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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 9, 11 – 13, 15- 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson (U.S. Patent No. US 6,957,939 B2) in view of Harrison et al. (PCT Patent Application Publication No. WO 2007/049064 A1).
Regarding claim 1, as best understood in view of the 112(b) issue noted above, Wilson discloses a fastener assembly (510) comprising a fastener body (521) having a threaded portion (527) at a lower end, and a stem portion (524) at an upper end; a decorative cap (514) having side walls (553) defining a wrenching surface and a top surface (551) connecting the side walls (553) wherein the decorative cap (514) is secured to the stem portion (524) on the upper end of the fastener body (521) (Figure 16; column 6, lines 23 – 54).
Wilson discloses the claimed invention except for a decorative laser mark defined on the top surface of the cap, and wherein the cap is secured to the fastener body after the decorative laser mark is applied to the cap.
Harrison is directed to a method of laser marking a surface. Harrison specifically discloses a method of laser marking a surface (Page 1, line 3; page 14, lines 17 – 30).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wilson to a include a decorative laser mark defined on the top surface of the cap as taught by Harrison, as the references are directed to a decorative capped wheel nut (Wilson) and a method for laser marking a surface of automotive components (Harrison). As disclosed by Harrison, it is well known to laser mark a surface of an automotive component. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson to include a decorative laser mark defined on the top surface of the cap as taught by Harrison, as such a modification would provide a decorative capped wheel nut.
Wilson in view of Harrison does not disclose wherein the cap is secured to the fastener body after the decorative laser mark is applied to the cap. However, Wilson discloses that the cap (514) is decorative (column 6, lines 25 – 26) and that the decorative cap is secured to the fastener body (521) (column 6, line 27 - the nut insert 512 comprises a body 521; and column 6, lines 53 – 54 – the decorative cap 514 is press fit onto the insert 512). Thus, the cap of Wilson is secured to the fastener body after it is decorative. Since the cap of Wilson is secured to the fastener body after the cap is decorative, it would be obvious to apply the decorative laser mark to the cap before securing the cap to the fastener body.
There are only 2 options regarding when the decorative laser mark can be applied to the cap, either after the cap is secured to the fastener body or before the cap is secured to the fastener body. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to secure the cap to the fastener body after laser marking the top surface as 1) there was a need in the art to apply a decorative laser mark to the cap of a fastener assembly, 2) there are only a finite number of identified, predictable potential solutions regarding applying a decorative laser mark to the cap of a fastener assembly (there are 2, securing the cap to the fastener body after the decorative laser mark is applied to the cap, and securing the cap to the fastener body before the decorative laser mark is applied to the cap), 3) one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success, 4) the device of Wilson would work equally as well if the cap were secured to the fastener body before or after laser marking the top surface (the decorativeness of the cap of Wilson would have no impact on the functionality of Wilson. Regardless of whether the decorative laser mark were applied to the cap before or after the cap is secured to the fastener body, the capped wheel nut of Wilson would work equally well for the intended purpose of securing a vehicle wheel, as the presence or lack of a decorative laser mark is not related to the functionality of the capped wheel nut). Further, the application does not disclose any criticality of securing the cap to the fastener body after laser marking the top surface. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the cap to be secured to the fastener body after the decorative laser mark is applied to the cap.
Regarding claim 2, Harrison further discloses wherein the decorative laser mark has a white color (page 4, line 12 – page 5, line 8).
Regarding claim 3, Wilson and Harrison disclose the claimed invention except for wherein the decorative laser mark has an L-value being at least 70. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the decorative laser mark to have an L-value being at least 70, since it has been held that were the general conditions of claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, the application does not disclose any criticality of a L-value being at least 70. Additionally, the device of Wilson as modified by Harrison would function just as well for its intended purpose upon such a modification.
Regarding claim 4, Wilson and Harrison disclose the claimed invention except for wherein the white color of the decorative laser mark has an a-value less than 4.5 and a b-value less than 9.5. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the white color of the decorative laser to have an a-value less than 4.5 and a b-value less than 9.5, since it has been held that were the general conditions of claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, the application does not disclose any criticality of the white color of the decorative laser mark having an a-value less than 4.5 and a b-value less than 9.5. Additionally, the device of Wilson as modified by Harrison would function just as well for its intended purpose upon such a modification.
