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 .
Election/Restrictions
Applicant’s election without traverse of Group 1 (claims 3 and 14) and Species 2 (Figure 2) in the reply filed on August 5th, 2026 is acknowledged.
Claims 4-13 and 15-20 of Groups 2-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected insert, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 5th, 2026. Regarding Applicant’s remarks concerning claims 6, 7, 8, 9, 10, and 13, which read on the elected species (Species 2), Applicant is reminded that:
Selection of a species does not mean that all corresponding claims will be examined (this is controlled by the restriction group of claims elected), but it does limit what limitations can be incorporated into the elected claims during prosecution.
Although claims 6, 7, 8, 9, 10, and 13 read on the elected Species 2, this does not mean that these claims will be examined. Because these claims belong to non-elected groups (Groups 4, 5, 6, and 9), they are currently withdrawn from further consideration.
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.
The following claim limitation is currently interpreted under 35 U.S.C. 112(f):
Connection means in claim 1, which is interpreted as a connection element, defined as “an area of reduced thickness between the docking portion and the peripheral rim” in claim 2, and is either press-fitted to the docking portion [PG Pub: 0058] or connected via a frangible connection to the docking portion [PG Pub: 0057].
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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Annotated Figure 1. Figs. 17 and 18 disclosed by Mercs, annotated to show claimed limitations.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mercs (WO 2020/254735 A1).
Regarding claim 1, Mercs discloses an insert (pin 10 [abstract, Figs. 13, 17, 18, and 20, 0068]; see Annotated Figure 1) intended for the assembly (“assembling a sheet (40) and an iron-based metal part (80)” [abstract]), by electric resistance welding (“welding by electric resistance (90)” [abstract]), of a first part (sheet 40 [abstract, Fig. 18]) and of a second part (iron-based metal part 80 [abstract, Fig. 18]), the insert comprising:
a head part (barrel 22 and collar 21 of metal part 20 [Figs. 6, 7, 13, and 20, 0044]) comprising a docking portion (surface 23 of collar 21 [Fig. 6, 0054]), intended to receive a welding electrode (resistance welding electrode 90 is applied to the surface 23 [Figs. 6 and 7, 0054]; it should be noted that Figs. 6 and 7 illustrate the first embodiment, which does not include a peripheral rim (described below), however, with regard to the embodiment including a peripheral rim “The resistance welding operation for assembling sheets 40 and 80 is similar to that described for the first embodiment” [0077]),
a peripheral rim (second metal piece 30 [Figs. 13, 17, 18, and 20, 0068]), intended to bear against the first part (it can be seen in Fig. 18 that the outer surfaces of the second metal piece 30, namely the lower surface of the collar 31 and the peripheral surface of barrel 32 bear against sheet 40),
a body part (annular contact surface 24 [Fig. 13, 0045, 0055]) intended to extend through the first part (annular contact surface 24 is used to punch through sheet 40, described in [Figs. 2-4 and 0045]; it should be noted that [Figs. 2-4 and 0045] describe the punching operation for the first embodiment, which does not include a peripheral rim, however, “The different stages of the punching operation described above with the first embodiment of the hollow weld pin can be repeated with the second embodiment of the hollow weld pin consisting of the external part 30 and the internal part 20” [0075]), the body part having a distal end (lower end of annular contact surface 24 [Fig. 13]) intended to be welded to the second part (“using annular surface 24 of the internal part 20 to make the weld” [0077]; molten and slumped mass 27 occurs at annular surface 24 [Fig. 18, 0055]),
wherein the docking portion is connected to the peripheral rim by connection means (additional part 110 [Fig. 17, 0073]) configured to allow translation of the docking portion and of the body part with respect to the peripheral rim under the effect of a distal pressure exerted on the docking portion during the operation of assembling the first part and the second part (“an additional part 110 can be forcibly inserted between the inner surface 39 of the outer barrel 32 and the outer surface 25 of the barrel 22 to mechanically hold the outer part 30 and the inner part 20 together by force” [Fig. 17, 0073]; this creates a press-fit, which would require distal pressure and translation between the parts to assemble).
