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 .
Status of Claims
This office action is responsive to claims filed on 10/08/2025.
Claims 1-15 are currently pending.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in France on 10/09/2024. It is noted, however, that applicant has not filed a certified copy of the FR2410922 application as required by 37 CFR 1.55. Additionally, a notice was mailed on 10/28/2025 to applicant indicating that electronic retrieval failed.
Claim Objections
Claims 13-15 are objected to because of the following informalities:
Regarding claim 13, line 1, the word “which includes” should be changed to –further including--.
Regarding claim 14, line 1, the word “which includes” should be changed to -- further including --.
Regarding claim 15, line 1, the word “which is a nailer or a stapler” should be changed to – wherein the driving tool is a nailer or a stapler --.
Claim Interpretation – 35 USC §112f
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.
The following elements are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
For convenience, reference to the PG Publication US 20260097478 A1 will be made for support for the following claimed elements interpreted under 35 USC 112(f).
temperature control device – Claim 13; The structure of this element is insufficiently described in the specification, and there is no recited structure for performing the claimed function.
Claim Rejections – 35 USC §112(b)
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 13-14 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 pre-AIA the applicant regards as the invention.
Regarding Claim 13, the limitation “temperature control device” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. As described in the section above, the disclosure is devoid of any structure that performed the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim(s) 1-7, 9-12 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ho (US 20100096429 A1).
Regarding claim 1, Ho discloses an energy storage device holder (30, 40, 80) for a driving tool (20), the energy storage device holder comprising:
an open-ended receptacle (42) configured to hold an energy storage device (80) configured to provide power to the driving tool ([0021]; Figs. 4-5 and 8);
a connector (24, and/or 244) at a closed end of the receptacle (42) and configured to connect with the energy storage device (80; [0025]); and
a gripper (50, 54, 60) engagable with at least part of a lateral side (periphery/curved sidewall) of the energy storage device (80) when connected to the connector (24, and/or 244), the gripper (50, 54, 60) movable from a retracted position to a deployed position to engage the energy storage device ([0022]-[0023] and [0025]).
Ho further discloses:
Regarding claim 2, wherein the gripper (50, 54, 60) is configured to be actuated from the retracted position to the deployed position (engaged position; Fig. 6) by a force applied to push the energy storage device (80) into the energy storage device holder (42) and/or to connect the gripper to the connector ([0025] and Fig. 5-8).
Regarding claim 3, wherein the gripper (50, 54, 60) comprises a stop (middle part 64 of roller 60 and/or the side plate members 54) engagable by the energy storage device (80) when the energy storage device is inserted into the energy storage device holder (42).
Regarding claim 4, wherein the gripper (50, 54, 60) is movably connected to the energy storage device holder (42) by a swivel link (via 62, 546, 542 and/or 56) so that the force applied to push the energy storage device (80) into the energy storage device holder (42) causes the gripper (60) to move to the inside of the receptacle from the retracted position to the deployed position ([0022]-[0023]).
Regarding claim 5, wherein the gripper (50, 54, 60) comprises an elongate member (elongate part of roller, 60) with an engagement surface (recessed middle part of 64) engagable with a lateral side of the energy storage device (80) over most or all of the length of the energy storage device ([0023]; Figs. 5-8).
Regarding claim 6, wherein the engagement surface (recessed middle part of 64) is at least partially cylindrical (matches the curved lateral wall of 80; [0023]).
Regarding claim 7, wherein the gripper (50, 54, 60) comprises a resilient member (spring-supported roller; [0010]) that forms the engagement surface so as to ensure contact over substantially all of the engagement surface (Fig. 5).
Regarding claim 9, wherein the stop (middle part 64 of roller 60 and/or the side plate members 54) comprises a flange (548) with a stop surface substantially perpendicular to the engagement surface (Fig. 4) and that is configured to be engaged by the energy storage device (80 via 54) when the energy storage device is inserted into the holder (Figs. 6 and 8).
Regarding claim 10, wherein the gripper (50, 54, 60) is biased toward the retracted position (via spring 70).
Regarding claim 11, wherein the gripper is biased toward the retracted position by a spring (70).
Regarding claim 12, A driving tool (20) comprising the energy storage device (80) holder of claim 1.
Regarding claim 15, which is a nailer or a stapler (nail gun 20).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ho (US 20100096429 A1).
Regarding claim 8, Ho discloses the energy storage device of claim 7 including the resilient member as explained in claim 7 above but is silent regarding the resilient member comprises a foam material.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the resilient member comprises a foam material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ho (US 20100096429 A1) in view of Granacher (US 20030201297 A1).
Regarding claim 13, Ho discloses the driving tool of claim 12 including the gripper and energy storage device held in a receptacle as explained in claims 1 and12 above but is silent regarding a temperature control device.
Granacher in a related invention teaches a temperature control device (11’, 19 or other means; [0026]) configured to one of heat and cool the energy storage device (31) held in the receptacle (Fig. 1).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Ho the driving tool by having incorporated a temperature control device, as suggested by Granacher, in order to cool the fuel cell ([0026]).
Regarding claim 14, which includes a combustion chamber (17 and [0025] of Ho) fluidly connected to the connector (24, and/or 244 of Ho) on the energy storage device holder (42) and a fuel cartridge (80) with a side wall and an outlet (82 of Ho) fluidly connected to the connector on the receptacle (24, and/or 244 of Ho), wherein the gripper (50, 54, 60) is in the deployed position to engage the fuel cartridge ([0025] and Figs. 6-8).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The art cited is generally related to the field of driving tool having energy storage device holder. Vansteen teaches driving tool (86) for holding a fuel cell (10), having an open ended receptacle (89, 152), a connector (122) and a gripper (144, 146, 150) movable from a retracted position to a deployed position to engage the energy storage device ([0035]-[0039]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS E IGBOKWE whose telephone number is (571)272-1124. The examiner can normally be reached M-F 8 a.m. - 5 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at (571) 270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS E IGBOKWE/Examiner, Art Unit 3731
/ANDREW M TECCO/Primary Examiner, Art Unit 3731
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