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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 15, 2026 has been entered.
Response to Amendment
Claims 1, 15, and 21 have been amended. Claim 23 has been cancelled. 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, and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneider (US20160186795A1), hereinafter "Schneider", in view of Dayton et al. (US20130192159A1), hereinafter "Dayton".
Regarding claim 1, Schneider teaches a fastener (Fig 1, screw 10) comprising:
a head (Fig 1, head 20) including a recessed portion (Figs 1 and 3, recess 39/40, Paragraph 0024) configured to receive (Paragraph 0024) a suitable driving tool (Paragraph 0024, Schneider indicates a six lobed screwdriver); and,
a shaft (Fig 1, shank 18) extending (see Fig 1) from a first end (see Fig 1, Examiner notes an end of shank 18 adjacent head 20 as a first end) at the head (20) to a second end (Fig 1, first end 12), the second end (12) forming a tip (Fig 1, tapping point 16) of the shaft (18),
wherein the shaft (18) has a first portion (Fig 1, tapered portion 22) and a second portion (see Fig 1, Examiner notes a portion of threaded portion 24 between tapered portion 22 and unthreaded portion 26 as a second portion), both the first portion (22) and the second portion (see Fig 1) being threaded (Fig 1, thread 28), the first portion (22) disposed (see Fig 1) at the tip (16) of the shaft (18) and the second portion (see Fig 1) between (see Fig 1) the first portion (22) and the head (20) along a longitudinal axis (see Fig 1) of the fastener (10),
wherein a hardness (Paragraph 0027, Examiner notes surface hardness as a hardness) of the first portion (22) is between 45 to 50 (Paragraph 0027, Schneider indicates Rc50-58 for the surface hardness),
wherein the first portion (22) has an outer diameter (see Fig 1) which increases (see Fig 1, Examiner notes tapered portion 22 as has an outer diameter which increases) along the longitudinal axis (see Fig 1) of the fastener (10) in a direction (see Fig 1) from the tip (16) to the head (20),
wherein the second portion (see Fig 1) has a constant outer diameter (Fig 1, diameter D3),
wherein the first portion (22) and the second portion (see Fig 1) are **treated in a first hardening process** (Paragraph 0027).
Schneider fails to teach a hardness of the second portion is between 33 to 39, and wherein the hardness of the first portion is higher than the hardness of the second portion, wherein the fastener is made from 4037 alloy steel, and wherein only the first portion is **treated in a second hardening process**.
However, Dayton teaches it is known to provide wherein a hardness (Paragraph 0143, Dayton indicates Rockwell C-Scale hardness (HRC)) of the first portion (see Fig 4A, portion 62 and portion 66, Paragraph 0143, Examiner notes tapered lead portion 62 and thread-forming portion 66 as the first portion) is between 45 to 50 (Paragraph 0143, Dayton indicates tapered lead portion 62 of at least Rockwell C-Scale hardness (HRC) 50 and thread-forming portion 66 of at least HRC 50 hardness), a hardness (Paragraph 0144, Dayton indicates Rockwell B-Scale hardness (HRB) and HRC) of the second portion (Fig 4A, threaded portion 64) is between 33 to 39 (Paragraph 0144, Dayton indicates HRB 70 to HRC 40), wherein the hardness (Paragraph 0143) of the first portion (62, 66) is higher (Paragraphs 0143-0144) than the hardness (Paragraph 0144) of the second portion (64), and wherein only the first portion (62, 66) is **treated in a second hardening process** (Paragraph 0184, Dayton indicates portions of the present fasteners may be selectively 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 modify Schneider to include a hardness of the second portion is between 33 to 39, wherein the hardness of the first portion is higher than the hardness of the second portion, and wherein only the first portion is **treated in a second hardening process** as taught by Dayton. The rationale for supporting this conclusion of obviousness is to facilitate fasteners having sufficient ductility for structural connections such as slip-critical connections in which the materials joined are clamped together without slippage by the tension induced in the fasteners (Dayton, Paragraph 0144).
Schneider, in view of Dayton 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 Schneider teaches the fastener (10) according to claim 1 and further teaches wherein the first portion (22) has a first thread count (see Fig 1, Paragraph 0019, Examiner notes a single screw thread 28 as has a first thread count) and the second portion (see Fig 1) has a second thread count (see Fig 1, Paragraph 0019, Examiner notes a single screw thread 28 as has a second thread count), and
wherein the second thread count (see Fig 1) is the same (see Fig 1, Paragraph 0019, Examiner notes a single screw thread 28 which wraps around the exterior of the shank 18 in a uniform spiral manner as the same) as the first thread count (see Fig 1).
