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 .
Response to Amendment
Claims 1, 15, and 21 have been amended. Therefore, claims 1, 5-8, and 10-22 remain pending in the application.
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.
Claim(s) 1, 5-8, 10-12, 15-19, and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Friederich et al. (US6338600B2), hereinafter "Friederich".
Regarding claim 1, Friederich teaches a fastener (Fig 1, screw 10) comprising:
a head (Fig 1, head 16) including a recessed portion (see Fig 1, Examiner notes a recess within head 16 as including a recessed portion) configured to receive (capable of receiving, i.e. this is a functional recitation) a suitable driving tool; and,
a shaft (Fig 1, shank 12) extending (see Fig 1) from a first end (see Fig 1, Examiner notes an end of screw 10 adjacent head 16 as a first end) at the head (16) to a second end (see Fig 1, Examiner notes an end of screw 10 adjacent region 18 as a second end), the second end (see Fig 1) forming a tip (see Fig 1, Examiner notes a tip of screw 10 adjacent region 18 as forming a tip) of the shaft (12),
wherein the shaft (12) has a first portion (Fig 1, region 18) and a second portion (see Fig 1, Examiner notes a portion of shank 12 between region 18 and an unthreaded portion adjacent head 16 as a second portion), both (see Fig 1) the first portion (18) and the second portion (see Fig 1) being threaded (Fig 1, thread 14), the first portion (18) disposed (see Fig 1) at the tip (see Fig 1) of the shaft (12) and the second portion (see Fig 1) between (see Fig 1) the first portion (18) and the head (16) along a longitudinal axis (see Fig 1) of the fastener (10),
wherein a hardness (Col 5, line 40 - Col 6, line 21, Examiner notes the forming region of the screw acquires a Vickers hardness >420 VH 0.5 as a hardness) of the first portion (18) is less than 50 (Col 5, line 40 - Col 6, line 21, Examiner notes Vickers hardness >420 VH 0.5 as is less than 50) and a hardness (Col 5, line 40 - Col 6, line 21, Examiner notes Vickers hardness of >350 VH 0.5 as a hardness) of the second portion (see Fig 1) is between 33 to 39 (Col 5, line 40 - Col 6, line 21, Examiner notes Vickers hardness of >350 VH 0.5 as is between 33 to 39), and wherein the hardness (Col 5, line 40 - Col 6, line 21) of the first portion (18) is higher (Col 5, line 40 - Col 6, line 21) than the hardness (Col 5, line 40 - Col 6, line 21) of the second portion (see Fig 1),
wherein the first portion (18) has an outer diameter (see Fig 1) which increases (see Fig 1) along the longitudinal axis (see Fig 1) of the fastener (10) in a direction (see Fig 1) from the tip (see Fig 1) to the head (16),
wherein the second portion (see Fig 1) has a constant outer diameter (see Fig 1),
wherein the first portion (18) and the second portion (see Fig 1) are **treated in a first hardening process** (Col 5, line 40 - Col 6, line 21), and
wherein only (Col 5, line 40 - Col 6, line 21, Examiner notes only the respective forming region 18…undergoes precipitation hardening as only) the first portion (18) is **treated in a second hardening process** (Col 5, line 40 - Col 6, line 21).
Friederich fails to teach wherein the fastener is made from 4037 alloy steel.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the fastener to be made from 4037 alloy steel, 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 engineering design choice. It is also a common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, and potential aesthetics, etc., for the application, intended use, and design considerations for that material. MPEP 2144.07. The rationale for supporting this conclusion of obviousness is to provide a fastener material based on application and use requirements, e.g. strength, durability, flexibility, hardness, and potential aesthetics, etc.
**Examiner notes that even though a product-by-process claim is 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).
Regarding claim 5, modified Friederich teaches the fastener (10) according to claim 1 and further teaches wherein the first portion (18) has a first thread count (see Fig 1) and the second portion has (see Fig 1) a second thread count (see Fig 1), and
wherein the second thread count (see Fig 1) is the same (see Fig 1) as the first thread count (see Fig 1).
