CTNF 18/955,275 CTNF 78132 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Examiner’s Comments This office action is in response to the application filed on 11/21/2024. Claim 1-20 are pending. Information Disclosure Statement The information disclosure statement (IDS) submitted on 1/18/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Specification 07-29 AIA The disclosure is objected to because of the following informalities: The specification needs to updated to include US 12,157,242 Appropriate correction is required. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 07-07-fti The following is a quotation of the appropriate paragraphs of pre-AIA 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 – 07-08-fti 07-08 (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent. 07-09-fti 07-09 (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States. 07-15-fti 6. Claim s 1-8 and 19 are rejected under pre-AIA 35 U.S.C. 102 (a),(b) as being anticipated by Shinma (US5,775,440) . With regard to claim 1, Shinma discloses a hand-held knockout driver (fig.1) comprising: a housing (2) having a handle portion (8); a motor (9) positioned within the housing (2); a pump assembly (3) positioned within the housing, the pump assembly (3) having a piston (14) moving along a first axis; a dump valve (16, 28) positioned within the housing, the dump valve (28) defining a second axis; and a working piston (31) moveable with respect to the housing along a third axis, wherein the first axis, the second axis, and the third axis are substantially parallel. With regard to claim 2, Shinma discloses a hand-held knockout driver (fig.1), wherein the first axis, the second axis, and the third axis are not collinear. With regard to claim 3, Shinma discloses a hand-held knockout driver (fig.1), wherein the first axis and the second axis are laterally spaced from each other. With regard to claim 4, Shinma discloses a hand-held knockout driver (fig.1), wherein the second axis and the third axis are laterally spaced from each other. With regard to claim 5, Shinma discloses a hand-held knockout driver (fig.1), wherein the first axis and the third axis are laterally spaced from each other. With regard to claim 6, Shinma discloses a hand-held knockout driver (fig.1), wherein the first axis, the second axis, and the third axis are laterally spaced relative to one another. With regard to claim 7, Shinma discloses a hand-held knockout driver (fig.1), further comprising a head unit (as seen in fig.1) defining a bore (32) extending therethrough, wherein the working piston (31) moves axially within the bore along the third axis. With regard to claim 8, Shinma discloses a hand-held knockout driver (fig.1), wherein the dump valve (28) includes an activation rod (13) moveable along the second axis. With regard to claim 19, Shinma discloses a hand-held knockout driver (fig.1), wherein the working piston (31) is moveable between a rest position and an actuated position to define a piston throw distance therebetween. Double Patenting 08-33 AIA 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 1-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-20 of U.S. Patent No. 9,199,389. Although the claims at issue are not identical, they are not patentably distinct from each other because a person having ordinary skill in the art would have found the claims of the instant application to have been obvious variations of the claims of the patent. The claims of the patent and the claims of the present application are both directed to a hand-held knockout driver including a housing, a motor, a pump assembly, a dump valve and a working piston. While the claims of the present application and the claims of the patent may have variations and differences in their scope and terminology, the variations and differences would have been obvious to one having ordinary skill in the art. Patented claims 1 and 5-20 disclose all of the structure defined in application claims 1-18 and 20. Therefore, patented claims 1 and 5-20 are in essence a “species” of the generic invention of application claims 1-18 and 20. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claims 1-18 and 20 are anticipated by patented claims 1 and 5-10, application claims 1-18 and 20 are not patentably distinct from patented claims 1 and 5-20 The application claims and patented claims match-up as follows: Application Claims Patent Claims US 9199389 1, 2 1 3 5 4 6 5 7 6 8 7 9 8 10 9 11 10 12 11 13 12 14 13 15 14 16 15, 20 17 16 18 17 19 18 20 Allowable Subject Matter Claims 9-18 and 20 are not rejected under art of record but are objected to as being dependent upon a rejected base claim, but would be allowable with a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d). Conclusion Refer to attachment for notice of references cited and recommended for consideration based on their disclosure of limitations of the claimed invention. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANIEL C. CHUKWURAH whose telephone number is (571)272-4457. The examiner can normally be reached M-F & T-F 7-4:30 IFP. 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 571-260-1926. 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. /NATHANIEL C CHUKWURAH/Primary Examiner, Art Unit 3731 5/7/2026 Application/Control Number: 18/955,275 Page 2 Art Unit: 3731 Application/Control Number: 18/955,275 Page 3 Art Unit: 3731 Application/Control Number: 18/955,275 Page 4 Art Unit: 3731 Application/Control Number: 18/955,275 Page 5 Art Unit: 3731 Application/Control Number: 18/955,275 Page 6 Art Unit: 3731 Application/Control Number: 18/955,275 Page 7 Art Unit: 3731 Application/Control Number: 18/955,275 Page 8 Art Unit: 3731 Application/Control Number: 18/955,275 Page 9 Art Unit: 3731
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