Regarding claim 6, modified Schneider teaches the fastener (10) according to claim 1 and further teaches wherein the shaft (18) further comprises a third portion (Fig 1, unthreaded portion 26) disposed (see Fig 1) between the second portion (see Fig 1) and the head (20).
Regarding claim 7, modified Schneider teaches the fastener (10) 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, Examiner notes unthreaded portion 26 as lacks threads).
Regarding claim 8, modified Schneider teaches the fastener (10) according to claim 7 and further teaches wherein the hardness (Dayton, Paragraph 0143) of the first portion (22) is higher (Dayton, Paragraphs 0143-0144) than a hardness (Paragraph 0027) of the third portion (26).
Regarding claim 10, modified Schneider teaches the fastener (10) according to claim 1 and further teaches wherein the **first hardening process comprises a heat treatment** (Paragraph 0027).
Regarding claims 11 and 12, modified Schneider 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** (Paragraph 0027).
Regarding claim 21, Schneider teaches a fastener (Fig 1, screw 10) comprising:
a head (Fig 1, head 20) including a recessed portion (Figs 1 and 3, recess 39/40, Paragraph 0024) configured to receive (Paragraph 0024) a suitable driving tool (Paragraph 0024, Schneider indicates a six lobed screwdriver); and
a shaft (Fig 1, shank 18) extending (see Fig 1) from a first end (see Fig 1, Examiner notes an end of shank 18 adjacent head 20 as a first end) at the head (20) to a second end (Fig 1, first end 12), the second end (12) forming a tip (Fig 1, tapping point 16) of the shaft (18),
wherein the shaft (18) has a first portion (Fig 1, tapered portion 22) and a second portion (see Fig 1, Examiner notes a portion of threaded portion 24 between tapered portion 22 and unthreaded portion 26 as a second portion), both the first portion (22) and the second portion (see Fig 1) being threaded (Fig 1, thread 28), the first portion (22) disposed (see Fig 1) at the tip (16) of the shaft (18) and the second portion (see Fig 1) between (see Fig 1) the first portion (22) and the head (20) along a longitudinal axis (see Fig 1) of the fastener (10),
wherein the hardness (Paragraph 0027, Examiner notes surface hardness as the hardness) of the first portion (22) is between 45 to 50 (Paragraph 0027, Schneider indicates Rc50-58 for the surface hardness),
wherein the second portion (see Fig 1) has a constant outer diameter (Fig 1, diameter D3),
wherein the first portion (22) and the second portion (see Fig 1) are **treated in a first hardening process** (Paragraph 0027).
Schneider fails to teach wherein a hardness of the first portion is higher than a hardness of the second portion, and the hardness of the second portion is between 33 to 39, wherein the fastener is made from 4037 alloy steel, and wherein only the first portion is **treated in a second hardening process**.
However, Dayton teaches it is known to provide wherein a hardness (Paragraph 0143, Dayton indicates Rockwell C-Scale hardness (HRC)) of the first portion (see Fig 4A, portion 62 and portion 66, Paragraph 0143, Examiner notes tapered lead portion 62 and thread-forming portion 66 as the first portion) is higher (Paragraphs 0143-0144) than a hardness (Paragraph 0144, Dayton indicates Rockwell B-Scale hardness (HRB) and HRC) of the second portion (Fig 4A, threaded portion 64), and wherein the hardness (Paragraph 0143) of the first portion (62, 66) is between 45 to 50 (Paragraph 0143, Dayton indicates tapered lead portion 62 of at least Rockwell C-Scale hardness (HRC) 50 and thread-forming portion 66 of at least HRC 50 hardness) and the hardness (Paragraph 0144) of the second portion (64) is between 33 to 39 (Paragraph 0144, Dayton indicates HRB 70 to HRC 40), and wherein only the first portion (62, 66) is **treated in a second hardening process** (Paragraph 0184, Dayton indicates portions of the present fasteners may be selectively 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 modify Schneider to include a hardness of the first portion is higher than a hardness of the second portion, and the hardness of the second portion is between 33 to 39, and wherein only the first portion is **treated in a second hardening process** as taught by Dayton. The rationale for supporting this conclusion of obviousness is to facilitate fasteners having sufficient ductility for structural connections such as slip-critical connections in which the materials joined are clamped together without slippage by the tension induced in the fasteners (Dayton, Paragraph 0144).
