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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 40 of prior U.S. Patent No. 12,502,755. This is a statutory double patenting rejection.
Claim 1 of Application 19/430,568
Claim 40 of US 12,502,755
1. A powered fastener driver comprising:
a housing;
an inner cylinder within the housing;
a piston movable within the inner cylinder from a top-dead-center (TDC) position to a driven or bottom-dead-center (BDC) position, and a stroke length of the piston between the TDC position and the BDC position measuring greater than 60 mm and less than 90 mm;
a driver blade attached to the piston for movement therewith along a driving axis from the TDC position toward the BDC position for driving a fastener into a workpiece, the driver blade including, a first end, a second end, and a plurality of drive teeth extending from one side between the first end and the second end;
a lifter operable to move the piston and driver blade from the BDC position toward the TDC position, wherein the lifter includes a body and a plurality of drive pins supported upon the body, wherein each of the drive pins is configured to engage one of the drive teeth,; and
a drive unit operably coupled to the lifter to provide torque thereto, causing the lifter to rotate;
the piston having a diameter of less than 45 mm, and wherein the drive pins are positioned on the body along an imaginary circle coaxial with a rotational axis of the lifter and having a diameter of less than 40 mm
39. A powered fastener driver comprising:
a housing;
an inner cylinder within the housing;
a piston movable within the inner cylinder from a top-dead-center (TDC) position to a driven or bottom-dead-center (BDC) position, the piston having a stroke length of the piston between the TDC position and the BDC position measuring greater than 60 mm and less than 90 mm;
a driver blade attached to the piston for movement therewith along a driving axis from the TDC position toward the BDC position for driving a fastener into a workpiece, the driver blade including, a first end, a second end, and a plurality of drive teeth extending from one side between the first end and the second end, the first end being cylindrical and defining a striker face that is configured to strike and drive a fastener;
a lifter operable to move the piston and driver blade from the BDC position toward the TDC position, wherein the lifter includes a body and a plurality of drive pins
supported upon the body, wherein each of the plurality of drive pins is configured to engage one of the plurality of drive teeth; and
a drive unit operably coupled to the lifter to provide torque thereto, causing the lifter to rotate.
40. The powered fastener driver of claim 39, wherein the piston has a diameter of less than 45 mm, and wherein the plurality of drive pins are positioned on the body along an imaginary circle coaxial with a rotational axis of the lifter and having a diameter of less than 40 mm.
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 3-6 and 16-20 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 3, the limitation “the second end of the outer storage chamber cylinder is non-concentric with the first end of the outer storage chamber cylinder” lacks written description because the specification and drawings do not support the limitation. The disclosure describes the outer storage chamber is non-concentric with the inner cylinder (see for example Para. 0046 of Applicant’s specification), but the disclosure and drawings do not describe the second end of the outer storage chamber being non-concentric with the first end of the outer storage chamber.
Regarding claims 4-6, claims 4-6 are rejected because they depend from rejected claim 3.
Regarding claim 16, the limitation “the second end of the outer storage chamber cylinder is non-concentric with the first end of the outer storage chamber cylinder” lacks written description because the specification and drawings do not support the limitation. The disclosure describes the outer storage chamber is non-concentric with the inner cylinder (see for example Para. 0046 of Applicant’s specification), but the disclosure and drawings do not describe the second end of the outer storage chamber being non-concentric with the first end of the outer storage chamber.
Regarding claims 17-20, claims 17-20 are rejected because they depend from rejected claim 16.
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 1-20 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 1, “the drive pins” and “the drive teeth” lack antecedent basis. Additionally, “the piston having a diameter of less than 45 mm” and “the drive pins . . . having a diameter of less than 40 mm” are indefinite because the limitations do not clearly set forth the metes and bounds of the patent protection desired. It is unclear what a reasonable lower limit for the diameters of the piston and drive pins would be and it is unclear at what diameter would the tool no longer function. Appropriate correction is required in order to define the limitation as required under 35 USC 112(b).
Regarding claim 2, “greater than 200 lbf” is indefinite because the limitation does not clearly set forth the metes and bounds of the patent protection desired. It is unclear what a reasonable upper limit for the force of the pressurized gas would be and it is unclear at what pressure would the tool no longer function. Appropriate correction is required in order to define the limitation as required under 35 USC 112(b).
