein longitudinal extension directions of the two legs (Para. 0069-0076) of each fastening element of the plurality of fastening elements enclose an angle of less than 180 degrees (Para. 0069-0076).
Regarding claim 12, Yip discloses an adjustment tool (Fig. 7, 8A-8C) (Para. 0069-0076) for a fastening tool for applying fastening elements (Fig. 2, item 38) to a workpiece (Para. 0058-0060), the fastening tool comprising: an impact tool (Fig. 2, item 34) configured to convey a fastening element along an impact axis (Para. 0058-0060) from a loading position (Para. 0058-0060) within the fastening tool to a workpiece (Para. 0069-0076) to a work piece, (Para. 0058-0060), wherein the fastening element is one of a plurality of fastening elements (Para. 0058-0060), each fastening element of the plurality of fastening elements includes a base (Para. 0069-0076) and two legs (Para. 0069-0076) fastened to the base and being displaceable in the fastening tool in a conveying direction (Para. 0058-0060) towards the loading position (Para. 0058-0060),
Wherein the adjustment tool includes a plurality of adjustment surfaces (Fig. 8A, item 114, 116) (Para. 0069-0076), wherein the plurality of adjustment surfaces are inclined surfaces for adjusting the fastening element (Para. 0069-0076), wherein at least two adjustment surfaces (Fig. 8A, item 114, 116) (Para. 0069-0076) of the plurality of adjustment surfaces are lateral inclined surfaces (Para. 0069-0076) for adjusting the fastening element (Para. 0069-0076), and wherein at least two adjustment surfaces of the plurality of adjustment surfaces (Para. 0069-0076) are lateral inclined surfaces oriented opposite one another (Para. 0069-0076) in such a way that each of the lateral inclined surfaces comes into contact (Para. 0069-0076) with a leg of at least one fastening element (Para. 0069-0076); and
in order to align the fastening elements on their way to the loading position (Para. 0074-0075, guide fingers 114, 116 apply a force on fastening elements as the fastening elements move into the loading position), the lateral inclined surfaces are arranged in a way to displace a particular fastening element (Para. 0069-0076), in at least one direction perpendicular to the conveying direction into a desired position, when the adjustment tool is moved counter to the conveying direction of the plurality of fastening elements (Para. 0074-0075, fastening element is displaced in the upward direction by the force applied by the guide fingers 114, 116 and the spring 140, the force applied by the guide fingers 114, 116 occurs when spring 140 biases guide fingers 114, 116 in the direction opposite of the conveying direction) (Fig. 21, guide fingers apply a force to bottom and side of fastening element in the upwards direction, so that fastening element does not fall out of the nose of the tool).
Claim 14 is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Hasegawa (US 2023/0056376).
Regarding claim 14, Hasegawa discloses a method for conveying fastening elements (Para. 0019-0022), the method comprising:
arranging a plurality of fastening elements (Para. 0019-0022) one behind another within a magazine (Fig. 16, item 7) of a fastening tool in a conveying direction (Para. 0019-0022) to a loading position (Para. 0019-0022), from which a particular fastening element (Fig. 3-8, item 6) of the plurality of fastening elements is conveyed to a workpiece (Para. 0019-0022) using an impact tool (Fig. 16), wherein the particular fastening element is located directly upstream of the loading position (Para. 0019-0022);
exerting a force on the plurality of fastening elements (Fig. 3-8, item 14) (Para. 0019-0022) in a direction of the loading position by using a drive element (Para. 0019-0022); and
displacing the particular fastening element into a desired position (Para. 0019-0022) using an adjustment tool (Fig. 16, item 8), wherein, in order to align the fastening elements on their way to the loading position (Para. 0019-0022, adjustment tool 8 aligns fastening elements 6 as the fastening elements are positioned in the channel before they are fired), the adjustment tool moves counter to the conveying direction (Para. 0019-0022) for adjustment parallel to the conveying direction (Para. 0019-0022) and is adjusted perpendicular to the conveying direction by at least one adjustment surface (Fig. 3-8, item 14) (Para. 0019-0022), wherein the at least one adjustment surface of the adjustment tool is an inclined surface (Fig. 3-8, item 14) (Para. 0019-0022).
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.
Claims 3, 5-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Yip.
Regarding claim 3, Yip discloses the fastening tool according to claim 1, wherein the adjustment tool has one or more adjustment surfaces (Para. 0069-0076), wherein the one or more adjustment surfaces are inclined surfaces (Para. 0069-0076) configured to interact with one or more parts of the particular fastening element (Para. 0069-0076).
Yip does not expressly disclose the incline surfaces are configured to exert a displacement force thereon perpendicular to the conveying direction. However, a person of ordinary skill in the art would understand that the angle in which the inclined surfaces act on the fastener has a component of the force which acts in the direction perpendicular to the conveying direction, such that the incline surfaces exert force in the direction perpendicular to the conveying direction (see for example, Fig. 7, 8A-8C and Para. 0069-0076 of Yip).
