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 file of 2/19/2025. Claims 21-39 are currently pending. The cancelation of claims 1-20 in a preliminary amendment is acknowledged. Claims 21-39 are newly added in the preliminary amendment.
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 “winding unit” 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 33 corresponding to element 23;
the “battery attachment unit” of claim 35 corresponding to element 23;
the “housing unit” of claim 36 corresponding to element 22;
the “housing unit” of claim 37 corresponding to element 22;
similar limitations in claims 38 and 39 as above.
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.
Claim Objections
Claim 38 is objected to because of the following informality: line 13 reads “resect” when it should read “respect.” Appropriate correction is required.
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.
Claims 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Leathrum (US 2023/0294259 A1) in view of Aizawa (US 2020/0189080 A1).
Regarding claim 21, 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 would in a spiral shape (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 to 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 one side in the first direction (para. 0031); a winding unit (42 – Fig. 2) that winds up 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 winding unit (para. 0031); a handle (24 – Fig. 2) that is gripped by a worker (a worker is fully capable of gripping 24 – Fig. 2); a motor case (50 – Fig. 2) that houses the motor (para. 0030); a feeder unit (86 – Fig. 4) that feeds the fastener from the magazine to the ejection unit along a supply axis (para. 0032); and a feed unit drive (not expressly disclosed but since the feeder unit 86 comprises a pusher mechanism, para. 0032, there is necessarily a drive such as a spring or other mechanism for the pusher mechanism otherwise the pusher would not be able to push fasteners) that drives the feeder unit (see explanation immediately preceding), wherein a motor axis (see annotated Fig. 2 below) which is a rotation axis of the motor extends in a direction intersecting with the first direction (see annotated Fig. 2 below), wherein the drum unit is arranged at a position overlapping with the motor case 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 the motor case and the feed unit drive overlap as viewed in the first direction (see Fig. 5 which is a view in which 38 is pointing out of the page, the feed unit drive is necessarily within 78 and 78 overlaps 50).
However, Leathrum does not disclose that the feed drive unit is a solenoid arranged on the one side with respect to the motor case.
Aizawa discloses a similar tool comprising a magazine (54 – Fig. 1 as applied to the embodiment of Fig. 13, para. 0094, lines 1-4) in the shape of a drum (understood from para. 0048 and the shape depicted in Fig. 1), and a solenoid (117 – Fig. 4 in place of 105 in the embodiment of Fig. 13, para. 0120) that drives the feeder unit (para. 0120), wherein the solenoid is arranged on a one side in a first direction with respect to a motor case (as seen in Fig. 13, the solenoid, in the same place as 105 for embodiments in which a solenoid is used, para. 0120, is below the motor). One of ordinary skill in the art, would have recognized that since the magazine of Aizawa is similar to the magazine of Leathrum, then the solenoid of Aizawa would be capable of driving the feeder unit in the working machine of Leathrum.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have used the Solenoid of Aizawa to drive the feeder unit of Leathrum since Leathrum is silent with regard as to how the feeder unit is driven and Aizawa teaches a known solution.
Annotated Fig. 2
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Leathrum, as modified by Aizawa, further teaches:
Claim 22, the magazine is arranged on the motor axis (see annotated Fig. 2 above where the drum is clearly overlapping the motor axis; note that this rejection is based on the interpretation in which “arranged on” means overlapping, consistent with applicant’s disclosure).
Claim 23, essentially all of the elements of the claimed invention in claim 21.
However, Leathrum, as modified by Aizawa, does not expressly disclose a cover unit that houses the solenoid since Aizawa discloses the solenoid in schematic form only.
In this case, the examiner takes Official Notice that it is old and well-known in the art to house a solenoid in a cover unit since the cover unit protects the solenoid from dust and other debris.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have housed the solenoid of Leathrum and Aizawa in a cover unit since cover unit are old and well-known and provide the benefit of protecting the solenoid from dust and other debris. Note that this would result in an inside of the cover unit and an inside of the motor case being connected. Since they are members of the same working machine, they would be connected via at least the other members of the working machine.
Claim 24, the drum unit overlaps with the solenoid as viewed in a direction of the supply axis (see Fig. 13, Aizawa, the supply axis runs from left to right with a downward slope, the drum is to the left of the solenoid at the place of 105).
Claim 25, the motor case (50 – Fig. 2, Leathrum) is arranged between the solenoid (117 – Fig. 4 in place of 105 – Fig. 13, para. 0120, Aizawa) and the handle (24 – Fig. 2, Leathrum). When Leathrum is modified to include a solenoid as taught by Aizawa, the solenoid would be in 78 – Fig. 2 of Leathrum. As can be seen in Fig. 2 of Leathrum, 50 is between 78 and 24.
Claim 26, the supply axis (as can be seen in Fig. 13 of Aizawa, the supply axis is inclined downwards from left to right) is inclined with respect to the motor axis as viewed in the first direction (the motor axis runs left to right and the supply axis runs inclined downwards from left to right, furthermore, the supply axis on the left is at the side of the working machine and converges to the working machine at the ejection unit).
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 (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 to 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 one side in the first direction (para. 0031); a winding unit (42 – Fig. 2) that winds up 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 winding unit (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 with the first direction (see annotated Fig. 2 above), 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 a magazine axis which is an axis of the drum unit is inclined with respect to a striking axis of the striking unit extending in the first direction as viewed in the second direction (as can be seen in Fig. 2, the magazine axis runs vertically inclined from right to left and the striking axis runs from right to left, furthermore, as seen in Fig. 5, the magazine axis runs from right of the machine to under the machine and the striking axis runs vertically).
Allowable Subject Matter
Claim 38 is allowed.
Claims 27-37 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.
Conclusion
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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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
12/17/2025