DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 . 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 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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 23 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
New claim 23 recites the limitation “a terminal end of the solid annular wall is split” in lines 1 and 2. This limitation finds no basis in the original disclosure and therefore qualifies as new matter. In fact, the specification explicitly teaches away from a terminal end of the solid annular wall being split on page 6, lines 28-30, in noting the assembly and method of assembly of the instant application avoid the need to handle parts with split ends.
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 17 and 20 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 17 recites the limitation “a second stepped abutment” in lines 1 and 2. It is unclear from the claim how a second stepped abutment can be present without first having the presence of a first stepped abutment. Claim 20 inherits this issue for depending upon claim 17.
Claim Rejections - 35 USC § 102
Claims 1-13 and 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,184,784 (Killian).
Regarding claim 1, Killian discloses a method (see Figures 1-6) for securing a fitting (18) to a composite material rod (10; see column 2, line 61) including, at least at an end part thereof, a bore or passage (shown accepting 22 in Figure 4; see also annotated Figure 1 below), the method comprising:
positioning a retainer (22) onto a tool (20) and thereafter inserting the tool into the bore to cause radial expansion of the end part of the rod (the portion of tool 20 holding retainer 22 being pulled or inserted into the bore from the left to the right in Figure 4);
the tool being used to insert the retainer into the expanded end part of the rod (see Figure 4); and
withdrawing the tool from the end part of the rod, the retainer serving to retain the end part of the rod in an expanded condition (see Figure 4 vs. Figure 5, and column 3, line 56, through column 4, line 11).
PNG
media_image1.png
530
512
media_image1.png
Greyscale
Figure 1. Annotated Figure 5 of Killian
Regarding claim 2, Killian discloses a fitting (18) defining a passage including a relatively large diameter section and a smaller diameter section is provided, the rod (10) extending through the passage (see Figure 5 and annotated Figure 1 above).
Regarding claim 3, Killian discloses the passage is of tapering form (see Figure 5).
Regarding claim 4, Killian discloses after expansion of the end part of the rod (10), the rod is moved relative to the fitting (18) such that the cooperation between the relatively large diameter section of the passage and the expanded end part of the rod causes compression of the end part of the rod between the fitting and the retainer (22; see Abstract).
Regarding claim 5, Killian discloses a curable resin material (see column 3, line 56, through column 4, line 11) is introduced into the bore (see annotated Figure 1 above) to fill the bore and voids between the bore and the retainer (22).
Regarding claim 6, Killian discloses the rod (10) is of solid form, and the bore (see annotated Figure 1 above) is drilled or otherwise formed in the end part thereof (see Figure 5).
Regarding claim 7, Killian discloses the rod (10) is of hollow, tubular form (see Figure 5).
Regarding claim 8, Killian discloses a composite rod and fitting assembly (see Figures 1-6 and annotated Figure 1 above), the assembly comprising:
a fitting (18) defining a passage of a form having a relatively large diameter section and a smaller diameter section (see annotated Figure 1 above), and
a composite material rod (10; see column 2, line 61), an end part of which is located within the passage, at least the end part of the rod is one of (a) a solid form rod being provided with a bore or passage having a pre-drilled end part, and (b) a hollow tube comprising a bore or passage having a pre-formed end part (see annotated Figure 2 below) having an inner diameter, the end part of the rod being of expanded diameter (see Figure 5), a retainer (22) located within the bore or passage, and retaining the end part of the rod in its expanded condition, the end part of the rod being compressed between the retainer and an adjacent part of the fitting (see Figure 4 vs. Figure 5, and column 3, line 56, through column 4, line 11).
PNG
media_image2.png
179
653
media_image2.png
Greyscale
Figure 2. Annotated Figure 4 of Killian
Regarding claim 9, Killian discloses cured resin (see column 3, line 56, through column 4, line 11) is located within the bore (see annotated Figure 1 above), filling the bore and voids between the retainer (22) and the end part of the rod (10; see Figure 5).
