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 in response to claims filed on November 20, 2024.
Claims 1-20 are being examined in this office action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on November 22, 2024, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “pusher mechanism” in Claims 1, 7, and 15.
**Examiner notes that the limitation “dry-fire lockout mechanism” recited in claims 1, 7, 15, and 17 is not being interpreted under 35 U.S.C. 112(f) due to the recitation: a dry-fire lockout mechanism including a lockout lever (Claims 1, 7, 15); and further including a spring (Claim 17).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification (58, Fig. 2) [0019] as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-20 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 claims contain 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. The “pusher mechanism” recited in claims 1, 7, and 15, is disclosed briefly in Applicant’s Specification [0019] with reference to element 58 in Fig. 2, however no further structure is provided.
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 1-20 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 limitation “pusher mechanism” recited in Claims 1, 7, and 15 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim. Pusher mechanisms are deemed to be exemplary of the common state of the art whereby a pusher mechanism is most commonly used to apply a force onto an object in order to displace said object in a desired direction. However, the “pusher mechanism” is disclosed briefly in Applicant’s Specification [0019] with reference to element 58 in Fig. 2, however no further structure is provided. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-6, 8-14, and 16-20 are rejected as being dependent upon a rejected base claim.
Allowable Subject Matter
Claims 1, 7, and 15 would be allowable if rewritten or amended 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.
Claims 2-6, 8-14, and 16-20 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.
The following is a statement of reasons for the indication of allowable subject matter: The subject matter of each of the independent apparatus claims 1, 7, and 15 sets forth a combination of limitations that would have been non-obvious to a person having ordinary skill in the art. For instance, the claims in this application are indicated allowable because the prior art of record in this application fails to disclose either singly or in combination the following limitations:
- (Claim 1) wherein a first spring is configured to bias the lockout lever toward the blocking position; a last fastener holding member configured to maintain the lockout lever in the bypass position against a bias of the first spring; and a second spring configured to bias the last fastener holding member toward the fastener driver channel; wherein the last fastener holding member is configured to engage a fastener within the fastener driver channel, wherein the lockout lever is configured to simultaneously engage the same fastener within the fastener driver channel, and wherein each of the first spring and the second spring is configured to impart a force on the fastener within the fastener driver channel.
- (Claim 7) a dry-fire lockout mechanism including a lockout lever having a finger extending through an aperture into the fastener driver channel, wherein the lockout lever is movable between a bypass position, in which movement of the workpiece contact element from the extended position to the retracted position is not inhibited, and a blocking position, in which movement of the workpiece contact element from the extended position to the retracted position is inhibited; and a last fastener holding member, wherein the last fastener holding member is configured to engage a fastener within the fastener driver channel, wherein the lockout lever is configured to simultaneously engage the same fastener within the fastener driver channel, and wherein when the lockout lever is in the blocking position, the finger is configured to protrude into a path of travel of the workpiece contact element.
- (Claim 15) a dry-fire lockout mechanism including a lockout lever movable between a bypass position, in which movement of the workpiece contact element from the extended position to the retracted position is not inhibited, and a blocking position, in which movement of the workpiece contact element from the extended position to the retracted position is inhibited; and a last fastener holding member, wherein the last fastener holding member is configured to engage a first side of a fastener within the fastener driver channel, wherein the lockout lever is configured to engage an opposite, second side of the fastener within the fastener driver channel, wherein the lockout lever is maintained in the bypass position by the last fastener holding member via the fastener in the fastener driver channel, and wherein the lockout lever is movable toward the blocking position when there are no fasteners within the fastener driver channel.
Of the prior art, LEE et al. (US 2012/0085806) is deemed to be the most relevant. While LEE discloses [0041]-[0046] a dry fire lockout assembly for a fastener driving device including a bypass feature, it does not disclose a last fastener holding member configured to maintain the lockout lever in the bypass position against the bias of the first spring, and a second spring configured to bias the last fastener holding member toward the fastener driver channel; wherein each of the first spring and the second spring is configured to impart a force on the fastener within the fastener driver channel.
This is deemed to be exemplary of the common state of the art whereby a dry-fire lockout mechanism having a lockout lever is moveable between a bypass position and a blocking position (LEE et al., [0051] [0052]). This is generally done so as to increase safety and prevent damage of the nail-driving device. Given that there is no prior art teaching for employing a last fastener holding member configured to maintain the lockout lever in the bypass position against the bias of the first spring, and a second spring configured to bias the last fastener holding member toward the fastener driver channel, the instant invention is deemed to be allowable.
The combination set forth in the claims are not discussed, taught or suggested in the prior art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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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/Praachi M Pathak/Primary Examiner, Art Unit 3731
January 13, 2026