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 Objections
Claim 5 is objected to because of the following informalities:
The phrase “the seal is continuous ring disposed around the head portion and between the head portion and the cap portion” is confusing because head portion and the cap portion is understood as same and not sure how seal can be in between head portion and the cap portion, however “seal is disposed between the head portion and the flange portion” may make sense here (emphasis added).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 recites the limitation "the cap portion" in line 1, which depends from claim 1, but the cap portion is first introduced in claim 2.
There is insufficient antecedent basis for this limitation in the claim.
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 1-3 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ordonio et al., US7581913 (hereinafter, Ordonio) in view of Baritz US5031262 (hereinafter, Baritz).
Regarding claim 1, Ordonio discloses a sealed cap assembly (30, see Fig. 1), the cap assembly comprising:
a cap 46, the cap having a lip 48 and an interior 66, the interior of the cap having an interior circumference 58, the cap having an upper surface 70, the upper surface being generally planar (see Figs. 1-3), the upper surface having a cone 50 embedded therein; and
a seal 60 having an outer circumference (see Fig. 3), the interior circumference of the cap being greater than or equal to the outer circumference of the seal so that the seal is perfectly and entirely fit within the interior of the cap (see Figs. 2-3), the seal configured to prevent unwanted leaks and/or debris (see column 5, lines 3-6).
Ordonio fails to teach a nail and the cone is adapted to allow the nail to rest.
However, Baritz teaches a similar Nail Button assembly including a nail (16), wherein a cone 14 on embedded on upper surface of the cap 12’ is adapted to allow the nail to rest therein thereby allowing the upper surface to remain planar (see Figs. 3-3a).
It is the Examiner’s position that cap as disclosed by Ordonio is capable of receiving nail as taught by Baritz so that head of the nail resting on the cone surface of the cap seals the tapered interior and/or allow cap cover to be mounted as a protection or decorative material without conflict.
Regarding claim 2, A cap nail assembly (see Ordonio Fig. 1 and Baritz Figs. 3-3a) comprising:
a head portion (see Baritz Fig. 3-3a showing head of nail 16);
a shank portion (see Baritz Figs. 3-3a);
a cap portion (52, see Fig. 2) disposed over the head portion and configured to be engaged by a fastening tool (considered obvious for a tool to be used for installation), the cap portion having an upper surface 70, the upper surface being generally planar, the upper surface having a cone embedded therein, the cone adapted to allow the nail to rest therein thereby allowing the upper surface to remain planar, the interior of the cap having an interior circumference;
a seal disposed between the head portion and the cap portion, the seal having an outer circumference, the interior circumference of the cap being greater than or equal to the outer circumference of the seal so that the seal is perfectly fit within the interior of the cap, the seal configured to prevent moisture and debris from penetrating through the cap portion and into the head portion.
Examiner considers claim 2 to be same as claim 1, except for the nail head and the shank. Further, it is the Examiner’s position that Ordonio in view of Baritz still teaches and/or make obvious of the limitation in claim 2. Please refer to the rejection and rationale set forth in claim 1 above.
Regarding claim 3, Ordonio in view of Baritz teaches and/or make obvious of the cap nail of claim 1, wherein Ordonio further teaches the seal comprises a resilient material (see Abstract).
Regarding claim 6, Ordonio in view of Baritz teaches and/or make obvious of the cap nail of claim 1, wherein Ordonio further teaches the seal comprises a gasket material (see column 6, lines 38-57).
Regarding claim 7, Ordonio in view of Baritz teaches and/or make obvious of the cap nail of claim 1, wherein Ordonio further teaches the cap portion is formed of a synthetic material (see column 6, lines 26-37).
Regarding claim 8, Ordonio in view of Baritz teaches and/or make obvious of the cap nail of claim 1, wherein the shank portion is configured for use with wood or other building materials.
It is the Examiner’s position that the shank portion of the nail as taught by Ordonio modified by Baritz is capable of being use with wood or other building materials. Examiner notes that it is obvious and within the general knowledge of one with ordinary skill in the art.
Claims 4-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ordonio in view of Baritz, in further view of Anglin et al., US20080102366 (hereinafter, Anglin).
Regarding claim 4, Ordonio in view of Baritz teaches and/or make obvious of the cap nail of claim 1, but fails to teach wherein the cap portion includes a flange portion extending downwardly from a top surface of the cap portion, and the seal is disposed between the head portion and the flange portion.
However, Anglin teaches a similar End Cap Seal for an Electrochemical Cell (see Fig. 2) where a cap portion 20 includes a flange portion 28 extending downwardly from a top surface of the cap portion, and the seal 40 is disposed between the head portion and the flange portion (see Figs. 1-2).
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 cap of Ordonio to have flanged portion as taught by Anglin to help achieve assembly a tight seal (see para. [0077]). Further, the examiner notes that the disclosure does not provide any evidence of criticality of the flanged portion.
Regarding claim 5. As best understood, Ordonio in view of Baritz teaches and/or make obvious of the cap nail of claim 1, wherein Ordonio further teaches that the seal 60 is a continuous ring disposed around the head portion (see Fig. 2), but fails to each wherein the ring is between the head portion and the cap portion.
However, Anglin teaches an assembly (see Fig. 2) where a seal 40 is disposed in between upper portion of the cap portion 20 and the flange portion 28 (see Figs. 1-2).
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 cap of Ordonio to have the seal disposed in between the upper surface of the cap portion and the flanged portion to help achieve assembly a tight seal (see para. [0077]).
Regarding claim 9, A cap nail assembly comprising:
a cap having a top portion and a cylindrical wall extending downwardly from the top portion, the cylindrical wall defining an inner space, the cap having an upper surface, the upper surface being generally planar, the upper surface having a cone embedded therein, the cone adapted to allow the nail to rest therein thereby allowing the upper surface to remain planar, the interior of the cap having an
interior circumference;
a nail member extending from the bottom of a nail head; and
a seal disposed inside the inner space of the cylindrical wall, the seal having an outer circumference, the interior circumference of the cap being greater than or equal to the outer circumference of the seal so that the seal is perfectly fit within the interior of the cap, the seal being configured to prevent or reduce the ingress of water, dust, or other debris through the inner space and into contact with the nail member, the seal being formed of a resilient and waterproof material and being shaped and sized to fit snugly inside the inner space of the cylindrical wall and to conform to the shape of the nail member.
It is the Examiner’s position that Ordonio in view of Baritz, in further view of Farber teaches and/or make obvious of the limitations above in claim 9. Rejections for claims 1-8 has been established above based on a cap nail assembly comprising a cap portion, flanged portion of the cap, a resilient seal and purpose of seal. Please refer to the rejections and rationale set forth above in claims 1-8.
Response to Arguments
Applicant’s arguments, filed 01/16/2026, with respect to the rejection(s) of claim(s) 1-9 under 35 USC 103 have been fully considered. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art. Please refer to the rejection and rationale set forth above for claims 1-9.
Conclusion
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.
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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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/DIL K. MAGAR/Examiner, Art Unit 3675
/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675