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 .
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.
Claims 1-7, 10-18 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kenny US20030231941 (hereinafter, Kenny).
Regarding claim 1, Kenny teaches a thread forming flow drilling fastener (10, see Fig. 1) comprising:
a threaded region 26 that defines a major diameter (MAD, as indicated in annotated Fig. 1) of a largest thread and a first minor diameter (MID, as indicated in annotated Fig. 1) on one side of the largest thread and a second minor diameter (see diameter of root 46 considered a minor diameter on either side of the major thread 30 in Fig. 1) on the other side of the largest thread; and
a tip region 16 including a flow drilling tip 20, wherein the tip region defines a tip
diameter (TD, as indicated in annotated Fig. 1);
wherein the tip diameter is greater than both the first minor diameter and the
second minor diameter of the largest thread (see Fig. 1), and further wherein the tip diameter is also less than or equal to the major diameter of the largest thread on the fastener (see Fig. 1).
Kenny fails to expressly teach, wherein the tip region is configured and arranged to create sufficient heat, via friction, to soften material of a workpiece adjacent the tip region, thereby creating a flowed/extruded portion of the workpiece.
However, it is the Examiner’s position that the self-drilling fastener of Kenny is capable of being configured and arranged to create sufficient heat, via friction, to soften material of a workpiece adjacent the tip region, since Kenny discloses slots 32 which forms flutes 28 act to direct material away from drilling tip 20 and the hole being drilled.
Kenny meets all the structural limitations of the claimed fastener, therefore the examiner considers above limitation, where the heat is created via friction to softer material of a workpiece, to be functional limitations. It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention for the fastener of Kenny to be configured to perform functional limitations above as an obvious function for self-drilling fastener used in metal substrate (see para. 0027-0029).
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Annotated Fig. 1
Regarding claim 2, Kenny teaches and/or make obvious of the thread forming flow drilling fastener according to Claim 1, and the tip diameter is less than or equal to the major diameter of the largest thread on the fastener (see Fig. 1), but fails to expressly teach wherein the tip diameter is greater than or equal to 1.02 times each of the first minor diameter and the second minor diameter.
However, Kenny does expressly teach that tip diameter is about 0.15 inches greater than the minor diameter of root 46 (see para. 0038).
Further, it is the Examiner’s position that it would have been an obvious matter of design choice to have modified the diameter of tip in Kenny to be 1.02 times each of minor diameters in order to maintain the strength, stability and function of the fastener as intended by the user, 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).
Regarding claim 3, Kenny teaches and/or make obvious of the thread forming flow drilling fastener according to Claim 1, and tip diameter is less than or equal to the major diameter of the largest thread on the fastener (see Fig. 1), but fails to expressly teach wherein the tip diameter is greater than or equal to 1.1 times each of the first minor diameter and the second minor diameter.
However, Kenny does expressly teach that tip diameter is about 0.15 inches greater than the minor diameter of root 46 (see para. 0038).
Further, it is the Examiner’s position that it would have been an obvious matter of design choice to have modified the diameter of tip in Kenny to be 1.1 times each of minor diameters in order to maintain the strength, stability and function of the fastener as intended by the user, 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).
Regarding claim 4, Kenny teaches and/or make obvious of the thread forming flow drilling fastener according to Claim 1, and tip diameter is less than or equal to the major diameter of the largest thread on the fastener (see Fig. 1), but fails to teach wherein the tip diameter is greater than or equal to 1.2 times each of the first minor diameter and the second minor diameter.
However, Kenny does expressly teach that tip diameter is about 0.15 inches greater than the minor diameter of root 46 (see para. 0038).
Further, it is the Examiner’s position that it would have been an obvious matter of design choice to have modified the diameter of tip in Kenny to be 1.2 times each of minor diameters in order to maintain the strength, stability and function of the fastener as intended by the user, 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).