Regarding claim 5, Wilson further discloses wherein the cap (514) is formed of stainless-steel material (column 6, line 55).
Regarding claim 6, Harrison further discloses wherein the decorative laser mark has a surface finish being a diffuse surface (page 8, lines 22 – 24).
Regarding claim 7, Harrison further discloses wherein the diffuse surface has a surface roughness being greater than a surface finish of the cap (page 4, lines 8 – 16; page 8, lines 22 – 24; Harrison discloses creating a roughened region in making the mark which is a diffuse surface, and by roughening a region of the cap to create the mark, the diffuse surface inherently has a surface roughness greater than a surface finish of the cap).
Regarding claim 8, Harrison further discloses wherein the surface roughness Ra is in the range of 39 to 75 μin (page 7, lines 14 – 17).
Regarding claim 9, Wilson in view of Harrison discloses the claimed invention except for wherein the decorative laser mark has a color being at least one of black, red, green, yellow or blue or a combination thereof. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the decorative laser mark to have a color being at least one of black, red, green, yellow or blue or a combination thereof as a matter of design choice. The application does not disclose any criticality of the decorative laser mark having a color being at least one of black, red, green, yellow or blue or a combination thereof. Further, the device of Wilson as modified by Harrison would function just as well for its intended purpose upon such a modification.
Regarding claim 11, Wilson in view of Harrison discloses the claimed invention except for wherein the decorative laser mark has line spacing less than 0.7 mm. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the decorative laser mark to have line spacing less than 0.7 mm, since it has been held that were the general conditions of claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, the application does not disclose any criticality of the decorative laser mark having line spacing less than 0.7 mm. Additionally, the device of Wilson as modified by Harrison would function just as well for its intended purpose upon such a modification.
Regarding claim 12, Wilson further discloses wherein the fastener body has a friction-controlled coating (column 2, lines 5 – 8; column 6, lines 35 – 48).
Regarding claim 13, Wilson discloses a method of forming a fastener, comprising forming a cap (514) having a plurality of wrenching surfaces (553) and a top surface (551); forming a fastener body (521) having a threaded portion (527) adjacent a first end and a stem (524) adjacent a second end (Figure 16; column 6, lines 23 – 54).
Wilson does not disclose laser marking a decorative mark on the top surface of the cap.
Harrison is directed to a method of laser marking a surface. Harrison specifically discloses a method of laser marking a surface (Page 1, line 3; page 14, lines 17 – 30).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wilson to a include a decorative laser mark on the top surface of the cap as taught by Harrison, as the references are directed to a decorative capped wheel nut (Wilson) and a method for laser marking a surface of automotive components (Harrison). As disclosed by Harrison, it is well known to laser mark a surface of an automotive component. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson to a include a decorative laser mark on the top surface of the cap as taught by Harrison, as such a modification would provide a decorative capped wheel nut.
Wilson in view of Harrison does not disclose securing the cap to the stem after laser marking the top surface. However, Wilson discloses that the cap (514) is decorative (column 6, lines 25 – 26) and that the decorative cap is secured to the stem (524) (column 6, lines 27 - 29 - the nut insert 512 comprises a body 521 including a hex-shaped section 524; and Fig. 16; column 6, lines 53 – 54 – the decorative cap 514 is press fit onto the insert 512). Thus, the cap of Wilson is secured to the stem after it is decorative. Since the cap of Wilson is secured to the stem after the cap is decorative, it would be obvious to apply the decorative laser mark to the cap before securing the cap to the stem.