Regarding claim 7, “at a frequency of at least 2.5 Hertz” is indefinite because the limitation does not clearly set forth the metes and bounds of the patent protection desired. It is unclear what a reasonable upper limit for the frequency of reciprocation of the driver blade would be and it is unclear at what higher frequency would the tool no longer function. Appropriate correction is required in order to define the limitation as required under 35 USC 112(b).
Regarding claim 8, “at a frequency of at least 2.5 Hertz” is indefinite because the limitation does not clearly set forth the metes and bounds of the patent protection desired. It is unclear what a reasonable upper limit for the frequency of reciprocation of the driver blade would be and it is unclear at what higher frequency would the tool no longer function. Appropriate correction is required in order to define the limitation as required under 35 USC 112(b). Additionally, “wherein the stroke length . . . is 65 mm or greater” is indefinite because this limitation is broader than the range provided in claim 21 so it is unclear how the stroke length could be between 60 mm and 90 mm as required by claim 21 but also greater than 65 mm as required by claim 28. For examination purposes, this limitation is being interpreted to mean “wherein the stroke length . . . is between 65 mm and 90 mm”.
Regarding claim 9, “remain continuously activated for over 100 seconds while reciprocating the driver blade at a frequency of at least 2 Hz” is indefinite because the limitation does not clearly set forth the metes and bounds of the patent protection desired. It is unclear what a reasonable upper limit for the time limitation and for the frequency of reciprocation of the driver blade would be and it is unclear at what higher frequency and time limit would the tool no longer function. Appropriate correction is required in order to define the limitation as required under 35 USC 112(b).
Regarding claims 3-6 and 10-11, claims 3-6 and 10-11 are rejected because they depend from rejected claim 1.
Regarding claim 12, “the drive pins” and “the drive teeth” lack antecedent basis. Additionally, “the piston having a diameter of less than 45 mm” is indefinite because the limitation does not clearly set forth the metes and bounds of the patent protection desired. It is unclear what a reasonable lower limit for the diameter of the piston would be and it is unclear at what diameter would the tool no longer function. Appropriate correction is required in order to define the limitation as required under 35 USC 112(b).
Regarding claim 15, “greater than 200 lbf” is indefinite because the limitation does not clearly set forth the metes and bounds of the patent protection desired. It is unclear what a reasonable upper limit for the force of the pressurized gas would be and it is unclear at what pressure would the tool no longer function. Appropriate correction is required in order to define the limitation as required under 35 USC 112(b).
Regarding claims 13-14, claims 13-14 are rejected because they depend from rejected claim 12.
Regarding claim 16, “the drive pins” and “the drive teeth” lack antecedent basis. Additionally, “the piston having a diameter of less than 45 mm” is indefinite because the limitation does not clearly set forth the metes and bounds of the patent protection desired. It is unclear what a reasonable lower limit for the diameter of the piston would be and it is unclear at what diameter would the tool no longer function. Appropriate correction is required in order to define the limitation as required under 35 USC 112(b).
Regarding claim 18, “greater than 200 lbf” is indefinite because the limitation does not clearly set forth the metes and bounds of the patent protection desired. It is unclear what a reasonable upper limit for the force of the pressurized gas would be and it is unclear at what pressure would the tool no longer function. Appropriate correction is required in order to define the limitation as required under 35 USC 112(b).
Regarding claims 17 and 19-20, claims 17 and 19-20 are rejected because they depend from rejected claim 16.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, he prior art of record fails to disclose, teach, or fairly suggest a powered fastener driver comprising: a housing; an inner cylinder within the housing; a piston movable within the inner cylinder from a top-dead-center (TDC) position to a driven or bottom-dead-center (BDC) position, the piston having a diameter of less than 45 mm, and a stroke length of the piston between the TDC position and the BDC position measuring greater than 60 mm and less than 90 mm; a driver blade attached to the piston for movement therewith along a driving axis from the TDC position toward the BDC position for driving a fastener into a workpiece, the driver blade including, a first end, a second end, and a plurality of drive teeth extending from one side between the first end and the second end; a lifter operable to move the piston and driver blade from the BDC position toward the TDC position, wherein the lifter includes a body and a plurality of drive pins supported upon the body, wherein each of the drive pins is configured to engage one of the drive teeth, and wherein the drive pins are positioned on the body along an imaginary circle coaxial with a rotational axis of the lifter and having a diameter of less than 40 mm; and a drive unit operably coupled to the lifter to provide torque thereto, causing the lifter to rotate.
