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Claims 11-12 and 15-20 remain in the application as withdrawn.
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.
Claims 2, 5-6 and 8-10 are 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. In claim 2, there is no antecedent basis for “the respective thread”. In each of claims 5 and 6 there is no antecedent basis for “the respective reaction portion” because there are now claimed two reaction portions and it is unclear which would be respective or if both would be respective. In claim 8, “the at least one anti-rotation device” is indefinite because it is not a required feature of claim 7; in claim 7, the anti-rotation device is only one of a number of alternatives. The claims were examined as best understood.
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.
Claims 1-10 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Porter (US 8,142,125). In considering the embodiment shown in Figs. 11-13, Porter discloses a threaded member for a fastening arrangement comprising: a male member (120) with thread of the same hand at opposite ends (132, 128); permanent reaction portions (124, 126) are formed at each end of the male member; a anti-rotation device (122) in a retention portion (where the anti-rotation device is retained in the second end 124); the retention portion provides a shear portion where the shearing off event is a recitation of intended use of which Porter would be capable of with sufficient torque indicating failure; the male threaded member is permanent in the fastening arrangement; a first nut (50) which can be torqued with a counter-torque (column 5, lines 35-37); a second rear nut (110) which is located opposite the first nut with a work-piece (18, 20) therebetween and is prevented from rotating by the anti-rotation device (column 5, paragraph beginning line 59); the anti-rotation engages a reaction portion and would be capable of being released after being tightened. In regards to the amendments to the claims there is a reaction portion at each end of threaded male member where one reaction portion is indicated at 126 and the other reaction portion is anticipated by the recess at the opposite end as show in Fig. 12 which receives the ball-shaped projection 123. The limitation of each reaction portion configured to engage with a torque application tool is a functional limitation where reaction portion 126 can receive a tool as shown in Fig. 11C and at the other end the recess would also be capable receiving a tool such as a pin inserted into the recess or even the ball-shaped projection could read on the tool. See MPEP 2114 I.
Claims 1 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huber (US 11,215,079). Huber discloses a threaded member for a fastening arrangement comprising: a male member (18) with a thread at opposite ends (18b, 18d); permanent reaction portions (18c, 18e) are formed as the same slots at each end of the male member; the retention portion provides a shear portion where the shearing off event is a recitation of intended use of which Huber would be capable of with sufficient torque indicating failure; the male threaded member is permanent in the fastening arrangement; a first nut (19 or 22) which can be torqued with a counter-torque. Each reaction portion is configured to be engaged with tool when used for tightening or releasing the nut (column 3, paragraph beginning line 43).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Huber as applied to claim 1 above, and further in view of Porter. Huber is silent on the hand of the threads. Porter discloses a threaded male member with threads at each end where the threads are of the same hand. Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to have the thread of Huber in the same hand as disclosed in Porter because it would yield the same predictable results.
Response to Remarks
Applicant argues the objection to the specification noting that the “retention portion” is recited in paragraph 00385 and alluded to in paragraph 00296. In response, the examiner would like to have seen the specific claim language used in the claim incorporated in disclosure and referencing the drawings. However, as it is disclosed is sufficient to overcome the objection.
Applicant argues the amendment(s) have overcome the 112(b) rejection. In response, the examiner agrees but some other 112(b) rejections have been introduced as explained above.
Applicant argues the claims as amended define over Porter (US 8,142,126). In response, the examiner does not dispute applicant’s understanding Porter but Porter continues to anticipate the claims. The distinctions applicant points out between the claimed invention and Porter are all functional which do not equate to a structural distinction because all the functions would be inherent in Porter. As explained above Porter discloses a reaction portion at each end of threaded male member where one reaction portion is indicated at 126 and the other reaction portion is anticipated by the recess at the opposite end as show in Fig. 12 which receives the ball-shaped projection 123. The limitation of each reaction portion configured to engage with a torque application tool is a functional limitation where reaction portion 126 can receive a tool as shown in Fig. 11C and at the other end the recess would also be capable receiving a tool such as a pin inserted into the recess or even the ball-shaped projection itself could read on the tool. See MPEP 2114 I and 2173.05(g).
Additionally to address applicant’s concerns that Porter does not include the reaction portion at each end of the threaded male member, and in turn hopefully expedite the application, the reference to Huber (US 11,215,079) has been applied. As explained above, Huber discloses a male threaded member (18) with a reaction portion at each end (18c, 18e; column 3, lines 45-47).
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.
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