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. Claim 23 has been added. Therefore, claims 1, 5-8, and 10-23 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) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Janusz (US6332741B1), hereinafter "Janusz".
Regarding claim 15, Janusz teaches a method of making (Col 5, lines 7-16, Examiner notes dual zone heat treatment as a method of making) a fastener (Fig 1, member 20) having a head (Fig 1, head 22) and a shaft (Fig 1, shank 24) extending (see Fig 1) from a first end (see Fig 1, Examiner notes an end of member 20 adjacent head 22 as a first end) at the head (22) to a second end (see Fig 1, Examiner notes an end of member 20 distal head 22 as a second end), the second end (see Fig 1) forming a tip (Fig 1, point 32) of the shaft (24), wherein the shaft (24) has a first portion (Fig 1, zone 36) and a second portion (Fig 1, portion 28), the first portion (36) and the second portion (28) being threaded (see Fig 1, threads 42, 40), the first portion (36) disposed (see Fig 1) at the tip (32) of the shaft (24) and the second portion (28) between (see Fig 1) the first portion (36) and the head (22) along a longitudinal axis (see Fig 1) of the fastener (20), and wherein the method (Col 5, lines 7-16) comprises:
treating (Col 4, lines 16-30, Examiner notes threads 40 of the first threaded portion 28 are heat treated as treating) the fastener (20) to provide a first hardness (Col 3, lines 25-62, Examiner notes Rockwell “C” scale as to provide a first hardness) to the fastener (20), wherein the first hardness (Col 3, lines 25-62) is between 25 to 40 (Col 3, lines 25-62, Janusz indicates a hardness of twenty-five); and,
then, treating only (Col 3, lines 25-62, Examiner notes selectively heat treated as treating only) the first portion (36) of the fastener (20) to obtain a second hardness (Col 3, lines 25-62, Examiner notes Rockwell “C” scale as to obtain a second hardness) higher (Col 3, lines 25-62, Examiner notes approximately twenty points softer as higher) than the first hardness (Col 3, lines 25-62), the second hardness (Col 3, lines 25-62) being between 40 to 45 (Col 3, lines 25-62, Janusz indicates a hardness of forty-five),
wherein the second portion (28) comprises the first hardness (Col 3, lines 25-62), and
wherein the second portion (28) has a constant outer diameter (see Fig 1, Col 2, lines 54-64, Examiner notes substantially constant major diameter, minor diameter and pitch as has a constant outer diameter).
Janusz 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 Janusz teaches the method (Col 5, lines 7-16) of claim 15 and further teaches wherein the first hardness (Col 3, lines 25-62) is provided by a heat treatment (Col 4, lines 16-30, Examiner notes heat treated as is provided by a heat treatment).
Claim(s) 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Janusz, in view of Dayton et al. (US20130192159A1), hereinafter "Dayton".
Regarding claims 17 and 19, modified Janusz teaches the method (Col 5, lines 7-16) of [claim 17: claim 16; claim 19: claim 15] but fails to teach wherein the second hardness is provided by a case hardening.
However, Dayton teaches it is known to provide wherein the second hardness (Paragraph 0143, Dayton indicates Rockwell C-Scale hardness (HRC)) is provided by a case hardening (Paragraph 0184, Dayton indicates case hardened).
Therefore, as evidenced by Dayton, 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 second hardness is provided by a case hardening as taught by Dayton to modified Janusz. The rationale for supporting this conclusion of obviousness is to provide a member with sufficient ductility for structural connections (Dayton, Paragraphs 0143-0144 and 0184).
Regarding claim 18, modified Janusz teaches the method (Col 5, lines 7-16) of claim 17 and further teaches wherein both the first portion (36) and the second portion (28) are treated (Col 5, lines 7-16) with the heat treatment (Col 4, lines 16-30), and
wherein only (Col 3, lines 25-62, Examiner notes selectively heat treated as only) the first portion (36) is treated (Col 5, lines 7-16) with the case hardening (Dayton, Paragraph 0184).
Claim(s) 1, 5-8, 10-14, and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Janusz, in view of McCarty (US6213884B1), hereinafter "McCarty".
