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 .
Election/Restrictions
Claims 1-17 remain in the application as withdrawn.
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.
Claims 18-20 and 22-27 are rejected under 35 U.S.C. 112(a) 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. The examiner does not find support for the “metallurgically bonded” added to claim 18.
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.
Claims 18-20 and 22-27 are also 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. The meets and bounds of metallurgically bonded is also unclear because the examiner cannot find a definitive definition of the limitation and it is not defined within the disclosure.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 18, 22-24 and 26-27, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Campbell (US 10,377,020). Campbell discloses a screw made of two different metals comprising: a screw head (110) with an internal drive (200), which can have a hex shape (column 1, line 57) for receiving a driver, is located in the screw head (at 230; column 2, beginning line 63); a screw body (100); the internal drive is made of a harder metal relative to the screw body (column 4, lines 12-17); wherein the internal drive is welded to the screw head (column 4, lines 38-40) which would be inclusive of “metallurgically bonded”. The limitations of the wire, the multiple layers, and spark erosion are all product-by-process limitation because it is only the final product which is considered in the article claims.
Claim Rejections - 35 USC § 103
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 19 is rejected under 35 U.S.C. 103 as being unpatentable over Campbell as applied to claim 18 above, and further in view of Matzler (US 7,632,053). Campbell does not discuss the specific metal of the screw body. Matzler discloses a screw made of a ultra-high strength alloy including both a ferrous and a nickel alloy where by definition an ultra-high strength is over 550 MPa. Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to make the screw body of Campbell out of a ultra-high strength alloy as disclosed in Matzler for providing the screw with sufficiently high strength for certain applications.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Campbell as applied to claim 18 above, and further in view of Hallowell (US 2,229,595). Campbell does not discuss the hardness of the internal drive. Hallowell discloses a screw with an internal drive having hardness of 48-50 HRC which is within the claimed range. Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to make the internal drive of Campbell with a hardness of 48-50 HRC as disclosed in Hallowell for providing the screw internal drive with a sufficient hardness for receiving torque from a driver.
Allowable Subject Matter
Claim 25 appears would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
The method claims can also be amended to in included the all same limitations where they would be considered for rejoinder.
Response to Amendment
After consideration of applicant’s remarks the examiner does not agree the amended claim 18 defines over DeLacy because the press-fit on the internal drive into the screwhead would be inclusive of a “metallurgically bonded”. The deformation of the material of screwhead by the internal drive would provide the metallurgical bond as well as inherently teach the higher hardness of the internal drive.
Nonetheless in a effort to expedite the application, the examiner has interpretated the metallurgically bonded as a bond resulting from some sort of a weld as disclosed in the instant application and accordingly modified the rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nill (US 2021/0108668), DiMarco (US 9,421,442) and Serle (US 12,504,032) teach other examples of welded drive sockets.
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 FLEMMING SAETHER whose telephone number is (571)272-7071. The examiner can normally be reached M-F 8:30 - 7:00 eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Mills can be reached at 571-272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FLEMMING SAETHER/Primary Examiner, Art Unit 3675