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 .
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 13 and 14 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 13 recites the limitation "the nails" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1-5 and 10-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thompson et al. (US 2021/0108663).
Regarding claim 1, Thompson et al. discloses a strip of fasteners 200 Fig. 2 for loading into a fastening tool, the strip of fasteners comprising a plurality of elongated fasteners 16 arranged in a parallel side-by-side relationship, each of the elongated fasteners having a head 210, the strip being arranged such that the heads of the fasteners are located along one side of the strip, and wherein one of the fasteners has a head with an indicator 230 that is configured to indicate to an operator upon driving of the fastener that the strip is due for replacement.
Regarding claim 2, Thompson et al. discloses wherein the indicator 230 is a visual indicator. Regarding claim 3, Thompson et al. discloses wherein a plurality of fasteners 16 form a subgroup of fasteners of the strip, and wherein each fastener of the subgroup has a head with an indicator 230 configured to indicate to an operator upon driving of the fastener that the strip is due for replacement.
Regarding claim 4, Thompson et al. discloses wherein a plurality of adjacent fasteners 240 form the subgroup.
Regarding claim 5, Thompson et al. discloses wherein the subgroup includes a plurality of fasteners prior to a final fastener of the strip of fasteners 16. Regarding claim 10, Thompson et al. discloses wherein the indicator 230 includes paint on each fastener head of the subgroup.
Regarding claim 11, Thompson et al. discloses wherein the paint 230 is of a distinctive color. Regarding claim 12, Thompson et al. discloses wherein each of the painted heads 230 is painted with a common color.
Regarding claim 13, Thompson et al. discloses which includes a holding mechanism 22 that holds the nails 16 together in the strip of fasteners.
Regarding claim 14, Thompson et al. discloses wherein the holding mechanism 22 includes one or more frangible strips of material adhered along a side of the strip of fasteners 16. Regarding claim 15, Thompson et al. discloses wherein the subgroup include a plurality of fasteners 16 prior to a final fastener of the strip of fasteners, with subsequent fasteners after the subgroup each being without an indicator 230.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 6-9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thompson et al.
Regarding claims 6 and 7, Thompson et al. discloses the invention as claimed above but fails to explicitly disclose the arrangement of the fasteners wherein the subgroup includes a plurality of fasteners beginning at an 8th fastener counting inwardly from an end of the strip of fasteners. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the arrangement of the fasteners to a desired location along the strip based on the user’s preference and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japiske, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claims 8 and 9, Thompson et al. discloses the invention as claimed above but fails to explicitly disclose the functional use of the fasteners wherein the subgroup includes a plurality of fasteners terminating at a final fastener to be fired prior to a safety lockout being applied on a firing mechanism of the fastening tool. Nevertheless, [A]pparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing 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” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Regarding claim 16, Thompson et al. discloses the invention as claimed above but fails to explicitly disclose the manner in which a claimed apparatus is intended to be employed which includes
wherein the subsequent fasteners correspond to a tail end quantity of fasteners of the strip of fasteners that are unable to be fired without insertion of another new strip of fasteners. Nevertheless, [A]pparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing 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” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE G BYRD whose telephone number is (571)270-1824. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at 5712727376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EUGENE G BYRD/Primary Examiner, Art Unit 3675
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