The prior art of record that comes closest to teaching these limitations is Bierdeman et al (US 2020/0114500). Bierdeman teaches a powered fastener driver comprising: a housing; an inner cylinder within the housing; a piston movable within the inner cylinder from a top-dead-center (TDC) position to a driven or bottom-dead-center (BDC) position; a driver blade attached to the piston for movement therewith along a driving axis from the TDC position toward the BDC position for driving a fastener into a workpiece, the driver blade including, a first end, a second end, and a plurality of drive teeth extending from one side between the first end and the second end; a lifter operable to move the piston and driver blade from the BDC position toward the TDC position, wherein the lifter includes a body and a plurality of drive pins supported upon the body, wherein each of the drive pins is configured to engage one of the drive teeth; and a drive unit operably coupled to the lifter to provide torque thereto, causing the lifter to rotate. However, Bierdeman fails to teach the piston having a diameter of less than 45 mm, and a stroke length of the piston between the TDC position and the BDC position measuring greater than 60 mm and less than 90 mm, and wherein the drive pins are positioned on the body along an imaginary circle coaxial with a rotational axis of the lifter and having a diameter of less than 40 mm. Applicant’s specification has provided criticality for the claimed stroke length range of 60 mm to 90 mm in order to decrease the size of the driver blade, which in turn decreases the size of the lifter and the inner cylinder to decrease the overall footprint of the tool (see for example, Para. 0033 of Applicant’s specification). Additionally, it would require an unreasonable combination of references that would not suffice for a realistic case of obviousness.
Regarding claims 2-11, claims 2-11 would be allowable because they contain the allowable subject matter of claim 1.
Regarding claim 12, he prior art of record fails to disclose, teach, or fairly suggest a powered fastener driver comprising: a housing; an inner cylinder within the housing; a piston movable within the inner cylinder from a top-dead-center (TDC) position to a driven or bottom-dead-center (BDC) position, the piston having a circumferential groove, a diameter of less than 45 mm, and a stroke length of the piston between the TDC position and the BDC position measuring greater than 60 mm and less than 90 mm; a seal ring positioned within the circumferential groove and configured to engage an inner surface of the inner cylinder, the seal ring having a thickness of 2 mm to 5.5 mm; a driver blade attached to the piston for movement therewith along a driving axis from the TDC position toward the BDC position for driving a fastener into a workpiece, the driver blade including, a first end, a second end, and a plurality of drive teeth extending from one side between the first end and the second end; a lifter operable to move the piston and driver blade from the BDC position toward the TDC position, wherein the lifter includes a body and a plurality of drive pins supported upon the body, wherein each of the drive pins is configured to engage one of the drive teeth; and a drive unit operably coupled to the lifter to provide torque thereto, causing the lifter to rotate.
The prior art of record that comes closest to teaching these limitations is Bierdeman et al (US 2020/0114500). Bierdeman teaches a powered fastener driver comprising: a housing; an inner cylinder within the housing; a piston movable within the inner cylinder from a top-dead-center (TDC) position to a driven or bottom-dead-center (BDC) position, the piston having a circumferential groove; a driver blade attached to the piston for movement therewith along a driving axis from the TDC position toward the BDC position for driving a fastener into a workpiece, the driver blade including, a first end, a second end, and a plurality of drive teeth extending from one side between the first end and the second end; a lifter operable to move the piston and driver blade from the BDC position toward the TDC position, wherein the lifter includes a body and a plurality of drive pins supported upon the body, wherein each of the drive pins is configured to engage one of the drive teeth; and a drive unit operably coupled to the lifter to provide torque thereto, causing the lifter to rotate. However, Bierdeman fails to teach the piston having a diameter of less than 45 mm and a stroke length of the piston between the TDC position and the BDC position measuring greater than 60 mm and less than 90 mm; a seal ring positioned within the circumferential groove and configured to engage an inner surface of the inner cylinder, the seal ring having a thickness of 2 mm to 5.5 mm. Applicant’s specification has provided criticality for the claimed stroke length range of 60 mm to 90 mm in order to decrease the size of the driver blade, which in turn decreases the size of the lifter and the inner cylinder to decrease the overall footprint of the tool (see for example, Para. 0033 of Applicant’s specification). Applicant’s specification has provided criticality for the claimed thickness of the seal ring being between 2 mm and 5.5 mm in order to reduce permeation that results from the increased internal pressure and to increase the compression of the seal (see for example, Para. 0047 of Applicant’s specification). Additionally, it would require an unreasonable combination of references that would not suffice for a realistic case of obviousness.