Regarding claim 5, Kenny teaches and/or make obvious of the thread forming flow drilling fastener according to Claim 1, and the tip diameter is less than or equal to the major diameter of the largest thread on the fastener (see Fig. 1), but fails to teach wherein the tip diameter is greater than or equal to 1.25 times each of the first minor diameter and the second minor diameter.
However, Kenny does expressly teach that tip diameter is about 0.15 inches greater than the minor diameter of root 46 (see para. 0038).
Further, it is the Examiner’s position that it would have been an obvious matter of design choice to have modified the diameter of tip in Kenny to be 1.25 times each of minor diameters in order to maintain the strength, stability and function of the fastener as intended by the user, 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).
Regarding claim 6, Kenny teaches and/or make obvious of the thread forming flow drilling fastener according to Claim 1, wherein a cross-section of an outer distal end of the tip region 16 is rounded (see Figs. 1-2).
Regarding claim 7, Kenny teaches and/or make obvious of the thread forming flow drilling fastener according to Claim 1, wherein a cross-section of an outer distal end of the tip region 16 is polygonal (see Figs. 1-2 showing slots 32 and flutes 28).
Regarding claim 10, Kenny teaches and/or make obvious of the thread forming flow drilling fastener according to Claim 1, wherein the threaded region 26 includes threads of a uniform major diameter (see Fig. 2 along the length 52).
Regarding claim 11, Kenny teaches and/or make obvious of the thread forming flow drilling fastener according to Claim 1, further comprising a non-threaded and non-tapered region (44, see Fig. 1) between the threaded region 26 and the tip region 16.
Regarding claim 12, Kenny teaches a combined thread forming and flow drilling fastener 10 comprising:
a head portion 64 including a head region 18 and a drive arrangement 62 configured and
arranged for receiving a rotary driving force (para. [0042]);
a threaded region 26 including a helical thread 30 that defines a major diameter (MAD) defined as the largest diameter of the helical thread and a minor diameter (MID) defined as the smallest diameter of the helical thread of the threaded region, and wherein, when considered in cross-section, a pair of roots of the threaded region closest to the head region are of the same diameter (see SD, as indicated in annotated Fig. 1 above showing pair of roots showing same diameter); and
a flow drilling tip region 16 adjacent to the threaded region 26, wherein the tip region defines a tip diameter (TD) as the largest diameter of the tip region (see Fig. 1);
wherein the tip diameter (TD) is greater than the minor diameter (MID) and is less than or equal to the major diameter (MAD) of the threaded region (see Fig. 1).
Kenny fails to expressly teach, wherein the tip region is configured and arranged to create sufficient heat, via friction, to soften material of a workpiece adjacent the tip region, thereby creating a flowed/extruded portion of the workpiece.
However, it is the Examiner’s position that the self-drilling fastener of Kenny is capable of being configured and arranged to create sufficient heat, via friction, to soften material of a workpiece adjacent the tip region, since Kenny discloses slots 32 which forms flutes 28 act to direct material away from drilling tip 20 and the hole being drilled.
Kenny meets all the structural limitations of the claimed fastener, therefore the examiner considers above limitation, where the heat is created via friction to softer material of a workpiece, to be functional limitations. It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention for the fastener of Kenny to be configured to perform functional limitations above as an obvious function for self-drilling fastener used in metal substrate (see para. 0027-0029).
Regarding claim 13, Kenny teaches and/or make obvious of the combined thread forming and flow drilling fastener according to Claim 12, wherein the cross-section of the threaded region 26 is rounded (see Fig. 2 showing cross section of threaded region 26 where the helical thread is 30).
Regarding claim 14, Kenny teaches and/or make obvious of the combined thread forming and flow drilling fastener according to Claim 12, but fails to teach wherein the cross-section of the threaded region is polygonal.
Kenny discloses a rounded cross-section of threaded reason but lacks polygonal shape, however changes in shape have been established to be obvious to a person of ordinary skill in the art in the absence of a persuasive evidence that the particular configuration was significant. The disclosure does not provide any evidence of the criticality of the shape of the polygon. Therefore, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the threaded reason to have polygonal cross-section as an obvious change in shape. MPEP 2144.04 (iv)(b).
