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
Claim 1 has been amended. Claims 4-6 and 9-13 have been cancelled. Therefore, claim 1 remains pending in the application.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, lines 25, 29, and 31, “tip” should read “tapered tip”
In claim 1, line 31, “head” should read “enlarged head”
Appropriate correction is required.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lat et al. (US5741104A), hereinafter "Lat", in view of Dill et al. (US20060018733A1) and Panasik et al. (US20040223830A1), hereinafter "Dill" and "Panasik", respectively.
Regarding claim 1, Lat teaches a steel fastener (Fig 2, fastener 20, Col 3, lines 32-41, Lat indicates the fastener 20 may be made from a cylindrical wire of 1030 carbon steel) comprising:
a shaft (see Fig 2, Examiner notes shank 22 and tip 26 as a shaft) including:
an elongate shank (Fig 2, shank 22) having a longitudinal axis (see Fig 2, Col 3, lines 26-31, Lat indicates shank 22 defining an axis) and including a knurled portion (Fig 2, portion 40) formed (see Fig 2) by helical grooves (Fig 2, helical grooves 46, Col 4, lines 36-47) extending (see Fig 2) along the entire knurled portion (40) and defining helical ribs (Fig 2, helical ribs 48, Col 4, lines 36-47) and by annular grooves (Fig 2, annular grooves 42, Col 4, lines 36-47) extending (see Fig 2) along the entire knurled portion (40) and defining annular rings (Fig 2, annular rings 44, Col 4, lines 36-47); and
a tapered tip (Fig 2, tip 26, Col 3, lines 26-31) connected (see Fig 2) to the shank (22), the tapered tip (26) including a beginning portion (see Fig 2, Examiner notes a portion of tip 26 adjacent shank 22 as including a beginning portion) connected (see Fig 2) to the shank (22) and an ending portion (see Fig 2, Examiner notes a portion of tip 26 distal shank 22 as an ending portion) opposite (see Fig 2) the shank (22), wherein the tapered tip (26) does not (see Fig 2) include helical ribs (48) or annular grooves (42) at any point (see Fig 2) from the beginning portion (see Fig 2) of the tapered tip (26) to the ending portion (see Fig 2) of the tapered tip (26), wherein the tapered tip (26) has a generally parabolic profile (Fig 2, rounded end 28); and
an enlarged head (Fig 2, head 24) including:
a top surface (see Fig 2, Examiner notes a top surface of head 24 as a top surface),
a side surface (see Fig 2, Examiner notes a side surface of head 24 as a side surface) extending perpendicular (see Fig 2) to the top surface (see Fig 2), and
a bottom surface (see Fig 2) having a second portion (see Fig 2, Col 3, lines 26-31, Examiner notes chamfered where the head 24 faces the shank 22 as a second portion),
wherein the second portion (see Fig 2) is a tapered connection portion (see Fig 2, Col 3, lines 26-31, Examiner notes chamfered where the head 24 faces the shank 22 as including a tapered connection portion) connected (see Fig 2) at a first edge (see Fig 2) to the shaft (see Fig 2) at an end (see Fig 2) of the shank (22) opposite (see Fig 2) the tip (26) and connected (see Fig 2) at a second edge (see Fig 2);
wherein the shaft (see Fig 2) is tapered progressively larger (see Fig 2, Col 4, lines 55-64, Examiner notes diverges toward the head 24 and converges toward the tip 26 as tapered progressively larger) from the ending portion (see Fig 2) of the tip (26) to the enlarged head (24).
Lat fails to teach a top surface having a diameter of 8.0-8.4 mm, the side surface having a height of 1.00-1.20 mm with respect to the longitudinal axis, a bottom surface having a first portion, wherein the first portion extends parallel to the top surface and perpendicular to the side surface, wherein the first portion has a surface area equal to at least 50% of a surface area of the top surface, and wherein the second portion is connected at a second edge to the first portion, and wherein the second portion has a height of approximately 0.5 mm with respect to the longitudinal axis, wherein the shaft has a first diameter of 3.68-3.48 mm closer to the head and a second diameter of 3.55-3.45 mm closer to the tip, and wherein the knurled portion continuously extends from the beginning portion of the tapered tip up the shaft to the tapered connection portion of the enlarged head.
