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 .
Double Patenting
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 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5 and 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 9 of U.S. Patent No. - US 12427634 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are substantially co-extensive in scope, at least in regard to the novel subject matter, and differ merely in equivalent terminology used as to function. Both claim a piston driver with teeth on one side, projections/protrusions on the opposing side and a lifter engaging the teeth to return the piston to Top Dead Center (TDC) from Bottom Dead Center (BDC) and a latch engaging the projections/protrusions for stopping the piston driver in an accidental downward driving movement and/or stopping a certain position as desired. Therefore, it would have been obvious to one skilled in the art to substitute the terminology recited in the current claims with the equivalent components of the patented claims, since to do so provides nothing new or unexpected. See claim table below-
19/343143 (claims)
US 12427634 B2 (claims)
1-2, 5, 14-17 and 19
1
3-4
2-3
18
9
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the phrase “the plurality of teeth is staggered relative to the plurality of projections along the driving axis” (claim 20) is not found in the specification.
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 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.
(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(s) 1, 14-15, 18, and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wyler et al. (US 20160229043 A1).
Regarding claims 1, 14, and 19, Wyler et al. discloses a gas spring-powered fastener driver (10 [0031], figs. 1-5) comprising: a cylinder (18); a moveable piston (22) positioned within the cylinder; a driver blade (26) attached to the piston and movable therewith between a top-dead-center (TDC) position and a driven or bottom-dead-center (BDC) position ([0032, 0049-0058], figs. 1, 5, and 13-15), the driver blade defining a driving axis (38), the driver blade including a body having a first side and an opposite, second side with the driving axis passing there between (figs. 1, 5, and 13-15),
a plurality of teeth (210) extending from the first side of the body, and a plurality of projections (274) extending from the second side of the body, wherein the body, the plurality of teeth, and the plurality of projections are bisected by a common plane ([0044-0059], figs. 1-16);
a lifter (42) operable to move the driver blade (26) from the BDC position toward the TDC position, the lifter configured to engage with each of the plurality of teeth of the driver blade when moving the driver blade from the BDC position to the TDC position; and a latch assembly (218) movable between a latched state in which the driver blade is held against a biasing force of compressed gas, and a released state in which the driver blade is permitted to be driven by the biasing force toward the BDC position, the latch assembly configured to engage with the plurality of projections wherein each of the plurality of projections has the same shape, ([0008, 0032-0059] figs. 1-16).
Regarding claims 15, 18, and 20, Wyler et al. discloses the latch assembly (218) includes a latch (278) that is configured to engage each of the plurality of projections (“ramps 274 guide the pointed end 278 of the latch 218 toward the closest aperture 212” [0049], figs. 5 and 16) wherein a shape of each of the plurality of teeth is different from a shape of each of the plurality of projections (figs. 5 and 13-16), wherein the plurality of teeth is staggered relative to the plurality of projections along the driving axis (portions of the teeth are not aligned with portions of the projections resulting in some staggering, (figs. 5 and 13-16).
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2 and 5, is/are rejected under 35 U.S.C. 103 as obvious over Wyler et al. (US 20160229043 A1) in view of SATO et al. (US 20170190037 A1).
Regarding claims 2 and 5, Wyler et al. discloses the lifter includes a plurality of drive pins (194), at least one drive pin of the plurality of drive pins including a roller bushing (202) positioned on the at least one drive pin and configured to engage with one of the plurality of teeth of the driver blade when moving the driver blade from the BDC position toward the TDC position ([0043-0044], figs. 5-6 and 13-16), wherein each one of the plurality of teeth includes a contact surface (distal most surface) and (proximal most surface) both engageable with the roller bushing and/or one of the plurality of drive pins, and wherein the proximal contact surface (proximal most surface) of each tooth of the plurality of teeth defines an included angle with the driving axis that is greater than 90 degrees (fig. 5 shows a contact surface on the top of the tooth that forms about 170 degrees from axis 38 in which the upper/proximal contact surface will sometimes contact the bushing).
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438
545
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Wyler et al. fails to disclose the distal most contact surface (surface used for lifting) of each tooth of the plurality of teeth defines an included angle with the driving axis that is greater than 90 degrees.
SATO et al. also further teaches having a driver blade (31) with a plurality of teeth (rack 30) that have a contact/lifting surface of each tooth define an included/oblique angle with the driving axis that is greater than 90 degrees (triangular shape with slope greater than 90, [0059-0097], figs. 2-3 and 5-7) and a lifter (32) operable to move the driver blade (31) from the BDC position toward the TDC position, the lifter having a plurality of drive pins (pinion 32 teeth) configured to engage with one of the teeth (teeth of rack 30) of the driver blade (31) when moving the driver blade from the BDC position toward the TDC position, wherein each one of the plurality of teeth (teeth of rack 30) includes a contact surface engageable with the drive pins (pinion 32 teeth) as the lifter moves the driver blade from the BDC position toward the TDC position, and wherein the contact surface of each tooth defines an included angle with the driving axis that is greater than 90 degrees wherein the contact surface of each tooth is disposed on a side of the tooth facing away from the piston (figs. 2-3, see annotation below of mating teeth or the blade 31 and teeth or rack 30 to lift the driver blade and also see bushing/roller (33) contacting bottom most tooth).