Regarding claim 1, Janusz teaches a fastener (Fig 1, member 20) comprising:
a head (Fig 1, head 22); and,
a shaft (Fig 1, shank 24) extending (see Fig 1) from a first end (see Fig 1, Examiner notes an end of member 20 adjacent head 22 as a first end) at the head (22) to a second end (see Fig 1, Examiner notes an end of member 20 distal head 22 as a second end), the second end (see Fig 1) forming a tip (Fig 1, point 32) of the shaft (24),
wherein the shaft (24) has a first portion (Fig 1, zone 36) and a second portion (Fig 1, portion 28), both the first portion (36) and the second portion (28) being threaded (see Fig 1, threads 42, 40), the first portion (36) disposed (see Fig 1) at the tip (32) of the shaft (24) and the second portion (28) between (see Fig 1) the first portion (36) and the head (22) along a longitudinal axis (see Fig 1) of the fastener (20),
wherein a hardness (Col 3, lines 25-62, Examiner notes Rockwell “C” scale as a hardness) of the first portion (36) is between 40 to 45 (Col 3, lines 25-62, Janusz indicates a hardness of forty-five) and a hardness (Col 3, lines 25-62, Examiner notes Rockwell “C” scale as a hardness) of the second portion (28) is between 25 to 40 (Col 3, lines 25-62, Janusz indicates a hardness of twenty-five), and wherein the hardness (Col 3, lines 25-62) of the first portion (36) is higher (Col 3, lines 25-62, Examiner notes approximately twenty points softer as higher) than the hardness (Col 3, lines 25-62) of the second portion (28),
wherein the first portion (36) has an outer diameter (see Fig 1) which increases (see Fig 1) along the longitudinal axis (see Fig 1) of the fastener (20) in a direction (see Fig 1) from the tip (32) to the head (22),
wherein the second portion (28) has a constant outer diameter (see Fig 1, Col 2, lines 54-64, Examiner notes substantially constant major diameter, minor diameter and pitch as has a constant outer diameter),
wherein the first portion (36) and the second portion (28) are **treated in a first hardening process** (Col 5, lines 7-16, Examiner notes dual zone heat treatment as treated in a first hardening process), and
wherein only the first portion (36) is **treated in a second hardening process** (Col 3, lines 25-62, Examiner notes selectively heat treated as only the first portion is treated in a second hardening process).
Janusz fails to teach a recessed portion configured to receive a suitable driving tool and wherein the fastener is made from 4037 alloy steel.
However, McCarty teaches it is known to provide a recessed portion (Fig 1, slot 13) configured to receive a suitable driving tool (see Fig 1, Col 4, lines 26-36, Examiner notes a lateral or crossed (phillips head) slot 13 to facilitate engaging and driving the screw as configured to receive a suitable driving tool).
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 an adequately sized and shaped recessed portion configured to receive a suitable driving tool as taught by McCarty to Janusz. The rationale for supporting this conclusion of obviousness is to facilitate engaging and driving the screw (McCarty, Col 4, lines 26-36) based on application and use requirements.
Janusz, in view of McCarty 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 Janusz teaches the fastener (20) according to claim 1 and further teaches wherein the first portion (36) has a first thread count (see Fig 1) and the second portion (28) has a second thread count (see Fig 1), and
wherein the second thread count (see Fig 1) is the same (see Fig 1, Col 2, lines 54-64, Examiner notes substantially constant major diameter, minor diameter and pitch as the same) as the first thread count (see Fig 1).
Regarding claim 6, modified Janusz teaches the fastener (20) according to claim 1 and further teaches wherein the shaft (24) further comprises a third portion (Fig 1, portion 26) disposed (see Fig 1) between the second portion (28) and the head (22).
Regarding claim 7, modified Janusz teaches the fastener (20) according to claim 6 and further teaches wherein the third portion (26) comprises an outer surface (see Fig 1) that lacks threads (see Fig 1, Col 2, lines 41-53, Examiner notes unthreaded portion 26 as lacks threads).
Regarding claim 8, modified Janusz teaches the fastener (20) according to claim 7 and further teaches wherein the hardness (Col 3, lines 25-62) of the first portion (36) is higher (Col 3, lines 25-62) than a hardness (Col 3, lines 25-62, Examiner notes Rockwell “C” scale as a hardness) of the third portion (26).