However, Dill teaches it is known in the art to provide a top surface (see Fig 1, Examiner notes a top surface of portion 16 distal portion 24 as a top surface) having a diameter (Fig 1, extents D1 and D2) of 8.0-8.4 mm (Paragraph 0019, Dill indicates 0.315-0.320”), the side surface (see Fig 1, Examiner notes a side surface of portion 16 as the side surface) having a height (Fig 1, dimension T) of 1.00-1.20 mm (Paragraph 0019, Dill indicates 0.035-0.050”) with respect to the longitudinal axis (see Fig 1), a bottom surface (see Fig 1, Examiner notes a bottom surface of portion 16 adjacent portion 24 as a bottom surface) having a first portion (see Fig 1, Examiner notes the bottom surface of portion 16 adjacent portion 24 as having a first portion) and a second portion (see Fig 1, Examiner notes a tapering portion of fastener 10 between portion 16 and portion 24 as a second portion), wherein the first portion (see Fig 1) extends parallel (see Fig 1) to the top surface (see Fig 1) and perpendicular (see Fig 1) to the side surface (see Fig 1), wherein the first portion (see Fig 1) has a surface area (Paragraphs 0019 and 0022, Examiner notes extents D1 and D2 having a diametrical extent of 0.315-0.320” and 0.215-0.250”, respectively, and extent D5 having a diametrical extent of 0.110-0.115” as has a surface area) equal to at least 50% (Paragraphs 0019 and 0022, Examiner notes extents D1, D2, and D5 as equal to at least 50%) of a surface area (Paragraph 0019, Examiner notes extents D1 and D2 having a diametrical extent of 0.315-0.320” and 0.215-0.250”, respectively, as a surface area) of the top surface (see Fig 1), and wherein the second portion (see Fig 1) is connected (see Fig 1) at a second edge (see Fig 1) to the first portion (see Fig 1).
Therefore, as evidenced by Dill, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide an adequately sized and shaped top surface having a diameter of 8.0-8.4 mm, the side surface having a height of 1.00-1.20 mm with respect to the longitudinal axis, a bottom surface having a first portion, wherein the first portion extends parallel to the top surface and perpendicular to the side surface, wherein the first portion has a surface area equal to at least 50% of a surface area of the top surface, and wherein the second portion is connected at a second edge to the first portion as taught by Dill to Lat. The rationale for supporting this conclusion of obviousness is to provide a head based on application and requirements, e.g. accommodating different driver structure characteristics such as pneumatically driven and gas-powered tools (Dill, Paragraph 0019), facilitate using the fastener in different environments, e.g. accommodating varying compositions, quantities, thicknesses, etc. of workpieces and substrates, etc.
Lat, in view of Dill fails to teach wherein the second portion has a height of approximately 0.5 mm with respect to the longitudinal axis, wherein the shaft has a first diameter of 3.68-3.48 mm closer to the head and a second diameter of 3.55-3.45 mm closer to the tip, and wherein the knurled portion continuously extends from the beginning portion of the tapered tip up the shaft to the tapered connection portion of the enlarged head.
However, Panasik teaches it is known in the art to provide wherein the shaft (Fig 1, shank 12) has a first diameter (see Fig 1, Paragraph 0028) of 3.68-3.48 mm closer to the head (Fig 1, head 15) and a second diameter (see Fig 1, Paragraph 0028) of 3.55-3.45 mm closer to the tip (Fig 1, tip 16) (see Fig 1, Paragraph 0028, Panasik indicates the outer diameter of knurled portion 36 is largest nearest to head 15 and gradually decreases in a diameter along the length of knurled portion 36 toward tip 16; Panasik further indicates the outer diameter of knurled portion 36 near head 15 is between about 0.13 inches and about 0.16 inches and the outer diameter of knurled portion 36 nearest tip 16 is between about 0.12 inches and about 0.155 inches).
Therefore, as evidenced by Panasik, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adequately size and shape the shaft of modified Lat to have a first diameter of 3.68-3.48 mm closer to the head and a second diameter of 3.55-3.45 mm closer to the tip as taught by Panasik. The rationale for supporting this conclusion of obviousness is to provide dimensions of the shaft based on application and requirements, e.g. material types, material thicknesses, clamping forces, pull-out resistance, etc.
Lat, in view of Dill and Panasik fails to teach wherein the second portion has a height of approximately 0.5 mm with respect to the longitudinal axis and wherein the knurled portion continuously extends from the beginning portion of the tapered tip up the shaft to the tapered connection portion of the enlarged head (Examiner respectfully notes Dill in Fig 1 illustrates portion 22 and portion 24 extending between portion 12 and portion 16; Panasik in Paragraph 0026 indicates knurled portion 36 should be long enough that it reaches the support member).
It would have been an obvious matter of design choice to have modified a height of the second portion and knurled portion as disclosed by modified Lat to have a height of approximately 0.5 mm with respect to the longitudinal axis and to continuously extend from the beginning portion of the tapered tip up the shaft to the tapered connection portion of the enlarged head, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. MPEP 2144.04 (IV)(A). The rationale for supporting this conclusion of obviousness is to facilitate using the fastener in different environments, e.g. accommodating varying compositions, quantities, thicknesses, etc. of workpieces and substrates.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 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.
Further, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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
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