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 .
Election/Restrictions
Applicant's election with traverse of Species A (Figures 1-14) in the reply filed on 1/27/2026 is acknowledged. The traversal is on the ground(s) that:
“It is respectfully submitted that the subject matter of all species is sufficiently related that a thorough search for the subject matter of any one species would encompass a search for the subject matter of the remaining species. Thus, it is respectfully submitted that the search and examination of the entire application could be made without serious burden. See MPEP §803 in which it is stated that "if the search and examination of all the claims in an application can be made without serious burden, the examiner must examine them on the merits, even though they include claims to independent or distinct inventions" (emphasis added). It is respectfully submitted that this policy should be applied in the present application in order to avoid unnecessary delay and expense to Applicant and duplicative examination by the Patent Office.”
This is not found persuasive because as previously outlined, the different species readily require a different field of search that includes at least employing a different search strategy with different search queries and further the application of prior art would be different between such species. Therefore it can be readily concluded that the different species presents a serious search and examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14, 16, 17, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement.
Claims 1-13, 15, and 18-19 are pending, drawn to the elected species, and therefore, examined below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/19/2024 is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 3, 18 are objected to because of the following informalities:
-Claim 3, line 2, “configured to biasing” should instead be “configured to bias”.
-Claim 18, line 5, “to cool of the controller” should instead be “to cool off the controller”.
-Appropriate correction is required.
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 9, 12, 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.
Regarding Claim 9, the claim recites “the air passage includes a first air passage…and a second air passage”. This limitation renders the claim indefinite as it is unclear as to how a singular “air passage” can include multiple air passages.
Regarding Claims 18 and 19, the claims depend from Claim 9 and further define a “third air passage” and therefore are also rendered indefinite for the reasoning outlined above.
Regarding Claim 12, lines 3-5 recite “a ratio of distance…is more than two”. This limitation renders the claim indefinite as the claimed range of the ratio is open ended with no upper boundary. Therefore, since the range does not have a definite upper boundary, the claim limitation is viewed as indefinite.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, and 10 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Garces (US Patent 11,224,960-cited in IDS).
Regarding Claim 1, Garces discloses a driving tool (10A; Figure 9) comprising:
an electric motor (46; Figure 2);
a driver (26) configured to be moved by the electric motor (46A) in a direction opposite to a driving direction (along axis 38; Col 3, lines 40-43);
a driver guide (nosepiece 50A) configured to guide a movement of the driver (26; Col 3, line 59-67);
a magazine (14A) for housing a plurality of driving members (fasteners 48);
a feed pawl (94A; Figure 11) for loading the plurality of driving members (48) from the magazine (14A) to the driver guide (50A) one by one (Col 5, lines 45-60 and Col 6, lines 39-53);
a power transmission member (sliding body 90A) being interlocking with a movement of the feed pawl (94A; Col 6, lines 30-38); and
a solenoid (200 comprising plunger 216 and electromagnet) configured to move the feed pawl (94A) via the power transmission member (90A; Col 6, lines 30-38), the solenoid (200) being arranged in a main body housing (solenoid housing 208 including bracket 204) outside of the magazine (14A; note the solenoid housing 208 is clearly separate from the magazine 14A as shown in Figure 11 and coupled thereto as outlined in Col 6, lines 8-12; note that without further details as to what “a main body housing” is referring to, any housing can be viewed as “a main body housing” or any particular subassembly).
Regarding Claim 3, Garces discloses a biasing member (220; Figure 11) configured to biasing the feed pawl (94A) toward the driver guide (50), wherein the feed pawl (94A) is movable by the solenoid (200) in a direction opposite to a biasing direction of the biasing member (220) when the solenoid (200) is turned on (Col 6, lines 39-53).
Regarding Claim 10, Garces discloses a piston (22; Figure 1) connected to the driver (26); and
a cylinder (18) configured such that the piston (22) is movable within the cylinder (18),
wherein a pressure of a gas in the cylinder (18) increases by a movement of the driver (26) in the direction opposite to the driving direction (Col 3, lines 44-58).
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.
Claims 1, 3-6, 8-9, 15, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Aizawa (US PGPUB 2023/0025226), in view of Chien (US PGPUB 2019/0022843).
