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 1-2, 4, and 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 method 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” and “mathematical concepts” grouping. Additionally, claims 2, 4, and 7 cover mathematical concepts, which are abstract ideas. Therefore, claims 2, 4, and 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, 4, and 7 do not include any additional elements other than the judicial exception of the abstract idea. These claims are not patent eligible.
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 1-2, 4, and 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, “the distance between the front distal end and the shooting nozzle is contracted to a second value when the safety sliding bar is subject to the F1/F2, and the x1/x2 is calculated by subtracting the second value from the first value” fails to comply with the written description requirement because the disclosure does not support this limitation. The specification and drawings do not disclose “the distance between the front distal end and the shooting nozzle is contracted to a second value when the safety sliding bar is subject to the F1/F2, and the x1/x2 is calculated by subtracting the second value from the first value”.
Regarding claims 2, 4, and 7, claims 2, 4, and 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 1-2, 4, and 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”, “the condition”, “the maximum impact”, “the minimum pressing force”, “the allowed contraction amount”, “the F1/F2”, and “the x1/x2” lack antecedent basis.
Regarding claims 2, 4, and 7, claims 2, 4, and 7 are rejected because they depend from rejected claim 1.
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, 2, 4, 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) in view of Pressbooks (https://pressbooks.bccampus.ca/collegephysics/chapter/conservative-forces-and-potential-energy/).
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); a distance between a front distal end of the safety sliding bar (Fig. 1, item 13) and a shooting nozzle (Fig. 1, item 40) of the nail gun (Para. 0048-0055, there is a distance between safety sliding bar 13 and shooting nozzle 40) is a first value when a distal end of the safety sliding bar contacts the elastomer (Para. 0048-0055), the distance between the front distal end and the shooting nozzle is contracted to a second value (Para. 0048-0055, distance between safety sliding bar 13 and shooting nozzle 40 changes and lessens when nozzle 40 is pressed against workpiece) when the safety sliding bar is subject to the F1/F2 (Para. 0048-0055).
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 method 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.
Uchiyama in view of Wang in view of Hlinka does not expressly disclose the elastomer selecting method 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 a 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).
The modified Uchiyama does not expressly disclose the elastomer selecting method for safety sliding bar of a nail gun wherein the x1/x2 is calculated by subtracting the second value from the first value; wherein the limitation of the ideal elastic coefficient is represented by the following in Eq. (3): kmax>k>kmin Eq. (3) 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 contraction amount and 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 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 4, the modified Uchiyama does not expressly disclose the elastomer selecting method for safety sliding bar of a nail gun defined in Claim 1, 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 7, Uchiyama discloses the elastomer selecting method for safety sliding bar of a nail gun defined in Claim 1, wherein said nail gun is an electric nail gun (Para. 0038).
Response to Arguments
Applicant's arguments filed 04/08/2026 have been fully considered but they are not persuasive for the following reasons:
Regarding Applicant’s argument that the 35 USC 101 rejection is overcome due to Applicant’s amendments, Examiner disagrees. Applicant has not incorporated additional elements that amount to significantly more than the judicial exception. Therefore the rejection is maintained.
In response to applicant's argument that the prior art does not teach the technical feature of the present application, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). See above 35 USC 103 rejection of claims 1-2, 4, and 7. 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.
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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.
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/VERONICA MARTIN/Primary Examiner, Art Unit 3731
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