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 .
Status of Claims
This office action is responsive to claims filed on October 27, 2024.
Claims 1-19 are being examined in this office action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on October 11, 2025, October 13, 2025, and October 19, 2025, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
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.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9,827,658 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 9,827,658 B2, contain every element of claims 1-17 of the instant application and as such anticipate claims 1-17 of the instant application.
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 18 and 19 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.
Claim 18 recites the limitation "a magazine" in line 3. There is insufficient antecedent basis for this limitation in the claim. Claim 18 recites “a magazine of a fastening device,” introduced in line 1, thus it is unclear whether “a magazine” recited in claim 3 refers to the same magazine, or a second magazine. Examiner suggests reciting: providing the magazine having a pusher assembly, in line 3.
Claim 19 is rejected as being dependent upon a rejected base claim.
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.
Claims 1-3, 5-8, 10-15, and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arata et al. (US 2009/0200354 A1, herein Arata).
Regarding claim 1, Arata discloses [0060-0063] a magazine (magazine 30, Fig. 7) for a fastening device (fastener driving tool 1, Fig. 1), comprising:
a pusher assembly (pusher holding device 70, Fig. 7) adapted to have an engaged state and a retracted state,
the pusher assembly (70) having a pusher assembly knob (push button 71a and stopper rod 71, Fig. 7) and a pusher (pusher 32 having a feeding claw 32a, Figs. 4 and 7);
the pusher adapted to contact a fastener and to impart a force upon the fastener in a direction (fastener feeding direction P, Fig. 7) toward a nose end of the magazine when the pusher assembly (70) is in the engaged state;
a recess (31b) (Fig. 4) [0038] into which the pusher (32, 32a) is reversibly retracted at least in part when the pusher assembly knob (71a, 71) is moved to reversibly retract the pusher (32, 32a) to achieve the retracted state;
a detent (L-shaped notch-like engaging recess 74, Fig. 7) adapted to reversibly maintain the pusher assembly (70) in the retracted state; and
the pusher assembly knob (71 a, 71) adapted to reversibly latch (via hook portion 71b, Fig. 7) to the detent (74).
Regarding claim 2, Arata discloses wherein the detent (74) has a latch portion (71b) to which the pusher assembly knob (71 a, 71) is reversibly latched when the pusher assembly (70) is in the retracted state.
Regarding claim 3, Arata discloses wherein the detent (74) has a detent base end (as shown in an annotated Fig. 7, below) to which the pusher assembly knob (71a, 71) is reversibly latched when the pusher assembly (70) is in the retracted state.
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Fig. 7, Arata, annotated
Regarding claim 5, Arata discloses wherein the pusher assembly (70) comprises a spring (73) located between the pusher assembly knob (71a, 71) and the pusher (32).
Please note, regarding the recitation, “the spring allowing the pusher assembly knob to be tilted to achieve an unlatched state from a latched state," is a statement of intended use. Accordingly, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claim 10, Arata discloses wherein a guide frame (magazine body, 31) comprises the detent (74).
Regarding claim 11, Arata discloses wherein the detent (74) is located proximate to a pusher assembly (70) guide path (in the direction of feeding direction, P, as shown in Fig. 7).
Regarding claim 12, Arata discloses wherein the pusher assembly (70) is biased by a constant force spring (73, Fig. 7).
Regarding claims 13 and 17, Arata discloses in which the fastening tool (1) is a nailer and the fastener is a nail [0036].
Regarding claim 14, Arata discloses [0060-0063] a fastening device (1), comprising:
a nosepiece adapted to receive a fastener (n) from a magazine (30) (Figs. 1,3);
a power source (i.e. switch lever coupled to a control device for controlling a compressed air as a drive source) [0034-0035] adapted to power a fastener driving mechanism which can drive the fastener into a workpiece when triggered;
a pusher assembly (70) (Fig. 7) adapted to have an engaged state and a retracted state;
the pusher assembly (70) having a pusher assembly knob (71a, 71) and a pusher (32, 32a);
the pusher (32, 32a) adapted to contact a fastener and to impart a force upon the fastener in a direction (P) toward the nosepiece when the pusher assembly (70) is in the engaged state;
a recess (31b) (Fig. 4) [0038] into which the pusher (32, 32a) is reversibly retracted at least in part when the pusher assembly knob (71a, 71) is moved to reversibly retract the pusher (32, 32a) to achieve the retracted state; and
a detent (74) adapted to reversibly maintain the pusher assembly (70) in the retracted state.
Regarding claim 15, Arata discloses wherein the detent (74) has a latch (hook portion 71b, Fig. 7) to which the pusher assembly knob (70) is reversibly latched when the pusher (32, 32a) is in the retracted state.
