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 Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to an abstract idea without significantly more. Claim 1 recites a mechanism for selecting an elastomer comprising defining a falling height and an allowed contraction amount of the elastomer, obtaining a gravitational potential energy of the nail gun, determining an ideal elastic coefficient of the elastomer, and selecting an optimal elastomer.
The limitations defining a falling height and allowed contraction, obtaining gravitational potential energy, determining an ideal elastic coefficient, and selecting an optimal elastomer covers actions which are performable in the mind. A person may reasonably and mentally select an optimal elastomer by considering the height from which a tool would fall and the amount of force the tool must absorb from the fall. Thus, claim 1 is an abstract idea in the “mental process” grouping. Additionally, claims 2-7 cover mathematical concepts, which are abstract ideas. Therefore, claims 2-7 are directed to non-statutory subject matter because claims 2-7 do not fall within at least one of the four categories of patent eligible subject matter.
This judicial exception is not integrated into a practical application. The limitation of the elastomer having a maximum elastic coefficient to avoid permanent deformation of the safety sliding bar and a minimum elastic coefficient to maintain touching and pressing feel of the safety sliding bar generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). These types of limitations are recited at a high level of generality, and the claim itself only recites the idea of a solution or outcome (without reciting details on how the solution to a problem is accomplished) (MPEP 2106.05(f)(1)). The claim, as a whole, does not integrate the judicial exception into a practical application.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The limitations obtaining the gravitational potential energy of the nail gun at the falling height based on a weight of the nail gun and the elastomer having a minimum and maximum elastic coefficient for use with the safety sliding bar generally link the use of the abstract idea to a particular field of use, such that the limitations are not indicative of an inventive concept (see MPEP 2106.05(h)). Claims 2-7 do not include any additional elements other than the judicial exception of the abstract idea. These claims are not patent eligible.
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: “an elastomer selecting mechanism” in claim 1 (interpreted to be any mechanism to select an elastomer, see below 35 USC 112(a) and 112(b) rejection).
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 1-7 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 claim 1, “an elastomer selecting mechanism” is not supported by the written description because the specification does not describe the associated structure for the limitation as required under 35 USC 112(f). see below 35 USC 112(b) rejection.
Regarding claims 2-7, claims 2-7 are rejected because they depend from rejected claim 1.
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 1-7 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 impact”, “the ground”, “the elastomer”, and “the condition” lack antecedent basis.
Additionally, claim limitation “an elastomer selecting mechanism” 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 does not disclose the associated structure for “an elastomer selecting mechanism”. 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 2-7, “safety sliding bar” and “a nail gun” are indefinite because it is unclear if “safety sliding bar” and “a nail gun” in claims 2-7 are the same as “safety sliding bar” and “a nail gun” of claim 1. For examination purposes, “safety sliding bar” and “a nail gun” in claims 2-7 are being interpreted to be “the safety sliding bar” and “the nail gun”.
Regarding claim 3, “the surface” and “the work piece” lack antecedent basis.
Regarding claim 5, “the limitation” and “the following” lack antecedent basis.
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 1 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Uchiyama (US 2020/0406438) in view of Wang et al (US 2017/0109465) in view of Hlinka et al (US 2011/0132958).
Regarding claim 1, Uchiyama teaches a nail gun (Fig. 1, item 10) comprising a safety sliding bar (Fig. 1, item 13) having an elastomer (Fig. 1, item 40, 22) (Fig. 13, item 22c) to alleviate the impact received by the safety sliding bar when the nail gun falls to the ground by accident (Para. 0062).
Uchiyama does not expressly disclose an elastomer selecting mechanism comprising: defining a falling height of the nail gun and an allowed contraction amount of the elastomer; obtaining a gravitational potential energy of the nail gun at the falling height based on a weight of the nail gun, and determining an ideal elastic coefficient of the elastomer under the condition of the allowed contraction amount based on the gravitational potential energy, and then selecting an optimal elastomer based on the ideal elastic coefficient; specifically, the elastomer has a maximum elastic coefficient to avoid permanent deformation of the safety sliding bar, the elastomer also has a minimum elastic coefficient to maintain touching and pressing feel of the safety sliding bar, and the ideal elastic coefficient of the optimal elastomer is limited by the maximum elastic coefficient and the minimum elastic coefficient.
However, Wang teaches an elastomer selecting mechanism which uses elastic coefficients and material properties to determine the amount of elastic deformation (Wang, Para. 0011-0020).