Regarding Claim 1, Aizawa discloses a driving tool (1A; Figure 1) comprising:
an electric motor (17);
a driver (30a) configured to be moved by the electric motor (17; Para. 0044) in a driving direction (Para. 0044);
a driver guide (injection path 14 formed by nosepiece 113) configured to guide a movement of the driver (30a; Para. 0042);
a magazine (20) for housing a plurality of driving members (21);
a feed pawl (feeder 60; see Figures 4A-6B) for loading the plurality of driving members (21) from the magazine (20) to the driver guide (14) one by one (Para. 0053);
a power transmission member (73) being interlocking with a movement of the feed pawl (60; Para. 0055, 0061); and
a solenoid (71, 72) configured to move the feed pawl (60) via the power transmission member (73 via engagement with 74), the solenoid (71, 72) being arranged in a main body housing (housing 10 as shown; note also Figure 7 for reference) outside of the magazine (20 as shown; Paras. 0060-0062).
However, Aizawa does not readily disclose the driver (30a) is configured to be moved by the electric motor (17) in a direction opposite to a driving direction.
Attention can be brought to the teachings of Chien which includes another driving tool (1; Figure 1) which includes an electric motor (drive of flywheel 12) and a driver (14) configured to be moved by the electric motor (of 12; Para. 0044) in a driving direction (Para. 0023) and in a direction opposite to the driving direction (via return wheel unit; Para. 0025).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the tool of Aizawa by replacing the return spring (33) with a return wheel unit such that the motor drives the return of the driver in a direction opposite to the driving direction as taught by Chien. By modifying Aizawa in this manner, the return mechanism of the driver will not apply resistance to the driver during the striking operation and therefore the smoothness and output of the striking can be greatly increased as taught by Chien (Para. 0036).
Regarding Claim 3, Aizawa, as modified, discloses a biasing member (80) configured to biasing the feed pawl (60) toward the driver guide (14), wherein the feed pawl (60) is movable by the solenoid (71, 72) in a direction opposite to a biasing direction of the biasing member (80) when the solenoid is turned on (Para. 0057, 0060-0062).
Regarding Claim 4, Aizawa, as modified, discloses the main body housing (10) includes a motor housing (lower portion of 10) for housing the electric motor (17), and the solenoid (71, 72) is arranged in the motor housing between the electric motor (17) and the magazine (20).
Regarding Claim 5, Aizawa, as modified, discloses a fan (“A fan(s)” attached to rotating body/flywheel 18; Para. 0087) to generate a cooling air flow passing through an air passage in the main body housing (10), wherein the solenoid (71, 72) is arranged in the air passage (as outlined in Para. 0087, the solenoid must be in the air passage to be cooled as disclosed).
Regarding Claim 6, Aizawa, as modified, discloses several features of the claimed invention but does not readily disclose the solenoid (71, 72) is arranged on an upstream side of the air passage with respect to the electric motor (17).
It would have been an obvious matter of design choice to a person of ordinary skill in the art at the time the invention was effectively filed to have arranged the solenoid and fan of Aizawa such that the solenoid is on an upstream side of the passage with respect to the motor because Applicant has not disclosed that such arrangement provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the arrangement of Aizawa because in either instance, the solenoid is cooled as outlined by Aizawa (see Para. 0087).
Therefore, it would have been an obvious matter of design choice to modify Aizawa to obtain the invention as specified in the claim.
Note, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Please note that in the instant application, applicant has not disclosed any criticality the specific arrangement as claimed. See MPEP 2144.04(VI)(C).
Regarding Claim 8, Aizawa, as modified, discloses the main body housing (10) includes an inlet port (bottom of 10 in which 71 extends) arranged either in a first wall for a plunger (71 of 72) of the solenoid (71, 72) passes through (as shown there must be an opening for member 71 to extend through and therefore forming an “inlet port”, such a port is at least implied based on the disclosed structure).