Regarding claim 15, Kenny teaches and/or make obvious of the combined thread forming and flow drilling fastener according to Claim 12, but fails to expressly teach wherein a terminating tip 22 of the fastener is sharp.
Kenny discloses a terminating tip 22 which appears to be sharp in Fig. 1 and the applicant self admits that different tip configurations are known to those or ordinary skill in the art, however changes in shape have been established to be obvious to a person of ordinary skill in the art in the absence of a persuasive evidence that the particular configuration was significant. The disclosure does not provide any evidence of the criticality of the shape of the sharp tip. Therefore, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the terminating tip as an obvious change in shape. MPEP 2144.04 (iv)(b).
Regarding claim 16, Kenny teaches and/or make obvious of the combined thread forming and flow drilling fastener according to Claim 12, but fails to expressly teach wherein a terminating tip of the fastener is rounded.
Kenny discloses a terminating tip 22 which appears to be rounded in Fig. 1 and the applicant self admits that different tip configurations are known to those or ordinary skill in the art, however changes in shape have been established to be obvious to a person of ordinary skill in the art in the absence of a persuasive evidence that the particular configuration was significant. The disclosure does not provide any evidence of the criticality of the shape of the sharp tip. Therefore, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the terminating tip as an obvious change in shape. MPEP 2144.04 (iv)(b).
Regarding claim 17, The combined thread forming and flow drilling fastener according to Claim 12, but fails to expressly teach wherein the flow drilling tip of the fastener is symmetrical.
Kenny discloses a terminating tip 22 which may be symmetrical in Fig. 1 and the applicant self admits that different tip configurations are known to those or ordinary skill in the art, however changes in shape have been established to be obvious to a person of ordinary skill in the art in the absence of a persuasive evidence that the particular configuration was significant. The disclosure does not provide any evidence of the criticality of the shape of the sharp tip. Therefore, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the terminating tip as an obvious change in shape. MPEP 2144.04 (iv)(b).
Regarding claim 18, Kenny teaches and/or make obvious of the thread forming and flow drilling fastener according to Claim 12, but fails to expressly teach wherein the flow drilling tip of the fastener is asymmetrical.
Kenny discloses a terminating tip 22 which appears to be asymmetrical in Fig. 1 and the applicant self admits that different tip configurations are known to those or ordinary skill in the art, however changes in shape have been established to be obvious to a person of ordinary skill in the art in the absence of a persuasive evidence that the particular configuration was significant. The disclosure does not provide any evidence of the criticality of the shape of the sharp tip. Therefore, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the terminating tip as an obvious change in shape. MPEP 2144.04 (iv)(b).
Regarding claim 20, Kenny teaches and/or make obvious of the thread forming flow drilling fastener according to Claim 1, wherein the first minor diameter is equal to the second minor diameter (see annotated Fig. 1).
Regarding claim 21, Kenny teaches and/or make obvious of the thread forming and flow drilling fastener according to Claim 12, wherein the diameters, when considered in cross-section, of each of the roots of the pair of roots of the threaded region closest to the head region are the same as the minor diameter (see SD in annotated Fig. 1 showing the roots of the threaded region closest to the head region are the same as the minor diameter).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kenny in view of Bongartz et al., US20120107070 (hereinafter, Bongartz).
Regarding claim 8, Kenny teaches and/or make obvious of the thread forming flow drilling fastener according to Claim 1, but fails to teach wherein the threaded region includes a tapered threaded region that includes sharp tapered lead threads near the tip region.
However, Bongartz teaches similar self-drilling fastening element where the threaded region (see 14, in Fig. 2) includes a tapered threaded region (TTR, as indicated in annotated Fig. 2) that includes sharp tapered lead threads near the tip region 16.
It is the Examiner’s position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify leading thread of Kenny to have a tapered threaded region as taught by Bongartz for effective and smooth drilling of metal substrate compared to untapered and wide thread.