There are only 2 options regarding when the decorative laser mark can be applied to the cap, either after the cap is secured to the stem or before the cap is secured to the stem. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to secure the cap to the stem after laser marking the top surface as 1) there was a need in the art to apply a decorative laser mark to the cap of a fastener body, 2) there are only a finite number of identified, predictable potential solutions regarding applying a decorative laser mark to the cap of a stem (there are 2, securing the cap to the stem after the decorative laser mark is applied to the cap, and securing the cap to the stem before the decorative laser mark is applied to the cap), 3) one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success, 4) the device of Wilson would work equally as well if the cap were secured to the stem before or after laser marking the top surface (the decorativeness of the cap of Wilson would have no impact on the functionality of Wilson. Regardless of whether the decorative laser mark were applied to the cap before or after the cap is secured to the stem, the capped wheel nut of Wilson would work equally well for the intended purpose of securing a vehicle wheel, as the presence or lack of a decorative laser mark is not related to the functionality of the capped wheel nut). Further, the application does not disclose any criticality of securing the cap to the stem after laser marking the top surface. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the cap to be secured to the stem after the decorative laser mark is applied to the cap.
Regarding claim 15, Wilson further discloses wherein the cap (514) is secured to the stem by crimping (column 6, lines 41 – 44).
Regarding claim 16, Wilson further discloses wherein the cap (514) is formed of stainless steel (column 6, line 55).
Regarding claim 17, Harrison further discloses wherein the laser marking comprises laser etching to form a white laser mark (page 4, line 12 – page 5, line 8).
Regarding claim 18, Harrison further discloses wherein the laser marking comprises laser annealing to form a colored laser mark (page 4, line 12 – page 5, line 8; white is a color).
Regarding claim 20, Wilson further discloses applying a friction-controlled coating to the fastener body (column 2, lines 5 – 8; column 6, lines 35 – 48).
Wilson discloses the claimed invention except for applying the friction-controller coating before securing the cap. However, there are only 2 options, applying the friction-controller coating before securing the cap and applying the friction-controller coating after securing the cap. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to apply the friction-controller coating before securing the cap as there only a finite number of options (2, as noted above), and the device of Wilson would work equally as well if applying the friction-controller coating before or after securing the cap. Further, the application does not disclose any criticality of applying the friction-controller coating before securing the cap.
Claims 10, 14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson in view of Harrison, and further in view of Tsai et al. (U.S. Patent No 5,894,039).
Regarding claim 10, Wilson in view of Harrison discloses the claimed invention except for wherein the cap has a coating over the decorative mark.
Tsai is directed to a manufacturing method of a keyboard. Tsai specifically discloses providing a coating over a laser mark (column 2, lines 29 – 31).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wilson in view of Harrison to include a coating over the decorative mark as taught by Tsai, as the references are directed to a decorative capped wheel nut (Wilson), a method for laser marking a surface of automotive components (Harrison), and a protective coating provided over a laser marked surface (Tsai). As disclosed by Tsai, it is well known to provide a coating over a laser marked surface (column 2, lines 29 – 31). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson to include a coating over the decorative mark as taught by Tsai, as such a modification would provide a protective layer over the laser mark.
Regarding claim 14, Wilson in view of Harrison discloses the claimed invention except for coating the cap with a clear protective coating after laser marking.
Tsai is directed to a manufacturing method of a keyboard. Tsai specifically discloses providing a clear protective coating after laser marking (column 2, lines 29 – 31).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wilson in view of Harrison to include coating the cap with a clear protective coating after laser marking as taught by Tsai, as the references are directed to a decorative capped wheel nut (Wilson), a method for laser marking a surface of automotive components (Harrison), and a protective coating provided over a laser marked surface (Tsai). As disclosed by Tsai, it is well known to provide a clear protective coating after laser marking (column 2, lines 29 – 31). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson to include coating the cap with a clear protective coating after laser marking as taught by Tsai, as such a modification would provide a protective layer over the laser mark, while allowing the laser marking to be visible through the coating.
Regarding claim 19, Wilson in view of Harrison discloses the claimed invention except for applying a clear coating to the cap after laser annealing the colored laser mark.