Regarding claim 6, modified Friederich teaches the fastener (10) according to claim 1 and further teaches wherein the shaft (12) further comprises a third portion (see Fig 1, Examiner notes the unthreaded portion of shank 12 adjacent head 16 as comprises a third portion) disposed (see Fig 1) between the second portion (see Fig 1) and the head (16).
Regarding claim 7, modified Friederich teaches the fastener (10) according to claim 6 and further teaches wherein the third portion (see Fig 1) comprises an outer surface (see Fig 1) that lacks (see Fig 1) threads (see Fig 1).
Regarding claim 8, modified Friederich teaches the fastener (10) according to claim 7 and further teaches wherein the hardness (Col 5, line 40 - Col 6, line 21) of the first portion (18) is higher (Col 5, line 40 - Col 6, line 21) than a hardness (Col 5, line 40 - Col 6, line 21, Examiner notes Vickers hardness of >350 VH 0.5 as a hardness) of the third portion (see Fig 1).
Regarding claim 10, modified Friederich teaches the fastener (10) according to claim 1 and further teaches wherein the **first hardening process comprises a heat treatment** (Col 5, line 40 - Col 6, line 21).
Regarding claims 11 and 12, modified Friederich teaches the fastener (10) according to [claim 11: claim 10; claim 12: claim 1] and further teaches wherein the **second hardening process comprises a case hardening** (Col 5, line 40 - Col 6, line 21).
Regarding claim 15, Friederich teaches a method (Col 5, line 40 - Col 6, line 21) of making (Col 5, line 40 - Col 6, line 21) a fastener (Fig 1, screw 10) having a head (Fig 1, head 16) and a shaft (Fig 1, shank 12) extending (see Fig 1) from a first end (see Fig 1, Examiner notes an end of screw 10 adjacent head 16 as a first end) at the head (16) to a second end (see Fig 1, Examiner notes an end of screw 10 adjacent region 18 as a second end), the second end (see Fig 1) forming a tip (see Fig 1, Examiner notes a tip of screw 10 adjacent region 18 as forming a tip) of the shaft (16), wherein the shaft (12) has a first portion (Fig 1, region 18) and a second portion (see Fig 1, Examiner notes a portion of shank 12 between region 18 and an unthreaded portion adjacent head 16 as a second portion), the first portion (18) and the second portion (see Fig 1) being threaded (Fig 1, thread 14), the first portion (18) disposed (see Fig 1) at the tip (see Fig 1) of the shaft (12) and the second portion (see Fig 1) between (see Fig 1) the first portion (18) and the head (16) along a longitudinal axis (see Fig 1) of the fastener (10), and wherein the method (Col 5, line 40 - Col 6, line 21) comprises:
treating (Col 5, line 40 - Col 6, line 21) the fastener (10) to provide a first hardness (Col 5, line 40 - Col 6, line 21, Examiner notes Vickers hardness of >350 VH 0.5 as to provide a hardness) to the fastener (10), wherein the first hardness (Col 5, line 40 - Col 6, line 21) is between 33 to 39 (Col 5, line 40 - Col 6, line 21, Examiner notes Vickers hardness of >350 VH 0.5 as is between 33 to 39); and,
then, treating (Col 5, line 40 - Col 6, line 21) only (Col 5, line 40 - Col 6, line 21, Examiner notes only the respective forming region 18…undergoes precipitation hardening as only) the first portion (18) of the fastener (10) to obtain a second hardness (Col 5, line 40 - Col 6, line 21, Examiner notes the forming region of the screw acquires a Vickers hardness >420 VH 0.5 as to obtain a second hardness) higher (Col 5, line 40 - Col 6, line 21) than the first hardness (Col 5, line 40 - Col 6, line 21), the second hardness (Col 5, line 40 - Col 6, line 21) being less than 50 (Col 5, line 40 - Col 6, line 21, Examiner notes Vickers hardness >420 VH 0.5 as is being less than 50),
wherein the second portion (see Fig 1) comprises the first hardness (Col 5, line 40 - Col 6, line 21), and
wherein the second portion (see Fig 1) has a constant outer diameter (see Fig 1).