Regarding claim 10, modified Janusz teaches the fastener (20) according to claim 1 and further teaches wherein the **first hardening process comprises a heat treatment**.
Regarding claims 11 and 12, modified Janusz teaches the fastener (20) according to [claim 11: claim 10; claim 12: claim 1] and further teaches wherein the **second hardening process comprises a case hardening**.
Regarding claim 13, modified Janusz teaches the fastener (20) 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 a coating as taught by McCarty to modified Janusz. 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 Janusz teaches the fastener (20) according to claim 13 and further teaches wherein the fastener (20) is plated (McCarty, Col 5, lines 9-21) with zinc (McCarty, Col 5, lines 9-21).
Regarding claim 21, Janusz teaches a fastener (Fig 1, member 20) comprising:
a head (Fig 1, head 22); and
a shaft (Fig 1, shank 24) extending (see Fig 1) from a first end (see Fig 1, Examiner notes an end of member 20 adjacent head 22 as a first end) at the head (22) to a second end (see Fig 1, Examiner notes an end of member 20 distal head 22 as a second end), the second end (see Fig 1) forming a tip (Fig 1, point 32) of the shaft (24),
wherein the shaft (24) has a first portion (Fig 1, zone 36) and a second portion (Fig 1, portion 28), both the first portion (36) and the second portion (28) being threaded (see Fig 1, threads 42, 40), the first portion (36) disposed (see Fig 1) at the tip (32) of the shaft (24) and the second portion (28) between (see Fig 1) the first portion (36) and the head (22) along a longitudinal axis (see Fig 1) of the fastener (20),
wherein a hardness (Col 3, lines 25-62, Examiner notes Rockwell “C” scale as a hardness) of the first portion (36) is higher (Col 3, lines 25-62, Examiner notes approximately twenty points softer as higher) than a hardness (Col 3, lines 25-62, Examiner notes Rockwell “C” scale as a hardness) of the second portion (28), and wherein the hardness (Col 3, lines 25-62) of the first portion (36) is between 40 to 45 (Col 3, lines 25-62, Janusz indicates a hardness of forty-five) and the hardness (Col 3, lines 25-62) of the second portion (28) is between 25 to 40 (Col 3, lines 25-62, Janusz indicates a hardness of twenty-five),
wherein the second portion (28) has a constant outer diameter (see Fig 1, Col 2, lines 54-64, Examiner notes substantially constant major diameter, minor diameter and pitch as has a constant outer diameter),
wherein the first portion (36) and the second portion (28) are **treated in a first hardening process** (Col 5, lines 7-16, Examiner notes dual zone heat treatment as treated in a first hardening process), and
wherein only the first portion (36) is **treated in a second hardening process** (Col 3, lines 25-62, Examiner notes selectively heat treated as only the first portion is treated in a second hardening process).
Janusz fails to teach a recessed portion configured to receive a suitable driving tool and wherein the fastener is made from 4037 alloy steel.
However, McCarty teaches it is known to provide a recessed portion (Fig 1, slot 13) configured to receive a suitable driving tool (see Fig 1, Col 4, lines 26-36, Examiner notes a lateral or crossed (phillips head) slot 13 to facilitate engaging and driving the screw as configured to receive a suitable driving tool).
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 an adequately sized and shaped recessed portion configured to receive a suitable driving tool as taught by McCarty to Janusz. The rationale for supporting this conclusion of obviousness is to facilitate engaging and driving the screw (McCarty, Col 4, lines 26-36) based on application and use requirements.
Janusz, in view of McCarty 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 Janusz teaches the fastener (20) according to claim 21 and further teaches wherein the **first hardening process comprises a heat treatment**, and wherein the **second hardening process comprises a case hardening**.
Regarding claim 23, modified Janusz teaches the fastener (20) according to claim 1 and further teaches wherein the hardness (Col 3, lines 25-62) of the second portion (28) is between 25 to 39 (Col 3, lines 25-62).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Janusz, in view of Dayton and McCarty.
Regarding claim 20, modified Janusz teaches the method (Col 5, lines 7-16) 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 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, McCarty indicates after heat treatment).
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 provide plating zinc on the fastener after the case hardening as taught by McCarty to modified Janusz. 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.
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/J.W./Examiner, Art Unit 3675 /KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675