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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/22/2026 has been entered.
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 9-11 and 14 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 9, “wherein the first end of the tip sheath is configured to contact the outer face of the foam layer without penetrating the foam layer during operation of the nail gun” fails to comply with the written description requirement because the specification does not support the limitation. The drawings and specification do not disclose the first end of the tip sheath contacts but does not penetrate the foam layer.
Regarding claims 10-11 and 14, claims 10-11 and 14 are rejected because they depend from rejected claim 9.
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 1-11 and 13-14 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, “the tip” lacks antecedent basis. Additionally, “the distal end of the insertion driver moves from a position within the nail gun body . . . during operation of the nail gun” and “wherein the distal end distance is a fixed distance during operation of the nail gun” is indefinite because it is unclear how the distal end can move from a position within the nail gun body during operation of the nail gun while also the distal end distance being a fixed distance during operation of the nail gun. For examination purposes, claim 1 is being interpreted to mean “the distal end of the insertion driver moves from a position within the nail gun body . . . before operation of the nail gun”.
Regarding claim 3, “the distal end distance is continuously adjustable” is indefinite because it is unclear how the distance can be continuously adjustable when claim 1 recites the distal end distance is fixed during operation of the nail, such that the distance is not continuously adjustable. For examination purposes, “the distal end distance is continuously adjustable” is being interpreted to mean “the distal end distance is continuously adjustable before operation of the nail gun”.
Regarding claims 2, 4-8, and 13, claims 2, 4-8, and 13 are rejected because they depend from rejected claim 1.
Regarding claim 9, “the tip” lacks antecedent basis. Additionally, “the distal end of the insertion driver moves from a position within the nail gun body . . . during operation of the nail gun” and “wherein the distal end distance is a fixed distance during operation of the nail gun” is indefinite because it is unclear how the distal end can move from a position within the nail gun body during operation of the nail gun while also the distal end distance being a fixed distance during operation of the nail gun. For examination purposes, claim 1 is being interpreted to mean “the distal end of the insertion driver moves from a position within the nail gun body . . . before operation of the nail gun”.
Regarding claim 11, “the sheathing panel substrate” lacks antecedent basis.
Regarding claim 10 and 14, claims 10 and 14 are rejected because they depend from rejected claim 9.
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 1-8 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al (US 2018/0326567), hereinafter Liu, in view of Peng et al (US 2020/0398414), hereinafter Peng.
Regarding claim 1, Liu discloses a nail gun (Fig. 2) for installing panels with foam or other attachable materials, comprising:
a nail gun body (Fig. 2, item 2) with a front end (Fig. 2) from which a nail or other fastener (Para. 0022) is ejected the trigger is pulled (Para. 0022);
at least one tip (Fig. 2, item 4, 23) with a front end and a back end, said back end mounted on the front end of the nail gun body (Fig. 2), the tip comprising a tip sheath (Fig. 2, item 4, 23) with a first end (Fig. 2, sheath 23 has a first end), a second end (Fig. 2, sheath 23 has a second end), and an interior (Fig. 2, interior runs along axis X) with a channel or hole extending from the second end to the first end (Fig. 2) (Para. 0023-0029), wherein the second end of the tip sheath is attached to the at least one tip (Para. 0023-0029); and
wherein an insertion driver (Fig. 2, item 3, 31) (Para. 0023-0029) extends from the nail gun body through the channel (Fig. 2) (Para. 0023-0029) or hole in the tip sheath (Fig. 2) (Para. 0023-0029) such that the distal end of the insertion driver moved from a position within the nail gun body (Para. 0023-0029, Fig. 8-9, insertion driver moves from within body to extend further from the body when the insertion driver depth is adjusted) and extends a distal end distance (Para. 0023-0029) to a point beyond the first end of the tip sheath (Fig. 2-3, insertion driver 31 extends beyond end of sheath 23) (Para. 0023-0029);
wherein the distal end distance is (Para. 0030-0035) a fixed distance during operation of the nail gun (Para. 0030-0035, distal end distance is fixed during operation because the distal end distance does not move during the process of firing the nail).
