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. Therefore, claims 1 and 4-18 remain pending in the application. Applicant’s amendment to the Claims has overcome the claim objection previously set forth in the Non-Final Office Action mailed April 20, 2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: fastening means in claims 1 and 9.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claims 1 and 4-10 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.
Claim 1 recites the limitation "the friction value" in line 28. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, claim 1 will be read as “a friction value”.
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, 4, 7, and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Radanovic (DE102019211757A1), hereinafter "Radanovic", in view of Steffenfauseweh et al. (US20100278612A1), hereinafter "Steffenfauseweh".
Regarding claim 1, as best understood, Radanovic teaches an adjustment element (see Figs 8-10, Paragraph 0066, Examiner notes axial compensation element 11 can be formed in two segments, here in the form of hollow cylinder halves 11a, 11b as an adjustment element) with which [a first component (Fig 8, component 6) is fastenable and positionable in a space (see Figs 8-10, Paragraph 0059, Examiner notes compensating axial tolerances between the two components 6 and 7 as is fastenable and positionable in a space)], including the following features:
a. a hollow screw (Fig 8, hollow cylinder halves 11a, 11b) with a first (see Fig 8, Examiner notes an end of hollow cylinder halves 11a, 11b adjacent component 7 as a first) and a second axial end (see Fig 8, Examiner notes an end of hollow cylinder halves 11a, 11b distal component 7 as a second axial end), a drive feature (see Fig 8, Examiner notes upper portions of halves 11a, 11b as a drive feature) and an outer thread (Fig 8, thread 11.1) to which [the first component (6) is retainable (see Fig 8) and is positionable (see Fig 8) in an axial direction (see Fig 8) of the hollow screw (11a, 11b)],
b. adjacent (see Fig 8) to the first axial end (see Fig 8), the hollow screw (11a, 11b) comprises a fastening collar (Fig 8, section 11.3) which is configured integrally (see Fig 8) and projects (see Fig 8) radially to an inside (see Fig 8) and which encompasses a tubular fastening opening (Fig 8, passage 11.4) of the hollow screw (11a, 11b), and
c. an axial support sleeve (Fig 8, element 9) is arranged (see Fig 8) within the tubular fastening opening (11.4), wherein the axial support sleeve (9) is flush (see Fig 8, Paragraph 0070, Examiner notes the head 5.1 of the connecting bolt 5 comes into contact with the base section 11.3 of the axial compensation element 11 via the element 9 and exerts an axial force on the axial compensation element 11, it emerges from the first component 6 until rests against the second component 7 as is flush) with the hollow screw (11a, 11b) at the first axial end (see Fig 8) and projects beyond an end (see Fig 8, Examiner notes a portion of element 9, i.e. a flange of element 9, projecting beyond surface 11.5 as projects beyond an end), located inside (see Fig 8) of the hollow screw (11a, 11b), of the tubular fastening opening (11.4) so that the hollow screw (11a, 11b) is [rotatably fastenable (see Fig 8) with a fastening means (Fig 8, bolt 5) passing (see Fig 8) through the axial support sleeve (9) to a second component (Fig 8, component 7), in such a manner that an outer rim (see Fig 8, Paragraph 0070) of the hollow screw (11a, 11b) and a first axial end (see Fig 8, Examiner notes an end of element 9 distal the flange of element 9 as a first axial end) of the axial support sleeve (9) rest against (see Fig 8, Paragraph 0070, Examiner notes compensating for the offset VS as rest against) the second component (7)], wherein
d. a support disc (Fig 8, flange 5.6) is supported (see Fig 8) on a second axial end (see Fig 8, Examiner notes an end of element 9 adjacent the flange of element 9 as a second axial end) of the axial support sleeve (9), wherein an outer disc diameter (see Fig 8, Examiner notes an outer diameter of flange 5.6 as an outer disc diameter) of the support disc (5.6) exceeds (see Fig 8) an outer diameter (see Fig 8, Examiner notes an outer diameter of element 9 below the flange of element 9 as an outer diameter) of the axial support sleeve (9) and
f. the second axial end (see Fig 8) of the axial support sleeve (9) has partial recesses, ribbings, teeth, or any selection (see Fig 8, Paragraph 0018, Examiner notes plastic material and a surface of the flange of element 9 adjacent flange 5.6 as any selection) or combination thereof [between (see Fig 8) the fastening means (5) and the axial support sleeve (9) transmitted (see Fig 8, Paragraph 0070) by the support disc (5.6)].
