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 Status
This Office action is in response to the amendments filed 4/29/2026. Claims 21, 23-34, 36-41 are currently pending. Claims 21, 23, 26-27, 29-33, and 38-39 have been amended. The cancelation of claims 22 and 35 is acknowledged. Claims 1-20 have been previously canceled. Claims 40 and 41 are newly added.
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:
the “ejection unit” of claim 21 corresponding to element 32;
the “striking unit” of claim 21 corresponding to the assembly of elements 29 and 30;
the “biasing unit” of claim 21 corresponding to element 27;
the “conversion mechanism” of claim 21 corresponding to element 17;
the “feeder unit” of claim 21 corresponding to element 62;
the “cover unit” of claim 23 corresponding to element 55;
the “battery attachment unit” of claim 21 corresponding to element 23;
the “housing unit” of claim 36 corresponding to element 22;
similar limitations as above in the rest of the claims.
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 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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the
the “virtual plane” of claim 39; and
the “straight supply path” of claim 40.
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 40 and 41 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 claim(s) contains 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.
Regarding claim 40, the limitation “wherein the magazine has a straight supply path connecting the drum unit and the ejection unit, and wherein, as viewed from the other side in the first direction, a majority of the supply path is located within an area in which the handle is located” comprises new matter not disclosed by applicant in the specification as originally filed. Neither the written description nor the drawings have expressly disclosed a straight supply path. While there must necessarily be a supply path, that path is not known from applicant’s specification. Even if it is assumed to be essentially along the axis of the magazine, it is not disclosed in the written description or clear from the drawings that the majority of this path is located within an area in which the handle is located when viewed from the other side in the first direction. Therefore, it cannot be concluded that the inventors had possession of the claimed invention at the time the application was filed. Claim 41 is rejected based on its dependency from claim 40.
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 39-41 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 39, the limitation “the virtual plane including a striking axis of the striking unit extending in the first direction and extending parallel to the striking axis” is indefinite because it is not clear how a plane can both contain an axis and be parallel to the axis. If the plane includes an axis, then every point on the axis lies in the plane. If the plane is parallel to the axis, then none of the points on the axis lie in the plane. Clearly, it is not possible for a plane to both contain an axis and be parallel to an axis. In order to further prosecution, and consistent with applicant’s remarks dated 4/29/2026, the limitation has been interpreted such that the virtual plane includes the striking axis. Claims 40 and 41 are rejected based on their dependency from claim 39.
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)(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.
Claim 39 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Leathrum (US 2023/0294259 A1).
Regarding claim 39, Leathrum discloses a working machine (10 – Fig. 2) comprising: a magazine (14 – Fig. 2) that includes a drum unit (68 – Fig. 2) having a substantially cylindrical shape (see Fig. 5, 68 is clearly cylindrical) and houses a plurality of fasteners wound in a spiral shape inside the drum unit (para. 0032, lines 1-2); an ejection unit (74 – Fig. 2) to which the fastener is supplied (para. 0032); a striking unit (28 – Fig. 2) that moves toward one side in a first direction (from right to left along 38 – Fig. 2) to strike the fastener supplied to the ejection unit (para. 0031); a biasing unit (the assembly of 18 and 30 – Fig. 2) that biases the striking unit toward the one side in the first direction (para. 0031); a conversion mechanism (42 – Fig. 2) that moves the striking unit toward the other side in the first direction against a biasing force of the biasing unit (para. 0030 and para. 0031, lines 1-7); a motor (46 – Fig. 2) that generates a driving force for driving the conversion mechanism (para. 0031); a handle (24 – Fig. 2) that is gripped by a worker (a worker is fully capable of gripping 24 – Fig. 2), wherein the handle extends in a second direction intersecting the first direction (see Fig. 2, the handle extends vertically), wherein a motor axis (see annotated Fig. 2 below) which is a rotation axis of the motor extends in a direction intersecting the first direction (see annotated Fig. 2 below), wherein the drum unit is arranged at a position overlapping with a motor case (50 – Fig. 2) as viewed in a direction of the motor axis (see annotated Fig. 2 below; note that para. 0037 discloses that the drum unit is positioned behind the motor), and wherein a magazine axis, which is an axis of the drum unit, is inclined to intersect, and not be contained in, a virtual plane, the virtual plane including a striking axis of the striking unit extending in the first direction (see annotated Fig. 5 below; as can be seen, the virtual plane includes the striking axis which is out of the figure at 82 and is intersecting but not containing the magazine axis).
Annotated Fig. 2
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Annotated Fig. 5
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Allowable Subject Matter
Claims 21, 23-34, and 36-38 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 21, the primary reason for the indication of allowable subject matter is the inclusion of a battery attachment that has a center axis parallel to a motor axis. The closest invention, Leathrum (US 2023/0294259 A1) in view of Aizawa (US 2020/0189080 A1) as set forth in the Office action dated 1/2/2026, discloses a battery attachment and a motor axis, but it is clear from Leathrum that the center axis of the battery attachment is not parallel to the motor axis. As is clear from Fig. 2 of Leathrum, the battery axis is angled with respect to the motor axis.
Regarding claim 29, the combination of Leathrum and Aizawa does not disclose that the solenoid is arranged in the air path of the fan. Aizawa teaches a solenoid (117 – Fig. 4 in place of 105 in the embodiment of Fig. 13, para. 0120). However, there is no indication that this is arranged in an air path of a fan.
Regarding claim 38, the combination of Leathrum and Aizawa does not disclose a handle axis that extends towards the rear of the tool and a supply axis that extends toward the front of the tool such that the two extend in different directions. While a reference may exist that discloses a handle extending toward the rear of the tool, it is not clear what rationale may allow the Leathrum to be further modified without relying on applicant’s disclosure and engaging in impermissible hindsight.
Response to Arguments
Applicant's arguments filed 4/29/2026 have been fully considered but they are not persuasive.
Regarding claim 39, applicant argues that Leathrum does not disclose the claimed virtual plane and provides an annotated Figure to support the argument.
However, it is noted that the claims do not require the virtual plane to be in the exact location argued by applicant. As shown above in the rejection of claim 39, the claim language allows the virtual plane to be located at other positions which meet the requirements of the claim. Therefore, applicant’s argument is found to be not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
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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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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
6/3/2026
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