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
Newly submitted claim 43 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The claim is directed to combination which would require different search then what was already performed. Examiner has already provided a search and rejection to the original elected invention of a steel fastener.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 43 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The requirement is still deemed proper and is therefore made FINAL.
It is noted no claims are allowable in view of rejections below and what was discussed in the interview on 5/26/2026.
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicants has stated on page 7 “unless…patentability” is also not persuasive since claim amendment are provided to narrow the independent claims and dependent claims, which are rejected below.
It is further noted that reference DE202004008389 teaches relief 24 and countersink 22 on a threaded element.
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.
Claim 17, 39 and 42 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, “trilobular”, this limitation is not clear in view of what is stated in claim 1 (e.g. multi-lobular).
Claim 39 and 42, “the countersink sized and shaped to receive a head…fastener” unclear how one skilled in the art have a structure based on the type or size of head of the threaded fastener? The claims are sill considered to be intended use regarded the threaded fastener.
Claim Rejections - 35 USC § 102
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) 1-3, 5, 11, 16, 22, 38-39 and 41-42 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Storm (US. 10145405B1).
Storm discloses a steel fastener (e.g. figure 1 or figure 4, 100 or 200) adapted to be installed in an unthreaded, tapered hole in a workpiece formed of a non-ferrous cast metal material (e.g. intended use see MPEP 2113-2114 and the steel fastener of Storm is capable of forming threads in a non-ferrous cost metal material such as aluminum), the steel fastener (e.g. see what is stated in Storm, “The hardness of self-tapping insert 100 will be higher than the hardness of the material of the workpiece and also harder than the fastener 150”) comprising a head (e.g. head of 100 or 200) having a driving arrangement (e.g. arrangement having hex shape or arrangement having 226), a generally tubular shank (e.g. shank having threads 112 or 212 or 312) comprising a tapering outer face (e.g. outer surface 108 or 208 of shaft with the threads 212 or 312), a thread (e.g. 112 or 212 or 312) forming screw thread disposed in the tapering outer face (e.g. figure 1 or 4) and configured to form threads in the unthreaded, tapered hole as the head drives the shank into the workpiece (e.g. again intended use see MPEP 2113-2114 and the steel fastener of Storm is capable of being used in a tapering hole of the work piece). Wherein the thread forming screw thread is multi-lobular (e.g. consider multi-lobular as the sections above the recesses 114 or 214 or 314). Wherein a relief in a distal portion of an inside of the tubular shank, the relief having a minimum inner diameter and a maximum outer diameter (e.g. relief is 114 or 214 or 314)
Regarding claim 2: Wherein the head has an aperture (e.g. aperture 110 or 210 or 310), the aperture being sized and shaped to receive a threaded fastener (e.g. again intended use see MPEP 2113-2114 and the aperture of Storm is capable of receiving a threaded fastener which may match the internal threads of the aperture).
Regarding claim 3: Wherein the shank has a generally tubular shape, and wherein the shank comprises a screw thread (e.g. 122 or 222 or 322) formed inside the tubular shank and configured to receive a threaded fastener (e.g. again intended use see MPEP 2113-2114 and the aperture of Storm is capable of receiving a threaded fastener which may match the internal threads of the aperture).
Regarding claim 5: Wherein the steel fastener is configured as one of an insert, a screw or a double ended stud (see figure 1 or 4).
Regarding claim 11: Wherein the driving arrangement is a rachet (e.g. see head of the steel fastener capable of receiving a rachet wrench).
Regarding claim 16: Wherein the thread forming screw thread has a pitch and depth which are substantially the same (see threads 112 or 212 or 312).
Regarding claim 22: Storm discloses a steel threaded insert adapted to be installed in an unthreaded, tapered hole in a workpiece formed of a non-ferrous cast metal material (see rejection of claim 1), the steel threaded insert (100 or 200 or 300) comprising a head having a driving arrangement and an aperture (e.g. aperture with the internal threads 122 or 222 or 322), the aperture being sized and shaped to receive a threaded fastener (e.g. again intended use see MPEP 2113-2114 and the steel threaded insert of Storm is capable of receiving a threaded fastener), a generally tubular shank (e.g. shank having 112 or 212 or 312) comprising a tapering outer face (e.g. the outer face having 112 or 212 or 312), a thread forming screw thread (e.g. 112 or 212 or 312) disposed in the tapering outer face and configured to form threads in the unthreaded, tapered hole as the head drives the tubular shank into the workpiece (e.g. see rejection of claim 1), wherein the thread forming screw thread is multi-lobular (e.g. see rejection of claim 1) and a screw thread (e.g. 122 or 222 or 322) formed inside the tubular shank and configured to receive the threaded fastener (e.g. again intended use see MPEP 2113-2114 and the steel threaded insert of Storm is capable of receiving a threaded fastener). Wherein the thread forming screw thread is multi-lobular (e.g. consider multi-lobular as the sections above the recesses 114 or 214 or 314). Wherein a relief in a distal portion of an inside of the tubular shank, the relief having a minimum inner diameter and a maximum outer diameter (e.g. relief is 114 or 214 or 314).
Regarding claim 38: Wherein the threaded forming screw thread has a parabolic shape (e.g. this is the case because of the structure of multi-lobular).