Friederich fails to teach wherein the fastener is made from 4037 alloy steel.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the fastener to be made from 4037 alloy steel, 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 engineering design choice. It is also a common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, and potential aesthetics, etc., for the application, intended use, and design considerations for that material. MPEP 2144.07. The rationale for supporting this conclusion of obviousness is to provide a fastener material based on application and use requirements, e.g. strength, durability, flexibility, hardness, and potential aesthetics, etc.
Regarding claim 16, modified Friederich teaches the method (Col 5, line 40 - Col 6, line 21) of claim 15 and further teaches wherein the first hardness (Col 5, line 40 - Col 6, line 21) is provided by a heat treatment (Col 5, line 40 - Col 6, line 21).
Regarding claim 17, modified Friederich teaches the method (Col 5, line 40 - Col 6, line 21) of claim 16 and further teaches wherein the second hardness (Col 5, line 40 - Col 6, line 21) is provided by a case hardening (Col 5, line 40 - Col 6, line 21).
Regarding claim 18, modified Friederich teaches the method (Col 5, line 40 - Col 6, line 21) of claim 17 and further teaches wherein both (Col 5, line 40 - Col 6, line 21) the first portion (18) and the second portion (see Fig 1) are treated (Col 5, line 40 - Col 6, line 21) with the heat treatment (Col 5, line 40 - Col 6, line 21), and
wherein only (Col 5, line 40 - Col 6, line 21) the first portion (18) is treated (Col 5, line 40 - Col 6, line 21) with the case hardening (Col 5, line 40 - Col 6, line 21).
Regarding claim 19, modified Friederich teaches the method (Col 5, line 40 - Col 6, line 21) of claim 15 and further teaches wherein the second hardness (Col 5, line 40 - Col 6, line 21) is provided by a case hardening (Col 5, line 40 - Col 6, line 21).
Regarding claim 21, Friederich teaches a fastener (Fig 1, screw 10) comprising:
a head (Fig 1, head 16) including a recessed portion (see Fig 1, Examiner notes a recess within head 16 as including a recessed portion) configured to receive (capable of receiving, i.e. this is a functional recitation) a suitable driving tool; and
a shaft (Fig 1, shank 12) extending (see Fig 1) from a first end (see Fig 1, Examiner notes an end of screw 10 adjacent head 16 as a first end) at the head (16) to a second end (see Fig 1, Examiner notes an end of screw 10 adjacent region 18 as a second end), the second end (see Fig 1) forming a tip (see Fig 1, Examiner notes a tip of screw 10 adjacent region 18 as forming a tip) of the shaft (12),
wherein the shaft (12) has a first portion (Fig 1, region 18) and a second portion (see Fig 1, Examiner notes a portion of shank 12 between region 18 and an unthreaded portion adjacent head 16 as a second portion), both (see Fig 1) the first portion (18) and the second portion (see Fig 1) being threaded (Fig 1, thread 14), the first portion (18) disposed (see Fig 1) at the tip (see Fig 1) of the shaft (12) and the second portion (see Fig 1) between (see Fig 1) the first portion (18) and the head (16) along a longitudinal axis (see Fig 1) of the fastener (10),
wherein a hardness (Col 5, line 40 - Col 6, line 21, Examiner notes the forming region of the screw acquires a Vickers hardness >420 VH 0.5 as a hardness) of the first portion (18) is higher (Col 5, line 40 - Col 6, line 21) than a hardness (Col 5, line 40 - Col 6, line 21, Examiner notes Vickers hardness of >350 VH 0.5 as a hardness) of the second portion (see Fig 1), and wherein the hardness (Col 5, line 40 - Col 6, line 21) of the first portion (18) is less than 50 (Col 5, line 40 - Col 6, line 21, Examiner notes Vickers hardness >420 VH 0.5 as is less than 50) and the hardness (Col 5, line 40 - Col 6, line 21) of the second portion (see Fig 1) is between 33 to 39 (Col 5, line 40 - Col 6, line 21, Examiner notes Vickers hardness of >350 VH 0.5 as is between 33 to 39),
wherein the second portion (see Fig 1) has a constant outer diameter (see Fig 1),
wherein the first portion (18) and the second portion (see Fig 1) are **treated in a first hardening process**(Col 5, line 40 - Col 6, line 21), and
wherein only (Col 5, line 40 - Col 6, line 21, Examiner notes only the respective forming region 18…undergoes precipitation hardening as only) the first portion (18) is **treated in a second hardening process** (Col 5, line 40 - Col 6, line 21).