Tsai is directed to a manufacturing method of a keyboard. Tsai specifically discloses applying a clear coating after laser annealing the laser mark (column 2, lines 29 – 31).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wilson in view of Harrison to include applying a clear coating to the cap after laser annealing the colored laser mark as taught by Tsai, as the references are directed to a decorative capped wheel nut (Wilson), a method for laser marking a surface of automotive components (Harrison), and a protective coating provided over a laser marked surface (Tsai). As disclosed by Tsai, it is well known to apply a clear coating after laser annealing the laser mark (column 2, lines 29 – 31). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson to include applying a clear coating to the cap after laser annealing the colored laser mark as taught by Tsai, as such a modification would provide a protective layer over the laser mark, while allowing the laser marking to be visible through the coating.
Response to Arguments
Applicant's arguments filed June 15, 2026 with regard to the claim objection, the 112(b) rejection, and the 35 USC 102 rejection have been fully considered and they are persuasive.
Applicant’s arguments with regard to the 35 USC 103 rejections using Wilson as the primary reference have been fully considered and they are not persuasive.
The applicant contends that “a person of ordinary skill would have been motivated to perform laser marking either before or after securing the cap based on a "finite number of options" is unsupported with respect to Wilson. Wilson does not address, contemplate, or provide any guidance regarding the timing of decorative marking relative to assembly of a cap onto a fastener body. In the absence of any teaching on this point, the Examiner's conclusion improperly relies on hindsight reconstruction of Applicant's claimed sequence. The mere fact that two generalized options could theoretically exist does not establish that they are equivalent or interchangeable in the art, nor does it provide a reasoned basis for selecting the specific claimed order. Accordingly, Wilson provides no teaching, suggestion, or motivation to laser mark a cap prior to securing it to the fastener body, and the Examiner's assertion that the device would "work equally as well" amounts to unsupported speculation. Furthermore, the lack of an explicit disclosure of "criticality" in the specification is not dispositive, as non-obviousness does not require Applicant to prove superiority where the prior art itself fails to suggest the claimed sequence. Therefore, the Examiner has not established a prima facie case of obviousness based on Wilson”.
However, as noted above with regard to the rejection of independent claim 1, Wilson discloses that the cap (514) is decorative (column 6, lines 25 – 26) and that the decorative cap is secured to the fastener body (521) (column 6, line 27 - the nut insert 512 comprises a body 521; and column 6, lines 53 – 54 – the decorative cap 514 is press fit onto the insert 512). Thus, the cap of Wilson is secured to the fastener body after it is decorative. Since the cap of Wilson is secured to the fastener body after the cap is decorative, it would be obvious to apply the decorative laser mark to the cap before securing the cap to the fastener body.
There are only 2 options regarding when the decorative laser mark can be applied to the cap, either after the cap is secured to the fastener body or before the cap is secured to the fastener body. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to secure the cap to the fastener body after laser marking the top surface as 1) there was a need in the art to apply a decorative laser mark to the cap of a fastener assembly, 2) there are only a finite number of identified, predictable potential solutions regarding applying a decorative laser mark to the cap of a fastener assembly (there are 2, securing the cap to the fastener body after the decorative laser mark is applied to the cap, and securing the cap to the fastener body before the decorative laser mark is applied to the cap), 3) one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success, 4) the device of Wilson would work equally as well if the cap were secured to the fastener body before or after laser marking the top surface (the decorativeness of the cap of Wilson would have no impact on the functionality of Wilson. Regardless of whether the decorative laser mark were applied to the cap before or after the cap is secured to the fastener body, the capped wheel nut of Wilson would work equally well for the intended purpose of securing a vehicle wheel, as the presence or lack of a decorative laser mark is not related to the functionality of the capped wheel nut). Further, the application does not disclose any criticality of securing the cap to the fastener body after laser marking the top surface.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the cap to be secured to the fastener body after the decorative laser mark is applied to the cap.
Similar reasoning is also applied to the rejection of independent claim 13.
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 JASON D SHANSKE whose telephone number is (571)270-5985. The examiner can normally be reached Mon - Fri 9:30 - 5:30.
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.
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.
/JASON D SHANSKE/Supervisory Patent Examiner, Art Unit 3614
Prosecution Insights