Schneider, in view of Dayton 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 Schneider teaches the fastener (10) according to claim 21 and further teaches wherein the **first hardening process comprises a heat treatment** (Paragraph 0027), and
wherein the **second hardening process comprises a case hardening** (Paragraph 0027).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneider, in view of Dayton and McCarty (US6213884B1), hereinafter "McCarty".
Regarding claim 13, modified Schneider 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 a coating as taught by McCarty to the screw of modified Schneider. 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 Schneider 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).
Claim(s) 15-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dayton.
Regarding claim 15, Dayton teaches a method of making (Paragraph 0184) a fastener (Fig 4A, fastener 52) having a head (Fig 4A, head 63) and a shaft (see Fig 4A, Examiner notes tapered lead portion 62, threaded portion 64, and thread-forming portion 66 as a shaft) extending (see Fig 4A) from a first end (see Fig 4A, Examiner notes an end of fastener 52 adjacent head 63 as a first end) at the head (63) to a second end (see Fig 4A, Examiner notes an end of fastener 52 distal head 63 as a second end), the second end (see Fig 4A) forming a tip (Fig 4A, portion 62) of the shaft (see Fig 4A), wherein the shaft (see Fig 4A) has a first portion (see Fig 4A, portion 62 and portion 66, Paragraph 0143, Examiner notes tapered lead portion 62 and thread-forming portion 66 as has a first portion) and a second portion (Fig 4A, threaded portion 64), the first portion (62, 66) and the second portion (64) being threaded (see Fig 4A, Paragraph 0145), the first portion (62, 66) disposed (see Fig 4A) at the tip (62) of the shaft (see Fig 4A) and the second portion (64) between (see Fig 4A) the first portion (62, 66) and the head (63) along a longitudinal axis (see Fig 4A) of the fastener (52), and wherein the method (Paragraph 0184) comprises:
treating the fastener (52) to provide a first hardness (Paragraph 0144, Examiner notes provided with physical properties as desired in compliance with, e.g. SAE J429 Grade 8, as treating the fastener to provide a first hardness) to the fastener (52), wherein the first hardness (Paragraph 0144) is between 33 to 39 (Paragraph 0144, Dayton indicates HRB 70 to HRC 40); and,
then, treating only the first portion (62, 66) of the fastener (52) to obtain a second hardness (Paragraph 0143, Dayton indicates Rockwell C-Scale (HRC)) higher (Paragraphs 0143-0144) than the first hardness (Paragraph 0144), the second hardness (Paragraph 0143) being between 45 to 50 (Paragraph 0143, Dayton indicates tapered lead portion 62 of at least Rockwell C-Scale hardness (HRC) 50 and thread-forming portion 66 of at least HRC 50 hardness),
wherein the second portion (64) comprises the first hardness (Paragraph 0144), and
wherein the second portion (64) has a constant outer diameter (see Fig 4A).
Dayton 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 Dayton teaches the method (Paragraph 0184) of claim 15 and further teaches wherein the first hardness (Paragraph 0144) is provided by a heat treatment (Paragraph 0144, Examiner notes provided with physical properties as desired in compliance with, e.g. SAE J429 Grade 8, as is provided by heat treatment).
Regarding claim 17, modified Dayton teaches the method (Paragraph 0184) of claim 16 and further teaches wherein the second hardness (Paragraph 0143) is provided by a case hardening (Paragraph 0184, Dayton indicates case hardened).
Regarding claim 18, modified Dayton teaches the method (Paragraph 0184) of claim 17 and further teaches wherein both the first portion (62, 66) and the second portion (64) are treated (Paragraphs 0143-0144 and 0184) with the heat treatment (Paragraph 0144), and
wherein only (Paragraph 0184, Dayton indicates portions of the present fasteners may be selectively hardened) the first portion (62, 66) is treated with the case hardening (Paragraph 0184).
Regarding claim 19, modified Dayton teaches the method (Paragraph 0184) of claim 15 and further teaches wherein the second hardness (Paragraph 0143) is provided by a case hardening (Paragraph 0184, Dayton indicates case hardened).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dayton, in view of McCarty.
Regarding claim 20, modified Dayton teaches the method (Paragraph 0184) 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 (see Fig 3, 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 Dayton. 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
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/J.W./Examiner, Art Unit 3675 /KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675
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