Regarding claim 2, Mercs discloses that the connection means comprise a connection element (additional part 110 [Fig. 17, 0073]) forming an area of reduced thickness between the docking portion and the peripheral rim (it can be seen in Fig. 17 that additional part 110 has reduced thickness (in the axial direction) compared to the docking portion and the peripheral rim).
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.
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Annotated Figure 2. Figs. 17 and 19 disclosed by Grojean, annotated to show breaking of the frangible connection element.
Claims 3 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Mercs (WO 2020/254735 A1) in view of Grojean (US 2014/0037398 A1).
Regarding claim 3, Mercs discloses that the connection element is a press-fit connection element (“an additional part 110 can be forcibly inserted between the inner surface 39 of the outer barrel 32 and the outer surface 25 of the barrel 22 to mechanically hold the outer part 30 and the inner part 20 together by force” [0073, Fig. 17]).
Mercs does not expressly disclose that the connection element is a frangible connection element.
Grojean teaches a bolt assembly (bolt 1 [0094, Figs. 17-19]; see Annotated Figure 2) with connection element (bracing means 22 [Figs. 17-19, 0092]) between a head part (screw head 10 [Figs. 17-19, 0092]) and an insert (insert 2 [Figs. 17-19, 0094]), wherein the connection element comprises a tubular element (tubular element 23 [Figs. 17-19, 0093]) and radial spreaded part (radial spreaded part 24 [Figs. 17-19, 0093]). Grojean further teaches that the connection element is a frangible connection element. As can be seen in Figs. 17-19 and described in [0092-0095], as the screw is threaded into the insert, the tubular element breaks away from the radial spreaded part, releasing the screw head to abut against an accessory to be attached to a wall.
According to MPEP 2143(B), it is obvious to substitute one known element for another to obtain predictable results. MPEP 2143(B) states that the rationale for this rejection must show that: (1) the prior art contained a device (method, or product) which differed from the claimed device by the substitution of some components (step, or element) with other components, (2) the substituted components and their functions were known in the art, and (3) one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable.
In this case, Mercs discloses a welding insert which includes a head part, a peripheral rim, and a body part, wherein a docking portion of the head part is connected to the peripheral rim by a press-fitted connection element, as described above with respect to claim 1. Grojean teaches a frangible connection element between a head part and a peripheral insert. The connection elements of both Mercs and Grojean provide a connection and bracing between a head part and a peripheral rim during a joining process. One of ordinary skill in the art would have obtained predictable results in substituting the connection element taught by Grojean for the connection element disclosed by Mercs because both connection elements are performing the function of connecting and bracing between components during a joining process, and the welding insert disclosed by Mercs has sufficient space to accommodate the components of the connection element taught by Grojean. Thus, one of ordinary skill in the art would have substituted the frangible connection element taught by Grojean for the press-fit connection element disclosed by Mercs before the effective filing date of the claimed invention because the substitution of one known element for another yields predictable results to one of ordinary skill in the art.
Regarding claim 14, Mercs in view of Grojean teaches (with citations directed to Mercs) that the insert comprises an axial abutment member (lower surface 26 of collar 21 [Fig. 13, 0069]) configured to block the peripheral rim against the first part at the end of the assembly of the first part and the second part (it can be seen in Figs. 13 and 18 that surface 26 blocks the peripheral rim (second metal piece 30) against the first part (sheet 40) when the welding assembly is completed [Figs. 13 and 18, 0068-0070]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARISSA RAE BOSS whose telephone number is (571)270-0274. The examiner can normally be reached 8:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ibrahime Abraham can be reached at (571)270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARISSA RAE BOSS/Examiner, Art Unit 3761
/TOPAZ L. ELLIOTT/Primary Examiner, Art Unit 3761
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