Additionally, Hlinka teaches a safety sliding bar of a nail gun being an elastomer (Hlinka, Para. 0030) which alleviates the impact received by the safety sliding bar when then nail gun falls to the ground by accident (Hlinka, Para. 0030).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Uchiyama, Wang, and Hlinka to modify the nail gun of Uchiyama to include selecting an elastomer to prevent damage to the tool. A person of ordinary skill in the art would have been motivated to make such change because selecting the elastomer to minimize the impact received by the tool during an accident would have been obvious to try, as a person with ordinary skill has good reason to pursue the known options within his technical grasp. KSR Int’l Co. V. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007) (KSR). Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was made to select an elastomer with an ideal elastic coefficient within a range of elastomers between a maximum elastic coefficient and a minimum elastic coefficient, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 7, Uchiyama discloses the elastomer selecting mechanism for safety sliding bar of a nail gun defined in Claim 1, wherein said nail gun is an electric nail gun (Para. 0038).
Claims 2-6 are rejected under 35 U.S.C. 103 as being unpatentable over Uchiyama (US 2020/0406438) in view of Wang et al (US 2017/0109465) in view of Hlinka et al (US 2011/0132958) in view of Pressbooks (https://pressbooks.bccampus.ca/collegephysics/chapter/conservative-forces-and-potential-energy/).
Regarding claim 2, the modified Uchiyama does not expressly disclose wherein the gravitational potential energy is obtained via Eq. (1): Ep=mgh Eq. (1) specifically, mg is the weight of the nail gun, h is the falling height of the nail gun, Ep is the gravitational potential energy of the nail gun at the falling height.
However, Pressbooks teaches the gravitational potential energy is obtained via Eq. (1): Ep=mgh (Pressbooks, page 7).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Uchiyama, Wang, Hlinka, and Pressbooks to utilize the gravitational potential energy formula, as taught by Pressbooks. A person of ordinary skill in the art would have been motivated to make such change because using the known technique of determining the gravitational potential energy to improve the nail gun of Uchiyama would have been obvious to one of ordinary skill. KSR Int’l Co. V. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007) (KSR).
Regarding claim 3, Uchiyama in view of Wang in view of Hlinka does not expressly disclose the elastomer selecting mechanism for safety sliding bar of a nail gun defined in Claim 2, wherein the maximum elastic coefficient is obtained via Eq. (2), and the minimum elastic coefficient is obtained via Eq. (3): kmax=F1x1 Eq. (2) kmin=F2x2 Eq. (3) specifically, kmax is the maximum elastic coefficient of the elastomer, F1 is the maximum impact received by the safety sliding bar upon permanent deformation, kmin is the minimum elastic coefficient of the elastomer, F2 is the minimum pressing force to maintain the touching and pressing feel of the safety sliding bar, x1 is the allowed contraction amount of the elastomer to bear the impact of safety sliding bar when the nail gun falls, and x2 is the allowed contraction amount of the elastomer when the safety sliding bar presses upon the surface of the work piece.
However, Pressbooks teaches obtaining an elastic coefficient by the equation k=Fx (Pressbooks, page 3).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Uchiyama, Wang, Hlinka, and Pressbooks to utilize the elastic coefficient formula, as taught by Pressbooks. A person of ordinary skill in the art would have been motivated to make such change because using the known technique of determining the elastic coefficient to improve the nail gun of Uchiyama would have been obvious to one of ordinary skill. KSR Int’l Co. V. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007) (KSR).
Regarding claim 4, the modified Uchiyama does not expressly disclose the elastomer selecting mechanism for safety sliding bar of a nail gun defined in Claim 3, wherein kmax=40kgfmm, and kmin=26kgf/mm.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to select an elastomer having an elastic coefficient between the maximum value of kmax=40kgfmm and the minimum value of kmin=26kgf/mm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 5, the modified Uchiyama does not expressly disclose the elastomer selecting mechanism for safety sliding bar of a nail gun defined in Claim 3, wherein the limitation of the ideal elastic coefficient is represented by the following in Eq. (4): kmax>k>kmin Eq. (4) specifically, k is the ideal elastic coefficient of the optimal elastomer.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to select the value of the ideal elastic coefficient between a maximum and minimum value, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6, the modified Uchiyama does not expressly disclose the elastomer selecting mechanism for safety sliding bar of a nail gun defined in Claim 5, wherein kmax=40kgf/mm, and kmin=26kgf/mm.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to select an elastomer having an elastic coefficient between the maximum value of kmax=40kgfmm and the minimum value of kmin=26kgf/mm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
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.
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/VERONICA MARTIN/Primary Examiner, Art Unit 3731