Further, changes in shape have been established to be obvious to a person of ordinary skill in the art in the absence of a persuasive evidence that the particular configuration was significant. The disclosure does not provide any evidence of the criticality of the shape of tapered thread region in page 8, lines 15-23. Therefore, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of leading thread to be tapered as an obvious change in shape. MPEP 2144.04 (iv)(b).
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Regarding claim 9, Kenny teaches and/or make obvious of the thread forming flow drilling fastener according to Claim 1, but fails to teach wherein the threaded region includes a tapered threaded region that includes open crested tapered lead threads near the tip region.
However, Bongartz teaches the threaded region (see threaded shank 14) includes a tapered threaded region (TTR) that includes open crested tapered (see open crested (OC) in annotated Fig. 2 forming open crest when the top of the thread groove (crest) is not fully formed or is rounded) lead threads near the tip region 16.
It is the Examiner’s position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the fastener of Kenny to have a tapered threaded region include open crested taper as taught by Bongartz for effective and smooth transition from tip to threaded area while drilling metal substrate compared to untapered and wide thread.
Further, changes in shape have been established to be obvious to a person of ordinary skill in the art in the absence of a persuasive evidence that the particular configuration was significant. The disclosure does not provide any evidence of the criticality of the shape of tapered thread region in page 8, lines 15-23. Therefore, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of leading thread to be tapered as an obvious change in shape. MPEP 2144.04 (iv)(b).
Claims 19 and 23 rejected under 35 U.S.C. 103 as being unpatentable over Kenny in view of Simpson et al., US20190257344 (hereinafter, Simpson).
Regarding claim 19, Kenny teaches and/or make obvious of the thread forming and flow drilling fastener according to Claim 12, wherein the drive arrangement 62 is on a first side of the head region 64, but fails to teach wherein a second side of the head region includes an undercut region sized to capture an up-flow of material during flow drilling related to the thickness of substrate to be fastened such that the second side of the head region of the fastener sits flush upon final tightening.
However, Simpson teaches similar fastener (10”, see Fig. 5) where a second side of a head region 14 includes an undercut region 136.
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to have modified the fastener of Kenny to have undercut on other side of the head region as taught by Simpson to provide space for flowed/extruded material to be received (see para. [0056]).
Regarding claim 23, Kenny teaches the thread forming and flow drilling fastener according to Claim 12, but fails to teach wherein the threaded region terminates adjacent to the head portion.
However, Simpson teaches the threaded region terminates adjacent to the head portion (see Figs. 11D-11F).
It is the examiner’s position that it would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to have modified the fastener in Kenny to have the threaded region terminates adjacent to the head portion as taught by Simpson so the entire length of the threads are fully engaged for effective tightening of the flow drill screw.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Simpson et al., US20190257344A1 (hereinafter, Simpson) in view of Kenny.
Regarding claim 22, Simpson in claims 10 and 18 teaches a method for creating an assembly by attaching a first workpiece to a second workpiece via a flow drilling fastener, wherein the method comprises the steps of (see claim 18, lines 1-3):
superposing the second workpiece on the first workpiece to create a superposed structure (see claim 18, lines 4-5);
providing a flow drilling fastener comprising a head portion 14 including a head region and a drive arrangement (see Figs. 1-2) configured and arranged for receiving a rotary driving force (see claim 1); a threaded region including a helical thread (see Abstract) that defines a major diameter (external diameter of the threads in Figs. 1-2) defined as the largest diameter of the helical thread and a minor diameter (diameter between roots of the threads of the fasteners in Figs. 1-2) defined as the smallest diameter of the helical thread of the threaded region, and wherein, when considered in cross-section, a pair of roots of the threaded region closest to the head region are of the same diameter (see claim 7); and a flow drilling tip region 20 adjacent to the threaded region, wherein the tip region defines a tip diameter (see diameter of the tip region in Figs. 1-2) as the largest diameter of the tip region, wherein the tip region is configured and arranged to create sufficient heat, via friction, to soften material of the superposed structure adjacent the tip region, thereby creating a flowed/extruded portion of the superposed structure (see claim 18, page 9),
