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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on September 27, 2022. It is noted, however, that applicant has not filed a certified copy of the JP2022-003196 application as required by 37 CFR 1.55.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claim recitation of "a distal end surface of the peripheral wall is in contact with the cap" of independent claim 1 in combination with each of must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following informalities:
In Paragraph 0019, “through hole 23” should read “through hole 22”
In Paragraph 0023, “irregular part 24” should read “irregular part 25”
In Paragraph 0045, “inset” should read “insert”
In Paragraph 0046, “interest” should read “insert”
In Paragraph 0050, “side surface 23” should read “side surface 23c”
In Paragraph 0055, “inert” should read “insert”
In Paragraph 0064, “pressure-boded” should read “pressure-bonded”
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.
Claims 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.
Regarding claims 5-6, line 5, the recitation of “it extends outside” is unclear and renders the claim indefinite. Specifically, it is unclear what “it” is. For the purpose of examination, claims 5-6 will be read as “the part”.
Claims 13-14 recites the limitation "the cap body" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, claims 13-14 will be read as “a cap body”.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-4 and 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wada (US5020953A), hereinafter "Wada".
Regarding claims 1 and 2, Wada teaches an insert nut (Fig 11, nut 15) [to be embedded in a resin molded product], the insert nut (15) comprising:
a nut body (see Fig 11, Examiner notes a body of nut 15 as a nut body) having a through hole (see Fig 11) with an internal thread (see Fig 11), and a peripheral wall (Fig 11, portion 16) formed (see Fig 11) on one side (see Fig 11) of the through hole (see Fig 11); and
a cap (Fig 11, plate 17) fitted (see Fig 11) in the peripheral wall (16) of the nut body (see Fig 11);
wherein:
a proximal part (see Fig 11, Examiner notes a part of the body of nut 15 below portion 16 and plate 17 as a proximal part) is formed (see Fig 11) on a proximal end (see Fig 11, Examiner notes an outer end of portion 16 adjacent plate 17 as on a proximal end) of the peripheral wall (16) of the nut body (see Fig 11);
the cap (17) is **pressure-bonded** (Col 3, lines 1-8, Examiner notes by means of caulking a cylindrical portion projected from the upper portion of the nut inwardly and downwardly as pressure-bonded) and fixed (see Fig 11) between the proximal part (see Fig 11) and the peripheral wall (16) through a part (see Fig 11) thereof that is bent (see Fig 11, Col 3, lines 1-8) inside the through hole (see Fig 11); and
the peripheral wall (16) is **pressure-bonded** (Col 3, lines 1-8) to the cap (17) such that a [claim 1: distal end surface (see Fig 11, Examiner notes an inner end surface of portion 16 in contact with plate 17 as a distal end surface); claim 2: side surface (see Fig 11, Examiner notes an inner circumferential surface of portion 16 in contact with plate 17 as a side surface)] of the peripheral wall (16) is in contact (see Fig 11) with the cap (17).
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 insert nut, 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 lock nut disclosed by Wada, 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.
**Examiner notes that even though a product-by-process claim is limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985).
Regarding claims 3 and 4, Wada teaches the insert nut (15) according to [claim 3: claim 1; claim 4: claim 2] and further teaches wherein
the peripheral wall (16) is **pressure-bonded** (Col 3, lines 1-8) to the cap (17) to cover (see Fig 10) an entire circumference (see Fig 10) of an outer edge (see Figs 10-11) of the cap (17).
Regarding claims 13 and 14, as best understood, Wada teaches the insert nut (15) according to [claim 13: claim 1; claim 14: claim 2] and further teaches wherein
the cap body (see Fig 11, Examiner notes a body plate 17 as the cap body) is made of stainless steel (Col 3, lines 14-37, Wada indicates stainless steel) or aluminum alloy.
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(s) 5-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wada.
Regarding claims 5 and 6, as best understood, Wada teaches the insert nut (15) according to [claim 5: claim 1; claim 6: claim 2] but fails to teach wherein
each of a contact part of the cap, which is in contact with the peripheral wall, and a contact part of the cap, which is in contact with the proximal part, has a part that is inclined upward as it extends outside.