Liu does not expressly disclose the nail gun body has a handle, a trigger, a magazine for holding nails or other fasteners, and a driver mechanism, wherein the driver mechanism is configured to drive a nail or other fastener from the magazine through the insertion driver and out the distal end of the insertion driver when the trigger is pulled.
However, Peng teaches a nail gun (Peng, Fig. 1, item 10) comprising a nail gun body (Peng, Fig. 1, item 10, 12, 22, 28, 16) having a handle (Peng, Fig. 1, item 22), a trigger (Peng, Fig. 1, item 28), a magazine (Peng, Fig. 1, item 16) for holding nails or other fasteners (Peng, Para. 0037), and a driver mechanism (Peng, Para. 0009), wherein the driver mechanism is configured to drive a nail (Peng, Para. 0009) or other fastener from the magazine through the insertion driver (Peng, Para. 0009) and out the distal end of the insertion driver when the trigger is pulled (Peng, Para. 0009).
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 Liu and Peng to modify the nail gun of Liu to include the handle, trigger, and magazine of Peng. A person of ordinary skill in the art would have been motivated to make such change in order to provide a tool which is capable of driving a fastener to a required depth into materials of different hardnesses (Peng, Para. 0007).
Regarding claim 2, Liu discloses the nail gun of claim 1, wherein the distal end distance is adjustable in fixed increments (Para. 0030-0035).
Regarding claim 3, Liu discloses the nail gun of claim 1, wherein the distal end distance is continuously adjustable within a fixed range (Para. 0030-0035).
Regarding claim 4, Liu discloses the nail gun of claim 1, wherein the distal end distance is adjustable by movement (Para. 0030-0035, operating member 44 is slides to adjust the movement of insertion driver) of the tip sheath with respect to the insertion driver (Para. 0030-0035).
Regarding claim 5, Liu discloses the nail gun of claim 1, wherein the tip sheath sliding (Para. 0023-0029) moves linearly along a guide rail (Fig. 2, item 424) with stop at preset thicknesses (Para. 0023-0029).
Regarding claim 6, Liu discloses the nail gun of claim 1, wherein the tip sheath is removably attached to the nailgun body (Claim 2, positioning assembly is removable).
Regarding claim 7, Liu discloses the nail gun of claim 1, wherein the first end of the tip sheath is planar (Fig. 2, first end of tip sheath 23 is flat).
Regarding claim 8, Liu in view of Peng does not expressly disclose the nail gun of claim 7, wherein the flat surface is knurled or textured.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to form the material of the tip sheath with knurled or textured material, 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.
Regarding claim 13, Liu discloses the nail gun of claim 1 wherein the tip sheath is cylindrical (Fig. 2, item 4, 23).
Response to Arguments
Applicant’s arguments, see pages 13-14, filed 04/22/2026, with respect to the 35 USC 103 rejection of claims 9-11 and 14 have been fully considered and are persuasive, as Applicant has amended the claims to overcome the rejection. The 35 USC 103 rejection of claims 9-11 and 14 has been withdrawn.
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive for the following reasons:
Regarding Applicant’s argument that Liu does not teach an insertion driver (see pages 11-12 of Applicant’s argument), Examiner disagrees. Applicant asserts that because the item 3, 31 identified as an insertion driver is called a safety unit in Liu, the item 3, 31 cannot be an insertion driver. However, under broadest reasonable interpretation, the item 3, 31 of Liu can be inserted into the nose of the nail gun and is used to drive the nails into the workpiece. Thus, the item 3, 31 can be reasonably interpreted to be “an insertion driver”. Examiner recommends incorporating further description in the claim to define the insertion driver. Therefore, the rejection is maintained.
Prior Art Rejection
Claims 9-11 and 14 are currently free from prior art, however, a subsequent prior art rejection may be made in view of Applicant’s amendments submitted to overcome the above 35 USC 112(a) and 112(b) rejections.
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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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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