Regarding claims 13-15, claims 13-15 would be allowable because they contain the allowable subject matter of claim 12.
Regarding claim 16, he prior art of record fails to disclose, teach, or fairly suggest a powered fastener driver comprising: a housing; an inner cylinder within the housing; an outer storage chamber cylinder positioned within the housing and including pressurized gas in fluid communication with the inner cylinder, wherein the outer storage chamber cylinder includes a first end and a second end opposite the first end, and wherein the second end of the outer storage chamber cylinder is non-concentric with the first end of the outer storage chamber cylinder; a piston movable within the inner cylinder from a top-dead-center (TDC) position to a driven or bottom-dead-center (BDC) position, the piston having a circumferential groove, a diameter of less than 45 mm, and a stroke length of the piston between the TDC position and the BDC position measuring greater than 60 mm and less than 90 mm; a seal ring positioned within the circumferential groove and configured to engage an inner surface of the inner cylinder; a driver blade attached to the piston for movement therewith along a driving axis from the TDC position toward the BDC position for driving a fastener into a workpiece, the driver blade including, a first end, a second end, and a plurality of teeth extending from one side between the first end and the second end; a lifter operable to move the piston and driver blade from the BDC position toward the TDC position, wherein the lifter includes a body and a plurality of drive pins supported upon the body, wherein each of the drive pins is configured to engage one of the drive teeth; and a drive unit operably coupled to the lifter to provide torque thereto, causing the lifter to rotate; wherein the outer storage chamber cylinder defines a volume, wherein a first portion of the volume is defined on a first side of the driving axis and a second portion of the volume is defined on a second side of the driving axis, and wherein the second portion is greater than the first portion, and wherein the housing defines a head portion, a drive unit housing portion, and a handle portion that is spaced apart from the drive unit housing portion, and wherein the second portion of the volume is at least partially positioned between the drive unit housing portion and the handle portion.
The prior art of record that comes closest to teaching these limitations is Bierdeman et al (US 2020/0114500). Bierdeman teaches a powered fastener driver comprising: a housing; an inner cylinder within the housing; an outer storage chamber cylinder positioned within the housing and including pressurized gas in fluid communication with the inner cylinder, wherein the outer storage chamber cylinder includes a first end and a second end opposite the first end, and wherein the second end of the outer storage chamber cylinder is non-concentric with the first end of the outer storage chamber cylinder; a piston movable within the inner cylinder from a top-dead-center (TDC) position to a driven or bottom-dead-center (BDC) position, the piston having a circumferential groove; a driver blade attached to the piston for movement therewith along a driving axis from the TDC position toward the BDC position for driving a fastener into a workpiece, the driver blade including, a first end, a second end, and a plurality of teeth extending from one side between the first end and the second end; a lifter operable to move the piston and driver blade from the BDC position toward the TDC position, wherein the lifter includes a body and a plurality of drive pins supported upon the body, wherein each of the drive pins is configured to engage one of the drive teeth; and a drive unit operably coupled to the lifter to provide torque thereto, causing the lifter to rotate; wherein the outer storage chamber cylinder defines a volume, wherein a first portion of the volume is defined on a first side of the driving axis and a second portion of the volume is defined on a second side of the driving axis, and wherein the housing defines a head portion, a drive unit housing portion, and a handle portion that is spaced apart from the drive unit housing portion, and wherein the second portion of the volume is at least partially positioned between the drive unit housing portion and the handle portion. However, Bierdeman fails to teach the piston having a diameter of less than 45 mm and a stroke length of the piston between the TDC position and the BDC position measuring greater than 60 mm and less than 90 mm; a seal ring positioned within the circumferential groove and configured to engage an inner surface of the inner cylinder; and wherein the second portion of the volume is greater than the first portion of the volume. Applicant’s specification has provided criticality for the claimed stroke length range of 60 mm to 90 mm in order to decrease the size of the driver blade, which in turn decreases the size of the lifter and the inner cylinder to decrease the overall footprint of the tool (see for example, Para. 0033 of Applicant’s specification). Additionally, it would require an unreasonable combination of references that would not suffice for a realistic case of obviousness.
Regarding claims 17-20, claims 17-20 would be allowable because they contain the allowable subject matter of claim 16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VERONICA MARTIN whose telephone number is (571)272-3541. The examiner can normally be reached Monday-Thursday 8:00-6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VERONICA MARTIN/Primary Examiner, Art Unit 3731
Prosecution Insights