DETAILED ACTION
Notice of Pre-AIA or AIA Status
This office action is responsive to the amendment filed on 07/29/25. As directed by the response: none of the claims were amended, cancelled nor added. Thus, claims 1-12 are presently pending in this application.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-12 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. It is submitted that the originally filed specification of the instant patent application does not provide support for the newly amended limitation(s) of: without modifying thickness of the first part and of the second part around the insert. Furthermore, it is unclear how an operation of stamping may be performed without providing some form of deformation to the claimed first and second part around the insert.
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.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Iwase (US 2018/0272417) in view of Spinella et al. (US 2015/0001189).
With regard to claim 1, Iwase teaches a method for assembling a first part (22) and a second part (25)(FIG. 6A) via an insert (1) comprising a head (upper-most portion of 1 above the body 3) configured to bear on the first part (22) and a body (3) comprising an a distal end portion configured to be welded to the second part (25)(end of body 3 being welded with weld nugget 28 being formed), the method comprising: before fastening of the distal end portion of the body (3) of the insert (1) on the second part (25) by welding (FIG. 6A illustrates a “weld nugget 28”); and welding the distal end portion of the body of the insert (1) to the second part (25) such that the decoupling area (29) limits a heat transmission to the first part during the welding (“a gap 29 is formed between the light alloy material 22 and the second shank portion 6. With this gap 29, the heat during the welding process is less likely to be transmitted from the second shank portion 6, where the weld nugget 28 is formed, to the light alloy material 22 in the vicinity of the shank 3, thereby preventing excessive softening or melting of the light alloy material 22 in the vicinity of the shank 3.”, para. [0058]). Furthermore, Iwase teaches the limitation of without modifying thickness of the first part and of the second part around the insert as FIG. 4A illustrates a position of the rivet 1 immediately prior to its insertion into first part 22. Once punch 23 provides a pressing force to the head of rivet 1, a portion of first part 22 is removed due to lower dies 21 (the removed portion of first part 22 is illustrated in FIG. 4B as scrap 24) and the portion of first part 22 which is immediately adjacent to the upper most surface of lower dies 21 is shaped such that it has a complimentary form to that of the area immediately adjacent to shank 3 and groove 8 as illustrated in FIG. 4B. Notwithstanding the foregoing, assuming it was determined that the thickness of the first or second parts is modified, it is initially submitted that the instant patent application does not indicate any unexpected results by the claimed limitation as the ultimate result of furthering the shaping function is to form the claimed decoupling area to limit heat transmission to the first part, and the Iwase citation explicitly teaches the same advantage (“a gap 29 is formed between the light alloy material 22 and the second shank portion 6. With this gap 29, the heat during the welding process is less likely to be transmitted from the second shank portion 6, where the weld nugget 28 is formed, to the light alloy material 22 in the vicinity of the shank 3, thereby preventing excessive softening or melting of the light alloy material 22 in the vicinity of the shank 3.”, para. [0058]) and as such, a modification to the shape of first or second part during the shaping operation would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the level of heat transmission at a predetermined location based upon the distance between the respective first and second parts.
With regard to the limitation of “electric resistance welding”, it is submitted that the instant patent application at para. [0006] states: “Finally, it is known to make assemblies by a spot welding technique, in particular during a body-in-white construction operation. Spot welding or electric resistance welding is an assembly solution that has the advantage of being both economical and effective from a mechanical perspective.” Accordingly, “electric resistance welding” is also known as “spot welding”. In view of the foregoing, Iwase teaches the welding performed in the illustrated embodiments is “spot welding” (the forged rivet being subsequently spot-welded to a steel material, cl. 1)(emphasis added).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to understand that the term “spot welding” is equivalent to the term “electric resistance welding” in view of the assertion within the instant patent application that it is known in the art that a spot welding technique is known in the art as an “electric resistance welding” at para. [0006].
Iwase does not teach a step of shaping the first or the second part by “stamping”; however, Spinella which is from the same field of endeavor as the instant patent application which is directed to resistance welding a fastener teaches the aforementioned limitation: “a fastener 410 in accordance with another embodiment of the present disclosure. The fastener 410 can be made as a stamping using a stamping tool and back-up die as shown in FIG. 15. … FIG. 15 shows a fastener stamping tool 505 in accordance with an embodiment of the present disclosure. The stamping tool may be used to form fasteners like fastener 410 from stock material 520, e.g., a sheet of steel. The fastener stamping tool 505 has an upset die 522 with a forming surface 522S (shown in dotted lines). A shaping tool 524 (in dotted lines) driven by a punch 526 (shaft shown in dotted lines), which acts in conjunction with the upset die 522 to form a fastener 410 (FIGS. 14A,Bb) from the stock 520. In the embodiment shown, the shaping tool 524 both cuts the fastener 410 from the stock 520 and shapes it as it is driven down through the stock 520 by the punch 526. Alternatively, disk-shaped blanks (not shown) having the dimensions required to form a fastener 410 may be cut from the stock by a separate punch and loaded into a blank holder 530 before the punch 526 is driven down against the upset die 522 to shape the blank into the fastener 410. A spring 532 may be inserted between a retainer cap 534 and the blank holder 530 to return the punch 526 to a neutral position after a fastener 410 has been stamped out by the fastener stamping tool 505….”, para. [0104]-[0105].
