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
Claims 1-2, 5-6, and 13-14 have been amended. Claims 15-16 have been added. Therefore, claims 1-16 remain pending in the application. Applicant’s amendments to the Drawings, Specification, and Claims have overcome each and every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed March 24, 2026.
Priority
With respect to Priority on Pg 7 of Applicant’s Remarks filed June 18, 2026, Applicant has requested the Examiner to acknowledge receipt when the priority document is retrieved. The Examiner notes an attempt by the Office to electronically retrieve the foreign application JP2022-003196 to which priority is claimed as requested by the Applicant has failed. Accordingly, a certified copy of the JP2022-003196 application has not been received as set forth below.
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.
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 13-16 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);
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); and
the cap (17) seals (Col 5, lines 18-41, Examiner notes nut 15 having such a constitution is screwed with the male thread formed on the thread member and nut 15 is prevented from being loosened due to vibrations of the fastened article as seals) one end (see Fig 11) of the through hole (see Fig 11).
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, Wada teaches the insert nut (15) according to [claim 13: claim 1; claim 14: claim 2] and further teaches wherein
the cap (17) comprises stainless steel (Col 3, lines 14-37, Wada indicates stainless steel) or aluminum alloy.
Regarding claims 15 and 16, Wada teaches the insert nut (15) according to [claim 15: claim 1; claim 16: claim 2] and further teaches wherein
the nut body (see Fig 11) has an irregular part (see Fig 11, Col 5, lines 18-35, Examiner notes hexagon nut and caulking said portion 16 as has an irregular part) having an irregular surface (see Figs 10-11, Col 5, lines 18-35, Examiner notes an outer circumferential surface of nut 15 having a hexagon and portion 16 as having an irregular surface, i.e. lack of symmetry about a plane extending parallel to plate 17) on a side surface (see Figs 10-11) of the irregular part (see Fig 11).
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, 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 the part 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 the part (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 the part 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.
Response to Arguments
Applicant's arguments filed June 18, 2026 have been fully considered but they are not persuasive. With respect to Pgs 7-8 of Applicant’s Remarks filed June 18, 2026, Applicant argues that Wada fails to disclose a cap that seals one end of the through hole, as recited in claims 1 and 2. The Examiner respectfully disagrees and notes Merriam-Webster provides several definitions of “seal” of which one is to fix in position or close breaks in with a filling (as of plaster). Accordingly, as set forth above, Wada teaches the cap (17) seals (Col 5, lines 18-41, Examiner notes nut 15 having such a constitution is screwed with the male thread formed on the thread member and nut 15 is prevented from being loosened due to vibrations of the fastened article as seals) one end (see Fig 11) of the through hole (see Fig 11).
In response to Applicant's argument that Wada's nut 15 is used to provide a loosening prevention function, and its intended function and method of use are significantly different from the insert nut of claims 1 and 2, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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.
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).
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.W./Examiner, Art Unit 3675 /KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675
Prosecution Insights