Regarding claim 10, Killian discloses the fitting (18) is of metallic form (see cross-section in Figure 5 and MPEP 608.02(IX)).
Regarding claim 11, Killian discloses the retainer (22) is of metallic form (see cross-section in Figure 5 and MPEP 608.02(IX)).
Regarding claim 12, Killian discloses the rod (10) is of solid form, and the bore (see annotated Figure 1 above) is drilled or otherwise formed in the end part thereof (see Figure 5).
Regarding claim 13, Killian discloses the rod (10) is of hollow, tubular form (the bore providing for a hollow, tubular form; see Figure 5).
Regarding claim 15, Killian discloses the passage is of tapering form (see Figure 5) and wherein, after expansion of the end part of the rod (10), the rod is moved relative to the fitting (18) such that the cooperation between the relatively large diameter section of the passage and the expanded end part of the rod causes compression of the end part of the rod between the fitting and the retainer (22; see Abstract).
Regarding claim 16, Killian discloses the tool (20) includes a first stepped abutment configured to hinder over-insertion of the tool within the bore (see annotated Figure 2 below).
PNG
media_image3.png
325
580
media_image3.png
Greyscale
Figure 3. Annotated Figure 4 of Killian
Regarding claim 17, Killian discloses the tool (20) includes a second stepped abutment configured to hinder axial movement of the retainer (see annotated Figure 2 above).
Regarding claim 18, Killian discloses a method for securing a fitting (18) to a composite material rod (10) including, at least at an end part thereof, a bore or passage (see annotated Figure 1 above), the method comprising:
positioning a retainer (22) onto a tool (20) and thereafter inserting the tool into the bore or passage to cause radial expansion of the end part of the rod (the portion of tool 20 holding retainer 22 being pulled or inserted into the bore from the left to the right in Figure 4), the tool including a first stepped abutment configured to hinder over-insertion of the tool within the bore or passage (see annotated Figure 2 above).
Regarding claim 19, Killian discloses withdrawing the tool (20) from the end part of the rod, the retainer serving to retain the end part of the rod in an expanded condition (see Figure 5).
Regarding claim 20, Killian discloses applying a load to the rod (10) to push the rod into a passage of the fitting (16) to a position in which an end part of the rod lies flush with an end of the fitting (see Figure 5).
Claims 8-13 and 21-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 3,660,887 (Davis).
Regarding claim 8, Davis discloses a composite rod and fitting assembly (see Figures 1-6), the assembly comprising:
a fitting (17) defining a passage (18) of a form having a relatively large diameter section and a smaller diameter section (see Figure 2), and
a composite material rod (10), an end part of which is located within the passage, at least the end part of the rod is one of (a) a solid form rod being provided with a bore or passage having a pre-drilled end part, and (b) a hollow tube comprising the bore or passage having a pre-formed end part having an inner diameter (see Figures 2 and 3), the end part of the rod being of expanded diameter (see Figure 3), a retainer (12) located within the bore or passage, and retaining the end part of the rod in its expanded condition, the end part of the rod being compressed between the retainer and an adjacent part of the fitting (see Figure 3).
Regarding claim 9, Davis discloses cured resin (21) is located within the bore (18), filling the bore and voids between the retainer (12) and the end part of the rod (10; see Figure 3 and column 4, lines 32-59).
Regarding claim 10, Davis discloses the fitting (17) is of metallic form (see column 5, lines 1-2).
Regarding claim 11, Davis discloses the retainer (12) is of metallic form (see column 4, lines 10-12).
Regarding claim 12, Davis discloses the rod (10) is of solid form, and the bore (18) is drilled or otherwise formed in the end part thereof (see Figure 3).
Regarding claim 13, Davis discloses the rod (10) is of hollow, tubular form (the bore 18 providing for a hollow, tubular form).
Regarding claim 21, Davis discloses the end part of the bore or passage (18) comprises a solid annular wall (formed at 17 in Figures 2-5).
Regarding claim 22, Davis discloses the solid annular wall (formed at 17 in Figures 2-5) has a uniform thickness (see especially Figures 4 and 5).