Regarding Claim 9, Aizawa, as modified, discloses the air passage (interior of 10 allowing cooling air of fan to pass) includes a first air passage for the cooling air flow from the inlet port (i.e. of 71) passing through to cool off (i) the solenoid (71, 72) and a second air passage (defined within housing 10) for the cooling air flow from the inlet port (of 71) passing through to cool off inside of the electric motor (17), the first air passage communicating with the second air passage (note that the interior of the housing 10 defines communication of all structures within and any cooling air drawn by the fan/fans outlined in Para. 0087 will readily penetrate the structures within the housing 10 or at the very least the structures proximate to the rotating body/flywheel 18 in which the fan is connected to; considering the fan is connected to the flywheel, which is driven by the motor, the fan will not only cool the solenoid as outlined in Para. 0087 but it will also readily cool the motor 17 and therefore such air passages must exist).
Alternatively assuming arguendo that such air passages cannot be viewed as for the air flow from the inlet port (i.e. at 71), in which the Examiner does not readily concede to, it would have been an obvious matter of design choice to a person of ordinary skill in the art at the time the invention was effectively filed to have arranged the inlet and fan of Aizawa such that the air flow is drawn from the inlet port because Applicant has not disclosed that such arrangement provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the arrangement of Aizawa because in either instance, the solenoid and motor would be cooled.
Therefore, it would have been an obvious matter of design choice to modify Aizawa to obtain the invention as specified in the claim.
Note, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Please note that in the instant application, applicant has not disclosed any criticality the specific arrangement as claimed. See MPEP 2144.04(VI)(C).
Regarding Claim 15, Aizawa, as modified, discloses the fan (Para. 0087) is attached to an output shaft of the electric motor (17; note Para. 0087 outlines “a fan having a plurality of fins may be attached to the rotating body or a rotating shaft of the rotating body”).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Aizawa (US PGPUB 2023/0025226), in view of Chien (US PGPUB 2019/0022843), as applied to Claim 9, and in further view of Oomori (US PGPUB 2011/0180286).
Regarding Claims 18 and 19, Aizawa, as modified, discloses several features of the claimed invention including the housing (10) comprising an adjoining area (12) of a controller (19) for controlling an operation of the driving tool (10; Para. 0052) but does not disclose a second inlet port in the adjoining area and the air passage further including a third air passage for the cooling air flow from the second inlet port to cool of the controller and wherein the third air passage merges into the second air passage.
Attention is brought Oomori which teaches another power tool (1; Figure 8) comprising a housing (6), a cooling fan (18) driven by a motor (3), inlet ports (53) in the housing for drawing air through an air passage and through the motor (3; Para. 0056) in a motor housing portion (6a) and wherein the tool (1) further comprises an adjoining area (6b, 6c) of the housing (6) comprising a controller (9) for controlling an operation of the driving tool (10; Para. 0052), wherein the adjoining area (6b, 6c) comprises a second inlet port (25) in the adjoining area (6b, 6c) and a third air passage (see 30b, 30c) for the cooling air flow from the second inlet port (25) to cool off the controller (9) and wherein the third air passage merges into the second air passage (at 30f; Para. 0086).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have incorporated a further inlet port in the adjoining area of the housing of Aizawa forming a further air passage that cools the controller of the tool and merges with the other air passage as taught by Oomori. By further modifying Aizawa in this manner, several structures of the tool including the motor and controller can be readily cooled by the one fan.
Allowable Subject Matter
Claims 2, 7, 11, and 13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding Claim 2, none of the cited prior art discloses the features of Claim 1 in combination with the features of Claim 2 which include the power transmission member being rotatable around a rotation support and coupled to the feed pawl via a pawl coupling portion and wherein the plunger of the solenoid is connected to the transmission member between the rotation support and the pawl coupling portion. These features in combination with the features of Claim 1 render the claimed invention allowable subject matter.
Regarding Claim 7, none of the cited prior art discloses the features of Claim 5 in combination with the features of Claim 7. Specifically none of the prior art references disclose the main body housing comprising a motor housing including a motor housing compartment and a solenoid housing compartment which communicate via a communication passage as outlined in Claim 7. These features in combination with the features of Claim 5 (which includes Claim 1) render the claimed invention allowable subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. see “Notice of References Cited”.
-Note Odoni (US PGPUB 2007/0108250) specifically discloses an electric drive (31; Figure 1) for feeding fasteners to a drive channel wherein the electric drive (31) is disposed within the main housing of the tool and can be embodied as a solenoid (Para. 0016).
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/JOSHUA G KOTIS/Examiner, Art Unit 3731 2/17/2026