Regarding claim 18, Arata discloses [0060-0063] a method for loading fasteners into a magazine (magazine 30, Fig. 7) of a fastening device (fastener driving tool 1, Fig. 1), comprising the steps of:
providing the magazine having a pusher assembly (pusher holding device 70, Fig. 7) adapted to have an engaged state and a retracted state, the pusher assembly (70) having a pusher assembly knob (push button 71a and stopper rod 71, Fig. 7) connected to a pusher (pusher 32 having a feeding claw 32a, Figs. 4 and 7), the pusher adapted to contact a fastener and to impart a force upon the fastener in a direction (fastener feeding direction P, Fig. 7) [0036] [0040] toward a nose end of the magazine when the pusher assembly (70) is in the engaged state;
providing a recess (31b) (Fig. 4) [0038] of the magazine into which the pusher (32, 32a) is reversibly retracted at least in part when the pusher assembly knob (71a, 71) is moved to reversibly retract the pusher (32, 32a) to achieve the retracted state;
providing a detent (L-shaped notch-like engaging recess 74, Fig. 7) of the magazine adapted to reversibly maintain the pusher assembly (70) in the retracted state, and the pusher assembly knob is adapted to reversibly latch (via hook portion 71b, Fig. 7) to the detent (74);
reversibly retracting the pusher assembly into the retracted state (see annotated Fig. 7, Arata, above);
maintaining the pusher assembly in the retracted state [0040];
feeding one or more fasteners to the track [0040]; and
engaging the pusher assembly from the retracted state into the engaged state [0040].
Regarding claim 19, Arata discloses in which the step of feeding one or more fasteners into the track, further comprises feeding one or more nails into the track [0036] (“fastener stick N consists of a plurality of parallel fasteners n that are joined in series with each other. For example, the fasteners n may be nails.”)
Alternatively, regarding claim 1, Arata discloses [0057-0059] a magazine (magazine 30, Fig. 6) for a fastening device (fastener driving tool 1, Fig. 1), comprising:
a pusher assembly adapted to have an engaged state and a retracted state,
the pusher assembly having a pusher assembly knob (stopper, 61, Fig. 6) and a pusher (pusher, 32);
the pusher adapted to contact a fastener and to impart a force upon the fastener in a direction (fastener feeding direction P, Fig. 7) toward a nose end of the magazine when the pusher assembly is in the engaged state;
the magazine (30) having a recess (31b) (Fig. 4) [0038] into which the pusher (32) is reversibly retracted at least in part when the pusher assembly knob (61) is moved to reversibly retract the pusher (32) to achieve the retracted state; and
a detent (engaging recess, 63, Fig. 6) adapted to reversibly maintain the pusher assembly in the retracted state; and
the pusher assembly knob (61) adapted to reversibly latch to the detent (63).
Regarding claim 6, Arata discloses (i.e. third embodiment, [0057-0059]) the claimed invention, as stated above.
The third embodiment of Arata further teaches wherein the pusher assembly is free of a compressive spring between the pusher assembly knob (61) (Fig. 6) and a portion of the pusher (32).
Regarding claim 7, Arata discloses (i.e. third embodiment, [0057-0059]) the claimed invention as stated above.
The third embodiment of Arata further teaches wherein the pusher assembly knob (61) can be pivoted to release the pusher assembly knob (61) (Fig. 6) from the detent (63) to achieve an unlatched state from a latched state.
Regarding claim 8, Arata discloses (i.e. third embodiment, [0057-0059]) the claimed invention as stated above.
The third embodiment of Arata further teaches a pivot (support shaft, 62) (Fig. 6) about which a pivot stem (61) can move to release the pusher assembly knob from the detent to achieve an unlatched state from a latched state.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4, 9, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Arata.
Regarding claims 4 and 16, Arata discloses (i.e. fourth embodiment, [0060-0063]) the claimed invention as stated above.
The fourth embodiment of Arata does not expressly disclose wherein said detent (74) has a spring latch.
Arata (i.e. second embodiment; [0054-0056]) teaches a detent (engaging member 51, Fig. 5) having a spring latch (i.e. leaf spring) to which the pusher assembly knob is reversibly latched when the pusher assembly is in the retracted state.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art, at the time applicant's invention was made, to have modified the detent (74, Fig. 7) as taught by Arata (i.e. fourth embodiment), by incorporating the spring loaded detent (51, Fig. 5) as taught by Arata (i.e. second embodiment). Doing so would provide an alternative rapid, manual means to easily remove clogged fasteners within the fastener driving channel [0056].
Regarding claim 9, Arata discloses the claimed invention except for wherein the pusher assembly knob has a knob clearance of 0.05 mm or greater when the pusher assembly is in an engaged state. It would have been an obvious matter of design choice to adjust the pusher assembly knob clearance, 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRAACHI M. PATHAK whose telephone number is (571)272-8005. The examiner can normally be reached Monday & Tuesday 8:30 am-5:30 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Praachi M Pathak/Primary Examiner, Art Unit 3731
November 24, 2025