Regarding claim 23, Davis discloses a terminal end (at 19) of the solid annular wall is split (at portions 19 at the extreme end shown at the left side of Figure 1).
Claim Rejections - 35 USC § 103
In the interest of compact prosecution, the following alternative rejection of claims 10 and 11 is provided:
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Killian in view of US 10,132,343 (Hale).
Regarding claim 10, Killian discloses the assembly according to Claim 8, but does not explicitly disclose the fitting (18) is of metallic form.
Hale teaches a fitting (2) being of metallic form in order to provide a fitting that is not too brittle, but allows for reasonable elongated before failure (see column 3, lines 19-26). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the fitting of Killian to be of metallic form, as taught in Hale, in order to provide a fitting that is not too brittle, but allows for reasonable elongated before failure.
Regarding claim 11, Killian discloses the assembly according to Claim 8, but does not explicitly disclose the retainer (22) is of metallic form.
Hale teaches a retainer (3) being of metallic form in order to provide a retainer that possesses resistance to small, incidental compressive forces (see column 3, lines 44-49). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the retainer of Killian to be of metallic form, as taught in Hale, in order to provide a retainer that possesses resistance to small, incidental compressive forces.
Response to Arguments
Applicant's arguments, filed November 5, 2025, with respect to the 35 U.S.C. 102 rejection of claims 1 and 18 over Killian and associated 103 rejection(s) have been fully considered but they are not persuasive.
On pages 6-7, Applicant asserts Killian fails to disclose the limitation of independent claim 1 and independent claim 18 regarding the positioning of the retainer onto a tool and thereafter inserting the tool into the bore. The Examiner respectfully disagrees and directs Applicant’s attention to the portion of tool 20 holding retainer 22 being pulled or inserted into the bore from the left to the right in Figure 4. As shown in annotated Figure 3 below, the outlined portion of tool 20 and accompanying bolt position the retainer onto the tool and thereafter are inserted into the bore.
PNG
media_image4.png
178
458
media_image4.png
Greyscale
Figure 4. Annotated Figure 4 of Killian
On pages 7-8, Applicant asserts Killian fails to disclose the newly added limitation to independent claim 8, where at least the end part of the rod if one of a) a solid form rod being provided with a bore or passage having a pre-drilled end part, and (b) a hollow tube comprising a bore or passage having a pre-formed end part having an inner diameter. On the outset, it is to be noted limitations directed to how the end part is formed, such as by drilling, constitute product-by-process limitations. Applicant is reminded that “even though product-by-process claims are 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). As such, claim 8 only requires the bore or passage of the rod having an end part, and given the limitation “bore or passage” insinuates the structure of a through-hole, the end part must have a through-hole of some sort. As set forth above in the rejection of claim 8, Killian shows such an end part (see especially annotated Figure 2 above). This reasoning also applies to the rejection over Davis and Applicant’s remarks directed thereto on pages 8-9. See especially Figure 1 where the bore or passage 18 is already formed prior to the pouring of resin.
On page 8, Applicant asserts Killian fails to disclose the second stepped abutment as set forth in claim 17. On the outset, Applicant’s attention is directed to the 112(b) rejection above, where a second stepped abutment is recited without first reciting a first stepped abutment. As such, what is shown as the first stepped abutment in annotated Figure 3 above can read as both the first stepped abutment in claim 16 or the second stepped abutment in claim 17. Further, the structure shown at the second stepped abutment in annotated Figure 3 above provides a means of hindering axial movement of the retainer via it cooperation with the screw shown in Figure 4.
On page 8, Applicant asserts Killian fails to disclose the limitations of new claims 21-23. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant’s attention is directed to the 102 rejections over Davis above regarding these claims and to the 112(a) rejection above regarding claim 23.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Josh Skroupa whose telephone number is (571)270-3220. The examiner can normally be reached M-F 7:30 AM – 3:30 PM 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, Amber Anderson can be reached on (571)270-5281. 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.
/Josh Skroupa/Primary Examiner, Art Unit 3678
November 18, 2025