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227
201
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SATO et al. states: “rack 30 can engage with the pinion 32 to receive the driving force for guiding the movement of the blade 31 in the top direction [0061]…pinion 32 has teeth with the same pitch as the rack 30 and can engage with the rack 30…pinion 32 transmits the driving force to the rack 30 through the engagement with the rack 30” [0063]
Given the suggestions and teachings of Wyler et al. to have driver a set of teeth and a set of projections on different sides of the driver, it 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 to modify the a driver blade with having the driver body have a first hardness, wherein at least one of the teeth has a second hardness that is greater than the first hardness for having the desired/need strength of the teeth such as stronger for repeated impact by the blade as taught by Woodfield et al. and to have the blade and teeth with different hardness for having the different portions with different hardness for different strength needs as taught by Neitzell.
Claim(s) 6-7, is/are rejected under 35 U.S.C. 103 as obvious over Wyler et al. (US 20160229043 A1) in view of Allen (US 20140023445 A1) and further in view of Woodfield et al. (US 20060018781 A1).
Regarding claims 6-7, Wyler et al. discloses fails to disclose the driver body has a first hardness, wherein at least one of the teeth has a second hardness that is greater than the first hardness wherein the at least one tooth is hardened by induction hardening to achieve the second hardness.
Allen teaches having a drill bit/drill bit body (94) with a first hardness, wherein at least one of a cutting teeth/edge (106) has a second hardness that is greater than the first hardness wherein the at least one tooth/edge is hardened by induction hardening to achieve the second hardness ([0024-0026], figs. 1-4).
Woodfield et al. teaches having a striking-mechanism body (disk 40, fig. 2) of a striking mechanism of a handheld power tool (aircraft gas turbine) with (teeth, fig. 2), a pulse transmittable (inherent gear component deliver pulse/motion) to a pulse-receiving part (blades/shaft) via the striking mechanism [0002-0003, 0013, 0020, 0041], the striking mechanism body comprising: at least a first part (ID with hub/rim 44) having the impact surface and/or the lateral surface, the first part being made of a first material; and a second part (OD with teeth) being made of a second material; the striking-mechanism body being configured as a one-piece steel body (one piece disk), the first material and the second material being the same and the first material of the first part of the striking-mechanism body having a heat treatment differing from that of the second material of the second part of the striking-mechanism body [0002-0003, 0013, 0020, 0041]. Woodfield et al. states: “the entire disk is made of one material, but the hub and rim are given different heat treatments” [0003].
Given the suggestions and teachings of Wyler et al. to have driver a set of teeth and a set of projections on different sides of the driver, it 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 to modify the a driver blade with having the driver body have a first hardness, wherein at least one of the teeth has a second hardness that is greater than the first hardness for having the desired/need strength of the teeth such as stronger for repeated impact by the blade as taught by Woodfield et al. and to have the blade and teeth with different hardness for having the different portions with different hardness for different strength needs on impact surfaces as taught by Allen.
Allowable Subject Matter
Claims 3-4, 8-13, and 16-17 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 and if a proper Terminal Disclaimer is filed for US 12427634 B2.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Reasons for Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: the prior art of record fails to teach or render obvious a surgical stapling device comprising all the structural and functional limitations and further comprising, amongst other limitations/features, piston driver with teeth on one side, projections/protrusions on the opposing side and a lifter engaging the teeth to return the piston to Top Dead Center (TDC) from Bottom Dead Center (BDC) and a latch engaging the projections/protrusions for stopping the piston driver AND “wherein each one of the plurality of teeth includes a contact surface engageable with the roller bushing and/or one of the plurality of drive pins, and wherein the contact surface of each tooth of the plurality of teeth defines an included angle with the driving axis, wherein the included angle is between 110 degrees and 120 degrees”. Though Wyler et al. (US 20160229043 A1) teaches a piston driver with teeth on one side, projections/protrusions on the opposing side and a lifter engaging the teeth to return the piston to Top Dead Center (TDC) from Bottom Dead Center (BDC) and a latch engaging the projections/protrusions for stopping the piston driver, it would not be obvious to modify the piston driver with having the teeth contact surface to have included angle is between 110 degrees and 120 degrees and one of ordinary skill would recognize that modifying the contact surface to have included angle is between 110 degrees and 120 degrees would result in hindsight and having the guiding angle provides the unexpected result of having a more stabilized piston return and reduced friction by the smother guiding contact surface on the teeth. Having the efficiency and speed of the angled guiding contact surface provides an effective piston return device.
While various features of the claimed subject matter are found individually in the prior art, a skilled artisan would have to include knowledge gleaned only from the applicant's disclosure to combine or modify the teachings of the prior art to produce the claimed subject matter, and thus obviousness would not be proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). There is no teaching, suggestion, or motivation found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art to combine or modify the teachings of the prior art to produce the claimed invention, and thus obviousness would not be proper. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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
Additional prior art considered pertinent: US 10632600 B2 - driver with teeth and projections/protrusions on the sides, lifter engaging the teeth to return the piston to Top Dead Center (TDC) and a latch engaging the projections/protrusions for stopping the driver and see form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST).
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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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/ROBERT F LONG/Primary Examiner, Art Unit 3731
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