However, in an alternate embodiment in Fig 17 of Wada, Wada teaches it is known to provide wherein each (see Fig 17) of a contact part (Fig 17, protrusions 23) of the cap (Fig 17, plate 21), which is in contact (see Fig 17) with the peripheral wall (Fig 17, portion 4), and a contact part (see Fig 17, Examiner notes an underside of plate 21 having protrusions 23 as a contact part) of the cap (21), which is in contact (see Fig 17) with the proximal part (see Fig 17, Examiner notes a part of a body of nut 1 below portion 4 and plate 21 as the proximal part), has a part (see Fig 17, Examiner notes upper and lower sides of projections 23 as has a part) that is inclined upward (see Fig 17, Examiner notes projections 23 as is inclined upward) as it (see Fig 17) extends outside (see Fig 17).
Therefore, as evidenced by the alternate embodiment in Fig 17 of Wada, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine each of a contact part of the cap, which is in contact with the peripheral wall, and a contact part of the cap, which is in contact with the proximal part, has a part that is inclined upward as it extends outside as taught by the alternate embodiment in Fig 17 of Wada to Wada. The rationale for supporting this conclusion of obviousness is to facilitate preventing the annular flat plate from sliding movement relative to the nut (Wada, Col 5, lines 50-66).
Regarding claims 7 and 8, Wada teaches the insert nut (15) according to [claim 7: claim 1; claim 8: claim 2] but fails to teach wherein
the proximal part has an irregular shape breaking into the cap.
However, in alternate embodiment in Fig 8 of Wada, Wada teaches it is known to provide wherein the proximal part (see Fig 8, Examiner notes an interior angled part of a body of a nut below end 9, i.e. the interior angled part adjacent member B as the proximal part) has an irregular shape (see Fig 8, Examiner notes the interior angled part as has an irregular shape) breaking (see Fig 8, Examiner notes the interior angled part extending towards a part having end 9 as breaking) into the cap (see Fig 8, Examiner notes the part having end 9 as the cap).
Therefore, as evidenced by the alternate embodiment in Fig 8 of Wada, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine wherein the proximal part has an irregular shape breaking into the cap as taught by the alternate embodiment in Fig 8 of Wada to Wada. Additionally, 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 proximal part to be an irregular shape breaking into the cap as an obvious change in shape. MPEP 2144.04 (IV)(B). The rationale for supporting this conclusion of obviousness is to provide a shape based on application and use requirements, e.g. strength, mass, manufacturability, etc.
Regarding claims 9 and 10, Wada teaches the insert nut (15) according to [claim 9: claim 1; claim 10: claim 2] but fails to teach wherein:
the cap has a cap body, and a seal member provided between the nut body and the cap body; and
the cap is in contact with the nut body through the seal member.
However, in an alternate embodiment in Fig 9 of Wada, Wada teaches it is known to provide wherein: the cap (Fig 9, plate 3) has a cap body (Fig 9, member 13), and a seal member (see Fig 9, Examiner notes a body of plate 3 as a seal member) provided between (Col 5, lines 1-17) the nut body (Col 5, lines 1-17) and the cap body (13); and the cap (3) is in contact (Col 5, lines 1-17) with the nut body (Col 5, lines 1-17) through the seal member (see Fig 9).
Therefore, as evidenced by the alternate embodiment in Fig 9 of Wada, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine wherein the cap has a cap body, a seal member provided between the nut body and the cap body, and the cap is in contact with the nut body through the seal member as taught by Fig 9 of Wada to Wada. The rationale for supporting this conclusion of obviousness is to mitigate damage to male thread members made of a soft material (Wada, Col 5, lines 1-17).
Regarding claims 11 and 12, Wada teaches the insert nut (15) according to [claim 11: claim 1; claim 12: claim 2] but fails to teach wherein
the nut body is made of carbon steel and is plated with zinc, or is made of stainless steel.
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 the nut body to be made of carbon steel and is plated with zinc, or is made of stainless steel, 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 a material based on application and use requirements, e.g. strength, durability, flexibility, hardness, and potential aesthetics, etc.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOCK WONG whose telephone number is (571)270-1349. The examiner can normally be reached Monday - Friday, 7:30am - 5:00pm (ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at (571)272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.W./Examiner, Art Unit 3675 /KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675