Regarding claim 5, Yip discloses the fastening tool according to claim 1, wherein the at least two adjustment surfaces (Para. 0069-0076) are oriented relative to one another in such a way that the at least two adjustment surfaces or an imaginary extension (Para. 0069-0076) of the at least two adjustment surfaces intersect in a line substantially perpendicular (Para. 0069-0076) to the conveying direction (Para. 0069-0076) when the adjustment tool is in the adjustment position (Para. 0069-0076) (Fig. 23, when fingers are pushed away from the support position, the adjustment surfaces are substantially perpendicular to the conveying direction in order to allow the fastener to be driven out of the tool).
Yip does not expressly disclose that the adjustment surfaces are perpendicular to the conveying direction. However, Figure 23 of Yip shows adjustment surfaces 122 are substantially perpendicular to the conveying direction when the fastening element is in the channel. A person of ordinary skill in the art at the effective filing date of the invention having the teachings of Yip would understand that the adjustment surfaces 122 of Yip would be perpendicular to the conveying direction in order to provide sufficient clearance in the channel to drive the fastening element into a workpiece.
Regarding claim 6, the embodiment of Yip does not expressly disclose the fastening tool according to claim 4, wherein, when the adjustment tool is in the adjustment position, the at least two adjustment surfaces mirror-symmetrically with respect to a symmetry surface in which both the impact axis and the conveying direction run, as the guide fingers 114, 116 of Yip are different lengths.
However, Yip does teach that the guide fingers 114, 116 of Yip can be the same size and length (see Para. 0073 of Yip), such that the adjustment surfaces would mirror-symmetrically with both the impact axis and the conveying direction. Additionally, it would have been an obvious matter of design choice to form the adjustment surfaces of Yip to be the same size such that the adjustment surfaces are symmetrical, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 7, Yip discloses the fastening tool according to claim 1, wherein the adjustment tool is deliminated by multiple adjustment surfaces (Para. 0069-0076), wherein the multiple adjustment surfaces are inclined surfaces (Para. 0069-0076).
Yip does not expressly disclose the adjustment surfaces include an adjustment pyramid designed as a truncated pyramid. However, it would have been an obvious matter of design choice to make the different portions of the adjustment surfaces of whatever form or shape was desired or expedient. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 8, Yip discloses the fastening tool according to claim 1, wherein the adjustment tool is arranged pivotably (Para. 0069-0076) between an adjustment position and a release position (Para. 0069-0076), wherein the adjustment tool has at least one adjustment surface (Fig. 8A, item 114, 116), wherein the at least one adjustment surface is a stop surface (Para. 0069-0076) which, when the adjustment tool is in the adjustment position (Para. 0069-0076) in which the adjustment is engaged with at least one fastening element (Para. 0069-0076) of the plurality of fastening elements to be displaced to the desired position, is oriented substantially perpendicular (Para. 0069-0076) (Fig. 8A, Fig. 7) to the conveying direction and is oriented in such a way that the adjustment tool strikes against a surface (Para. 0069-0076) or an edge of the at least one fastening element which is oriented in particular perpendicular to the conveying direction (Para. 0069-0076) (Fig. 23, when fingers are pushed away from the support position, the adjustment surfaces are substantially perpendicular to the conveying direction in order to allow the fastener to be driven out of the tool).
Yip does not expressly disclose that the adjustment surfaces are perpendicular to the conveying direction. However, Figure 23 of Yip shows adjustment surfaces 122 are substantially perpendicular to the conveying direction when the fastening element is in the channel. A person of ordinary skill in the art at the effective filing date of the invention having the teachings of Yip would understand that the adjustment surfaces 122 of Yip would be perpendicular to the conveying direction in order to provide sufficient clearance in the channel to drive the fastening element into a workpiece.
Regarding claim 11, Yip discloses the fastening tool according to claim 1, wherein the fastening tool is set up to process fastening elements with a base (Fig. 16, base is between legs 164) (Para. 0069-0076) and two legs (Fig. 16, item 164) fastened to the base (Para. 0069-0076),
Yip does not expressly disclose wherein both the base and the two legs are in each case formed by metal sheets which extend in the conveying direction in the desired position of the fastening elements.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to form the fastening elements from metal sheets, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive for the following reasons:
Regarding Applicant’s argument that Yip does not teach at least two adjustment surfaces that are lateral inclined surfaces, Examiner disagrees. Figure 8B of Yip shows adjustment surfaces 122 of guide fingers 114, 116 and these surfaces are inclined in a lateral direction. See also Para. 0069 of Yip. Therefore the rejection is maintained.
Regarding Applicant’s argument that Yip does not teach the guide fingers moving or displacing the fasteners, Examiner disagrees. The guide fingers 114, 116 of Yip apply a force against the fastener in order to move the fasteners into the desired position for firing, while the fasteners move to the proper firing position. See for example Para. 0074-0075 of Yip. Therefore the rejection is maintained.
Conclusion
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/VERONICA MARTIN/Primary Examiner, Art Unit 3731