Friederich fails to teach wherein the fastener is made from 4037 alloy steel.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the fastener to be made from 4037 alloy steel, 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 engineering design choice. It is also a common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, and potential aesthetics, etc., for the application, intended use, and design considerations for that material. MPEP 2144.07. The rationale for supporting this conclusion of obviousness is to provide a fastener material based on application and use requirements, e.g. strength, durability, flexibility, hardness, and potential aesthetics, etc.
Regarding claim 22, modified Friederich teaches the fastener (10) according to claim 21 and further teaches wherein the **first hardening process comprises a heat treatment** (Col 5, line 40 - Col 6, line 21), and
wherein the **second hardening process comprises a case hardening** (Col 5, line 40 - Col 6, line 21).
Claim(s) 13-14 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Friederich, in view of McCarty (US6213884B1), hereinafter "McCarty".
Regarding claim 13, modified Friederich teaches the fastener (10) according to claim 1 but fails to teach wherein the fastener is plated.
However, McCarty teaches it is known to provide wherein the fastener (Fig 1, screw 10) is plated (Col 5, lines 9-21, McCarty indicates after heat treatment, fasteners can be coated with a variety of coatings, such as tin, tin zinc, nickel, etc., using standard plating and coating processes such as mechanical plating, electroplating, spray, etc.).
Therefore, as evidenced by McCarty, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine wherein the fastener is plated as taught by McCarty to the screw of modified Friederich. The rationale for supporting this conclusion of obviousness is to facilitate improving corrosion resistance, cosmetic appearance, electrical conductivity, friction characteristics, etc. based on application and use requirements.
Regarding claim 14, modified Friederich teaches the fastener (10) according to claim 13 and further teaches wherein the fastener (10) is plated (McCarty, Col 5, lines 9-21) with zinc (McCarty, Col 5, lines 9-21).
Regarding claim 20, modified Friederich teaches the method (Col 5, line 40 - Col 6, line 21) of claim 19 but fails to teach further comprising: plating zinc on the fastener after the case hardening.
However, McCarty teaches it is known to provide plating zinc (Col 5, lines 9-21, McCarty indicates after heat treatment, fasteners can be coated with a variety of coatings, such as tin, tin zinc, nickel, etc., using standard plating and coating processes such as mechanical plating, electroplating, spray, etc.) on the fastener (Fig 1, screw 10) after the case hardening (Col 5, lines 9-21).
Therefore, as evidenced by McCarty, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine plating zinc on the fastener after the case hardening as taught by McCarty to the screw of modified Friederich. The rationale for supporting this conclusion of obviousness is to facilitate improving corrosion resistance, cosmetic appearance, electrical conductivity, friction characteristics, etc. based on application and use requirements.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 15, and 21 have been considered but are moot because the new ground of rejection does not rely on any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOCK WONG whose telephone number is (571)270-1349. The examiner can normally be reached Monday - Friday, 7:30am - 5:00pm (ET).
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/J.W./Examiner, Art Unit 3675 /KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675