positioning the flow drill screw such that a drive member of a drive system is in operational contact with a drive arrangement of the head portion the flow drill screw (see claim 18);
rotating the drive member of the drive system while in operational contact with the drive arrangement of the flow drill screw, thereby rotating the flow drill screw (see claim 18);
bringing the flow drill screw into contact with a target area of the superposed structure while the flow drill screw is being rotated, wherein the second workpiece lacks an aperture in the target area (see claim 18);
penetrating the target area of the superposed structure with the tip portion of the rotating flow drill screw (see claim 18);
forming a through-draft in the superposed structure by continued rotation of the rotating flow drill screw (see claim 18);
forming a thread in the through-draft via rotational engagement of the helical thread with an inner periphery of the through-draft (see claim 18); and
tightening of the flow drill screw by continued rotation of the rotating flow drill screw, thereby forming the assembly (see claim 18);
wherein during the penetrating, the forming of the though-draft, the forming of the first and second threads, the fully engaging of the entire length, and the tightening, the rotating flow drill screw is moved in the longitudinal direction (see claim 18), and
wherein during the method, heat generated by friction from the rotating flow drill screw causes material of at least one of the first and second workpieces to soften, and whereby such softened material flows out of the through-draft to form a hollow extrusion (see claim 18).
Simpson fails to expressly teaches wherein the tip diameter is greater than the minor diameter and is less than or equal to the major diameter of the threaded region.
However, Kenny teaches a self-drilling fastener having a tip diameter greater than the minor diameter and is less than or equal to the major diameter of the threaded region (refer to annotated figure in claim 1 above).
It is the examiner’s position that it would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention for the fastener of Simpson to have tip diameter greater than minor diameter and be less than or equal to the major diameter of the threaded region as taught by Kenny so the drill tip can drill through the thicker metal substrate (see para. [0032]).
Further, it would have been an obvious matter of design choice to have modified the diameter to be as claimed above in order to effectively drill through thick metal substrate, 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).
Response to Arguments
Applicant's arguments filed 05/29/2026 have been fully considered but they are not persuasive.
The applicant argues the cited reference fails to disclose or suggest all of the features defined in independent claims 1 and 12.
The Examiner respectfully disagrees.
As previously set forth in previous Office Action, prior art meets structural limitations and limitations related to flow drilling has been considered functional limitations, which the prior art is capable of upon intended use. Please refer to MPEP 2114(ii) below for intended use.
[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
The applicant, in page 12 of Remarks, argues “the tip portion of the present invention creates sufficient heat to soften the material of the substrate so that it can be flowed/extruded without chipping or cutting, and thus without creating debris.”
The Examiner respectfully disagrees.
The examiner finds the applicant’s argument to be more limiting than the present claims because metal isn’t claimed or mentioned anywhere in claim. No limitation in present claim requires “flowed/extruded without chipping or cutting, and thus without creating debris”.
Further, both independent claims 1 and 12 comprises functional limitations where the tip region is configured and arranged to create a sufficient heat, via friction, to soften material of a workpiece adjacent the tip region, thereby creating a flowed/extruded portion of the workpiece, and the prior art is fully capable of carrying out such functional limitations given the right substrate, for e.g. carbon fiber reinforced plastic or plastic.
Please refer to MPEP 2173 related to Distinctly claiming of the invention and interpreting the claims.
Regarding new claims 22-23, please refer to the rejection and rationale set forth above.
Based on rejections and rationale above, previous Office Action stands.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US6698987 (Dicke) teaches a self-drilling and thread-forming connecting element comprising a threaded shank, a drilling tip, and the diameter of the tip is smaller than the thread diameter and bigger than the root diameter (see Fig. 1).
THIS ACTION IS MADE FINAL. 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 DIL K MAGAR whose telephone number is (571)272-8180. The examiner can normally be reached M-F 7:30-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/DIL K. MAGAR/Examiner, Art Unit 3675
/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675
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