Radanovic fails to teach d. a support disc with a central opening and an opening diameter of the support disc is smaller than an inner diameter of the axial support sleeve so that a lateral tolerance compensation is providable by a combination of the axial support sleeve, the support disc and the fastening means, wherein e. the support disc is arranged between an underside of a head of the fastening means and the second axial end of the axial support sleeve such that [mechanical fastening tensions are transferrable from the underside of the head of the fastening means via the support disc to the axial support sleeve and into the second component], and f. [for increasing the friction value between the fastening means and the axial support sleeve transmitted by the support disc].
However, Steffenfauseweh teaches it is known in the art to provide d. a support disc (Fig 2, washer 30) with a central opening (see Fig 3a, Examiner notes a central opening of washer 30 as a central opening) and an opening diameter (see Fig 3a, Examiner notes a diameter of the central opening of washer 30 as an opening diameter) of the support disc (30) is smaller (see Fig 3a) than an inner diameter (see Fig 3a, Examiner notes an inner diameter of sleeve 60 as an inner diameter) of the axial support sleeve (Fig 2, sleeve 60) so that a lateral tolerance compensation is providable by a combination (see Figs 4c-4e, Paragraphs 0030-0031 and 0035, Examiner notes after the adjustment of the desired position of the component in the xy plane as a lateral tolerance compensation is providable by a combination) of the axial support sleeve (60), the support disc (30) and the fastening means (Fig 2, means 40), wherein e. the support disc (30) is arranged (see Fig 2) between an underside (see Fig 2) of a head (Fig 2, head 42) of the fastening means (40) and the second axial end (see Fig 2, Examiner notes an end of sleeve 60 adjacent washer 30 as the second axial end) of the axial support sleeve (60) such that [mechanical fastening tensions are transferrable (see Fig 2, Paragraph 0029, Examiner notes sleeve 60 is preferably composed of metal or another stabilizing material for reducing the seating stress as mechanical fastening tensions are transferrable) from the underside (see Fig 2) of the head (42) of the fastening means (40) via (see Fig 2) the support disc (30) to the axial support sleeve (60) and into the second component (Fig 1, sheet 70)], and f. [for increasing the friction value (Paragraph 0029, Examiner notes sleeve 60 is preferably composed of metal as for increasing the friction value) between (see Fig 2) the fastening means (40) and the axial support sleeve (60) transmitted (see Fig 2) by the support disc (30)].
Therefore, as evidenced by Steffenfauseweh, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the support disc of Radanovic to be a support disc with a central opening and an opening diameter of the support disc is smaller than an inner diameter of the axial support sleeve so that a lateral tolerance compensation is providable by a combination of the axial support sleeve, the support disc and the fastening means, and wherein the support disc is arranged between an underside of a head of the fastening means and the second axial end of the axial support sleeve such that mechanical fastening tensions are transferrable from the underside of the head of the fastening means via the support disc to the axial support sleeve and into the second component, and increasing the friction value between the fastening means and the axial support sleeve transmitted by the support disc as taught by Steffenfauseweh. Additionally, it would have been obvious to one having ordinary skill in the art at the time of filing to have modified the support disc of Radanovic to be a support disc with a central opening as taught by Steffenfauseweh in order to make the device separable, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. MPEP 2144.04 (V)(C). The rationale for supporting this conclusion of obviousness is to provide an assembly based on application and requirements, e.g. facilitating use of different sized bolts and/or washers, commonizing bolts and/or washers, etc. as well as providing a desired material for reducing the seating stress of a plastic variant of the inner element (Steffenfauseweh, Paragraph 0029).
Claim language set in brackets set forth above and below in this office action are considered by the Examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of an adjustment element, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the Examiner maintains that the combination of the axial compensation element disclosed by Radanovic and the adjustment element disclosed by Steffenfauseweh, is indeed capable of the intended use statements. Note that it has been held that 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 satisfying the claimed structural limitations.
Regarding claim 4, as best understood, modified Radanovic teaches the adjustment element (see Figs 8-10) according to claim 1 and further teaches the hollow screw (11a, 11b) of which comprises the drive feature (see Fig 8) on an inside (see Fig 8) and/or an outside (see Fig 8).
Regarding claim 7, as best understood, modified Radanovic teaches the adjustment element (see Figs 8-10) according to claim 1 and further teaches in which the hollow screw (11a, 11b) and/or the axial support sleeve comprise(s) a remainder of a released and previously connecting predetermined breaking point (see Figs 8-10, Paragraph 0066, Examiner notes halves 11a, 11b are connected to each other by pairs of spring elements or elastic webs that are axially spaced apart from each other and can also be clipped together, with the connection being designed to be correspondingly elastic and, in particular, movable in the axial direction as comprise(s) a remainder of a released and previously connecting predetermined breaking point) between the axial support sleeve (9) and the hollow screw (11a, 11b).
