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 Objections
Claim 8 is objected to because of the following informalities: at line 1, the word “the” should be inserted before “surface”. 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 1 – 12 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 1, lines 4 - 5 recites in part “a top surface connecting the top surface”. It is unclear what is meant by the top surface connecting the top surface.
Claims 2 – 12 are rejected by virtue of depending from rejected claim 1.
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.
Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Davis et al. (U.S. Patent Application Publication No. US 2013/0149071 A1).
Regarding claim 1, as best understood in view of the 112(b) issue noted above, Davis discloses a fastener assembly (80) comprising a fastener body (92) having a threaded portion (14) at a lower end, and a stem portion (18) at an upper end; a cap (82, 84) having side walls (36) defining a wrenching surface and a top surface (84) connecting the top surface wherein the cap (82, 84) is secure to the stem portion (18) on the upper end of the fastener body (92) (Figures 1C, 4A, 4B; paragraphs [0027] and [0039]), and a decorative laser mark (90) defined on the top surface of the cap (84) (Figure 4B; paragraph [0039]).
Regarding claim 5, Davis further discloses wherein the cap (84) is formed of stainless-steel material (paragraph [0038]).
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 cap (514) having side walls (553) defining a wrenching surface and a top surface (551) connecting the top surface wherein the cap (514) is secure 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.
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.
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 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.
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, there are only 2 options, laser marking the top surface before securing the cap to the stem and laser marking the top surface after securing the cap 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 there only a finite number of options (2, as noted above), and 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. Further, the application does not disclose any criticality of securing the cap to the stem after laser marking the top surface.
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 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Davis.
Regarding claim 13, Davis discloses a method of forming a fastener, comprising forming a cap (82, 84) having a plurality of wrenching surfaces (36) and a top surface (84); laser marking a decorative mark on the top surface (84); and forming a fastener body (92) having a threaded portion (14) adjacent a first end and a stem (18) adjacent a second end Figures 1C, 4A, 4B; paragraphs [0027] and [0039]).
Davis discloses the claimed invention except for securing the cap to the stem after laser marking the top surface. However, there are only 2 options, laser marking the top surface before securing the cap to the stem and laser marking the top surface after securing the cap 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 there only a finite number of options (2, as noted above), and the device of Davis would work equally as well if the cap were secured to the stem before or after laser marking the top surface. Further, the application does not disclose any criticality of securing the cap to the stem after laser marking the top surface.
Regarding claim 16, Davis further discloses wherein the cap (84) is formed of stainless-steel (paragraph [0038]).
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.
Claims 10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Davis in view of Tsai.
Regarding claim 10, Davis 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 Davis to include a coating over the decorative mark as taught by Tsai, as the references are directed to a fastener with a decorative laser mark (Davis) 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 Davis 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, Davis 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 Davis to include coating the cap with a clear protective coating after laser marking as taught by Tsai, as the references are directed to a fastener with a decorative laser mark (Davis) 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 Davis 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.
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/JASON D SHANSKE/Supervisory Patent Examiner, Art Unit 3614