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Iwase reference, to include a step of shaping the first or the second part by stamping, as suggested and taught by Spinella, for the purpose of providing a fastener having a predetermined shape for enhanced attachment functionality.
With regard to claim 2, Iwase teaches the decoupling area (29) is an air cavity (“a gap 29 is formed between the light alloy material 22 and the second shank portion 6. With this gap 29, the heat during the welding process is less likely to be transmitted from the second shank portion 6, where the weld nugget 28 is formed, to the light alloy material 22 in the vicinity of the shank 3, thereby preventing excessive softening or melting of the light alloy material 22 in the vicinity of the shank 3.”, para. [0058]; FIG. 6A).
With regard to claim 3, Iwase teaches the decoupling area (29) extends in an annular manner around the body (3) (“a gap 29 is formed between the light alloy material 22 and the second shank portion 6. With this gap 29, the heat during the welding process is less likely to be transmitted from the second shank portion 6, where the weld nugget 28 is formed, to the light alloy material 22 in the vicinity of the shank 3, thereby preventing excessive softening or melting of the light alloy material 22 in the vicinity of the shank 3.”, para. [0058]; FIG. 6A).
With regard to claim 4, Iwase teaches the method comprises a step of integrating the insert (1) into the first part (22)(FIG. 6A illustrates insert 1 situated through the first part 22).
With regard to claim 5, Iwase teaches the step of integrating the insert (1) into the first part (22)(FIG. 6A) and the step of conforming the first part (22) in order to form the decoupling area are concomitant (FIG. 6A illustrates insert 1 situated through the first part 22 with the decoupling area 29 formed between the first part and second part).
With regard to claim 6, Iwase teaches the step of integrating the insert (1) into the first part (22) is prior to the step of conforming the first (22) or the second part (25) in order to form the decoupling area (29)(FIG. 6A).
With regard to claim 7, Iwase teaches the step of integrating the insert (1) into the first part (22) is subsequent to the step of conforming the first (22) or the second part (25) in order to form the decoupling area (29)(FIG. 6A).
With regard to claim 8, Iwase teaches the integration step comprises a step of cutting, through the first part (22), a hole intended for the passage of the body of the insert (1)(FIG. 6A).
With regard to claim 9, Iwase teaches the decoupling area (29) is formed by leaving room for a free space intended to receive the body of the insert (1)(FIG. 6A).
With regard to claim 10, Iwase teaches the decoupling area (29) is formed by deformation of the first (22) or of the second part (25)(FIG. 6A).
With regard to claim 11, Iwase teaches the distal end portion of the body of the insert (1) is fastened to the second part (25) by electric resistance welding (“a gap 29 is formed between the light alloy material 22 and the second shank portion 6. With this gap 29, the heat during the welding process is less likely to be transmitted from the second shank portion 6, where the weld nugget 28 is formed, to the light alloy material 22 in the vicinity of the shank 3, thereby preventing excessive softening or melting of the light alloy material 22 in the vicinity of the shank 3.”, para. [0058]).
With regard to claim 12, with regard to the limitation of the first part is made by injection molding, it is submitted that such a limitation is construed as a product by process limitation, and as such, the first part 22 is taught by the prior art as detailed above (see MPEP 2113: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)(MPEP 2113).
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered and are addressed hereafter.
The following comments are presented in response to the Office Action Response of 07/29/25.
The Examiner maintains their position that the written description of the instant patent application does not state anywhere therein that the thickness is not modified. Furthermore, the previously presented comments (reproduced hereafter) are applicable to the arguments presented by the Applicant in the most recent office action response of 07/29/25.
The following comments were presented by the Examiner previously, and are presented hereafter as they may be relevant to the instant office action. Upon further consideration, it is respectfully submitted that Iwase teaches the limitation of “without modifying thickness of the first part and of the second part around the insert” for the following reasons. FIG. 4A illustrates a position of the rivet 1 immediately prior to its insertion into first part 22. Once punch 23 provides a pressing force to the head of rivet 1, a portion of first part 22 is removed due to lower dies 21 (the removed portion of first part 22 is illustrated in FIG. 4B as scrap 24) and the portion of first part 22 which is immediately adjacent to the upper most surface of lower dies 21 is shaped such that it has a complimentary form to that of the area immediately adjacent to shank 3 and groove 8 as illustrated in FIG. 4B. Notwithstanding the foregoing, assuming it was determined that the thickness of the first or second parts is modified, it is initially submitted that the instant patent application does not indicate any unexpected results by the claimed limitation as the ultimate result of furthering the shaping function is to form the claimed decoupling area to limit heat transmission to the first part, and the Iwase citation explicitly teaches the same advantage (“a gap 29 is formed between the light alloy material 22 and the second shank portion 6. With this gap 29, the heat during the welding process is less likely to be transmitted from the second shank portion 6, where the weld nugget 28 is formed, to the light alloy material 22 in the vicinity of the shank 3, thereby preventing excessive softening or melting of the light alloy material 22 in the vicinity of the shank 3.”, para. [0058]) and as such, a modification to the shape of first or second part during the shaping operation would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the level of heat transmission at a predetermined location based upon the distance between the respective first and second parts.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOSEPH W ISKRA whose telephone number is (313) 446-4866. The examiner can normally be reached on M-F: 09:00-17:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, IBRAHIME ABRAHAM can be reached on 571-270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH W ISKRA/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761