Regarding claim 9, as best understood, modified Radanovic teaches a structural component (Fig 8, component 7) with a fastening opening (Fig 8, opening 7.1) to which the adjustment element (see Figs 8-10) according to claim 1 (see claim 1) is fastened (see Fig 8) with a fastening means (Fig 8, bolt 5).
Regarding claim 10, as best understood, modified Radanovic teaches the structural component (7) according to claim 9 and further teaches wherein the first component (6) is fastened (see Fig 8) on the outer thread (11.1) of the hollow screw (11a, 11b) of the adjustment element (see Figs 8-10) so that tolerances (see Fig 8) between the structural component (7) and the first component (6) are settable (see Fig 8, Paragraph 0059, Examiner notes compensating radial and axial tolerances as tolerances between the structural component and the first component are settable).
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Radanovic, in view of Steffenfauseweh and Heinrichs (DE102018126958A1), hereinafter "Heinrichs".
Regarding claim 5, as best understood, modified Radanovic teaches the adjustment element (see Figs 8-10) according to claim 4 but fails to teach the hollow screw of which comprises an outer polygon as the drive feature at the first axial end, which encompasses at least partly the tubular fastening opening.
However, Heinrichs teaches it is known in the art to provide the hollow screw (Fig 4a, element 30) of which comprises an outer polygon (Fig 4a, feature 42) as the drive feature (see Fig 4a, Paragraph 0055) at the first axial end (Fig 4a, end 36), which encompasses (see Fig 4a) at least partly (see Fig 5b) the tubular fastening opening (Fig 4a, opening 38).
Therefore, as evidenced by Heinrichs, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine an adequately sized and shaped outer polygon as the drive feature at the first axial end, which encompasses at least partly the tubular fastening opening as taught by Heinrichs to modified Radanovic. The rationale for supporting this conclusion of obviousness is to provide a drive feature to facilitate screwing the element into a component (Heinrichs, Paragraph 0055).
Regarding claim 6, as best understood, modified Radanovic teaches the adjustment element (see Figs 8-10) according to claim 4 and further teaches the hollow screw (11a, 11b) of which includes a form fit inner drive feature (see Fig 10) adjacent (see Fig 8) to the second axial end (see Fig 8).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Radanovic, in view of Steffenfauseweh.
Regarding claim 8, as best understood, modified Radanovic teaches the adjustment element (see Figs 8-10) according to claim 1 but fails to teach in which the hollow screw and the axial support sleeve are made of a same plastic material or of different plastic materials.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified materials of the hollow screw and the axial support sleeve to be made of a same plastic material or of different plastic materials, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. It is also a common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, and potential aesthetics, etc., for the application, intended use, and design considerations for that material. MPEP 2144.07. The rationale for supporting this conclusion of obviousness is to provide materials based on application and use requirements, e.g. strength, durability, flexibility, hardness, and potential aesthetics, etc.
Response to Arguments
Applicant's arguments filed July 20, 2026 have been fully considered but they are not persuasive. With respect to amended claim 1 on Pg 7 of Applicant’s Remarks filed July 20, 2026, Applicant argues Radanovic nor Steffenfauseweh considers the friction value between fastening means and support sleeve as not being sufficient; in particular, no cited prior art document discuss the friction value between a fastening means and a support sleeve as set forth in claim 1 or otherwise. The Examiner agrees with Applicant that Radanovic nor Steffenfauseweh considers the friction value between the fastening means and support sleeve as not being sufficient, however, as set forth above, the Examiner notes that Radanovic indicates in Paragraph 0018 that the radial compensation element is formed from a plastic material or a spring metal material and Steffenfauseweh indicates in Paragraph 0029 that sleeve 60 is preferably composed of metal. Accordingly, the combination of teachings of a plastic material radial compensation element of Radanovic and a metal sleeve of Steffenfauseweh would result in increasing the friction value.
With respect to Pgs 7-8 of Applicant’s Remarks, Applicant argues the person of ordinary skill in the art does, thus, not have any reason to modify this construction, in particular as the additional usage of the disc 30 of Steffenfauseweh in the device of Radanovic does not have any advantage. The Examiner agrees with the Applicant that the additional usage of the disc 30 of Steffenfauseweh in the device of Radanovic does not have any advantage, however, the Examiner respectfully notes that the modification as set forth in the Non-Final Office Action mailed April 20, 2026 and as set forth above, entails modifying the existing support disc of Radanovic, i.e. providing a central opening or making the device separable, rather than providing an additional support disc.
Conclusion
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.
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/J.W./Examiner, Art Unit 3675 /KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675
