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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the reference application contains all of the limitations of claim 1 of the present application.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of the reference application contains all of the limitations of claim 2 of the present application.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of the reference application contains all of the limitations of claim 3 of the present application.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of the reference application contains all of the limitations of claim 4 of the present application.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of the reference application contains all of the limitations of claim 5 of the present application.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of the reference application contains all of the limitations of claim 6 of the present application.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of the reference application contains all of the limitations of claim 7 of the present application.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of the reference application contains all of the limitations of claim 8 of the present application.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of the reference application contains all of the limitations of claim 9 of the present application.
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of the reference application contains all of the limitations of claim 10 of the present application.
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of the reference application contains all of the limitations of claim 11 of the present application.
Claim 12 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 18/799,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of the reference application contains all of the limitations of claim 12 of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-12 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 sheath” and “the distal end distance” lack antecedent basis. Additionally, “at its second end” is indefinite because it is unclear what “its” refers to. For examination purposes, “at its second end” is being interpreted to mean “at the second end of the cylindrical tip sheath”.
Regarding claim 2, “the distal end distance” lacks antecedent basis.
Regarding claim 3, “the distal end distance” lacks antecedent basis.
Regarding claim 4, “the distal end distance” and “the tip sheath” lack antecedent basis.
Regarding claim 5, “the tip sheath” lacks antecedent basis.
Regarding claim 6, “the tip sheath” lacks antecedent basis.
Regarding claim 7, “the tip sheath” lacks antecedent basis.
Regarding claim 8, “the flat surface is knurled or textured” is indefinite because it is unclear how the surface can be a flat surface while also being knurled or textured.
Regarding claim 9, “the tip sheath”, “the distal end distance”, “the thickness”, and “the foam” lack antecedent basis. Additionally, “at its second end” is indefinite because it is unclear what “its” refers to. For examination purposes, “at its second end” is being interpreted to mean “at the second end of the cylindrical tip sheath”.
Regarding claim 10, “the nailgun” lacks antecedent basis.
Regarding claim 11, “the nailgun” lacks antecedent basis.
Regarding claim 12, “the nailgun” and “the tip sheath” 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 1-8 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).
Regarding claim 1, Liu discloses a nail gun (Fig. 2) for installing panels with foam or other attachable materials, comprising:
a nailgun 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);
an adjustable tip (Fig. 2, item 4, 23) located on the front end of the nailgun body (Fig. 2), the adjustable tip comprising a cylindrical 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 tip sheath is attached at its second end to the nailgun body (Para. 0023-0029); and
an insertion driver (Fig. 2, item 3, 31) (Para. 0023-0029) with a distal end (Fig. 2) and a proximate end (Fig. 2) (Para. 0023-0029), the insertion driver extending through the channel (Para. 0023-0029) or hole of the tip sheath (Para. 0023-0029), wherein the distal end extends a distance beyond (Fig. 2-3, insertion driver 31 extends beyond end of sheath 23) (Para. 0023-0029) or even with the first end of the tip sheath;
wherein the distal end distance is adjustable (Para. 0030-0035).
Liu does not expressly disclose the nail gun body has a handle, a trigger, and a magazine for holding nails or other fasteners.
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), and a magazine (Peng, Fig. 1, item 16) for holding nails or other fasteners (Peng, Para. 0037).
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 at least a portion 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 at least a portion of 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 a flat surface (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.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Martens (US 2015/0013163) in view of Liu et al (US 2018/0326567), hereinafter Liu, in view of Peng et al (US 2020/0398414).
Regarding claim 9, Martens discloses a system (Fig. 5) for fastening a sheathing panel with a foam layer, comprising:
a sheathing panel (Fig. 5, item 110, 108, 106, 113, 112, 114) with a first face and a second face (Fig. 5), wherein the first face is covered by a foam layer (Para. 0038) of a first thickness (Para. 0038-0040);
a pneumatic nailgun (Fig. 5, item 500) comprising
a nailgun body (Fig. 5, item 500) with a front end (Fig. 5, item 422) from which a nail or other fastener is ejected the trigger is pulled (Para. 0051); the nail gun having a tip sheath (Fig. 4, item 410, 420, 440);
when the nailgun is operated to drive a nail into the sheathing panel (Para. 0038-0040), the insertion driver extends through the foam layer (Para. 0038-0040) such that the distal end is in contact with the sheathing panel (Para. 0038-0040).
Martens does not expressly disclose the pneumatic nail gun comprising an adjustable tip located on the front end of the nailgun body, the adjustable tip comprising a cylindrical tip sheath with a first end, a second end, and an interior with a channel or hole extending from the second end to the first end, wherein the tip sheath is attached at its second end to the nailgun body; and an insertion driver with a distal end and a proximate end, the insertion driver extending through the channel or hole of the tip sheath, wherein the distal end extends a distance beyond or even with the first end of the tip sheath; wherein the distal end distance is adjustable to match the thickness of the foam.
Liu discloses a nail gun (Fig. 2) for installing panels with foam or other attachable materials, comprising:
a nailgun 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);
an adjustable tip (Fig. 2, item 4, 23) located on the front end of the nailgun body (Fig. 2), the adjustable tip comprising a cylindrical 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 tip sheath is attached at its second end to the nailgun body (Para. 0023-0029); and
an insertion driver (Fig. 2, item 3, 31) (Para. 0023-0029) with a distal end (Fig. 2) and a proximate end (Fig. 2) (Para. 0023-0029), the insertion driver extending through the channel (Para. 0023-0029) or hole of the tip sheath (Para. 0023-0029), wherein the distal end extends a distance beyond (Fig. 2-3, insertion driver 31 extends beyond end of sheath 23) (Para. 0023-0029) or even with the first end of the tip sheath;
wherein the distal end distance is adjustable is adjustable to match the thickness of the foam (Para. 0030-0035, distal end distance is adjustable and is capable of matching thickness of foam).
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 Martens and Liu to modify the system of Martens to include the adjustable tip of Liu. A person of ordinary skill in the art would have been motivated to make such change in order to provide a adjustable tip of a tool which is convenient, easy to use, and does not get in the way of the tool body (Liu, Para. 0004-0006).
Liu does not expressly disclose the nail gun body has a handle, a trigger, and a magazine for holding nails or other fasteners.
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), and a magazine (Peng, Fig. 1, item 16) for holding nails or other fasteners (Peng, Para. 0037).
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 10, Martens teaches the system of claim 9, wherein when the nailgun is operated to drive a nail into the sheathing panel, the foam layer is substantially undamaged (Para. 0038-0040, foam layer is substantially undamaged).
Regarding claim 11, Martens teaches the system of claim 9, wherein when the nailgun is operated to drive a nail into the sheathing panel, a portion of the foam layer remains above the nail after being driven into the sheathing panel (Para. 0038-0040) (Fig. 5, portion of foam layer 110 remains above the fastener).
Regarding claim 12, Martens teaches the system of claim 9, when the nailgun is operated to drive a nail into the sheathing panel, the first end of the tip sheath is in contact with the foam layer (Para. 0038-0040) (Fig. 5, tip sheath 410, 420, 440 contacts foam layer 110).
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.
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