Regarding claim 39: Wherein steel fastener comprising a countersink (e.g. countersink shown at top end above 310 in figure 7) formed at a top of the aperture in the head, the countersink sized and shaped to receive a head of the threaded fastener flush with or below a top surface of the head of the steel fastener (e.g. intended use, see MPEP 2113-2114 and some fastener is capable of being received in a countersink of Storm).
Regarding claim 41: Wherein the threaded forming screw thread has a parabolic shape (e.g. this is the case because of the structure of multi-lobular).
Regarding claim 42: Wherein steel fastener comprising a countersink (e.g. see rejection of claim 39) formed at a top of the aperture in the head, the countersink sized and shaped to receive a head of the threaded fastener flush with or below a top surface of the head of the steel fastener (e.g. intended use, see MPEP 2113-2114 and some fastener is capable of being received in a countersink of Storm).
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) 1-3, 5, 11, 14, 16-17, 22, 28-29 and 37-42 are rejected under 35 U.S.C. 103 as being unpatentable over Cole (EP0272020) in view of DE202004008389 and further in view of Vogel et al (US. 20180355903A1).
Cole discloses a steel fastener (e.g. figures) adapted to be installed in an unthreaded, tapered hole in a workpiece formed of a non-ferrous cast metal material (e.g. intended use see MPEP 2113-2114 and the steel fastener of Cole is capable of forming threads in a non-ferrous cost metal material such as aluminum), the steel fastener (e.g. made of harden steel as stated in Cole) comprising a head (e.g. head having 40) having a driving arrangement (e.g. 40), a shank (e.g. shank having threads on an outer surface of the steel fastener, see figures) comprising a tapering outer face (e.g. outer surface having angle of 1 to 5 degrees as stated in Cole) with substantially the same tapering angle as the tapered hole in the workpiece (e.g. intended use but the steel fastener of Storm is capable of receiving in a tapered hole of the workpiece), a thread (e.g. 34) forming screw thread disposed in the tapering outer face (e.g. figure 1 or 4) and configured to form threads in the unthreaded, tapered hole as the head drives the shank into the workpiece (e.g. again intended use see MPEP 2113-2114 and the steel fastener of Cole is capable of being used in a tapering hole of the work piece). Regarding claim 2: Wherein the head has an aperture (e.g. aperture having internal threads 44), the aperture being sized and shaped to receive a threaded fastener (e.g. again intended use see MPEP 2113-2114 and the aperture of Cole is capable of receiving a threaded fastener which may match the internal threads of the aperture). Regarding claim 3: Wherein the shank has a generally tubular shape, and wherein the shank comprises a screw thread (e.g. 44) formed inside the tubular shank and configured to receive a threaded fastener (e.g. again intended use see MPEP 2113-2114 and the aperture of Cole is capable of receiving a threaded fastener which may match the internal threads of the aperture). Regarding claim 5: Wherein the steel fastener is configured as one of an insert, a screw or a double ended stud (see figures). Regarding claim 11: Wherein the driving arrangement is a rachet (e.g. see head of the steel fastener capable of receiving a rachet wrench, as stated in abstract). Regarding claim 14: Wherein the tapering angle of the shank is 4 degrees (e.g. Cole states 1 to 5 degrees of tapering angle of the shank). Regarding claim 15: Wherein further comprising the workpiece, wherein the tapering angle of the workpiece is 4 degrees (e.g. again intended use see MPEP 2113-2114 and the steel fastener of Cole is capable of receiving in a tapering opening of a workpiece). Evidence references are provided in form 1449 or 892 of the capability. Regarding claim 16: Wherein the thread forming screw thread has a pitch and depth which are substantially the same (see threads 34). Regarding claim 22: Cole discloses a steel threaded insert adapted to be installed in an unthreaded, tapered hole in a workpiece formed of a non-ferrous cast metal material (see rejection of claim 1), the steel threaded insert (figures) comprising a head having a driving arrangement and an aperture (e.g. aperture with the internal threads 44), the aperture being sized and shaped to receive a threaded fastener (e.g. again intended use see MPEP 2113-2114 and the steel threaded insert of Cole is capable of receiving a threaded fastener), a generally tubular shank (e.g. shank having 32) comprising a tapering outer face (e.g. the outer face having 32) with substantially the same tapering angle as the tapered hole in the workpiece (e.g. again intended use and the steel threaded insert of Storm is capable of being received in a tapered hole of the workpiece), a thread forming screw thread (e.g. 112 or 212) disposed in the tapering outer face and configured to form threads in the unthreaded, tapered hole as the head drives the tubular shank into the workpiece (e.g. see rejection of claim 1) and a screw thread (e.g. 122 or 222) formed inside the tubular shank and configured to receive the threaded fastener (e.g. again intended use see MPEP 2113-2114 and the steel threaded insert of Storm is capable of receiving a threaded fastener). Regarding claim 28: Wherein the thread forming screw thread has a pitch and a depth which are substantially the same (see rejection of claim 16).
Cole discloses the invention as claimed above but fails to disclose the thread forming screw thread is trilobular. Vogel discloses screw thread which is trilobular. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to configure the screw thread of Cole be trilobular as taught by Vogel with reasonable expectation of success to provide easy insertion or use lower torque to form threads in a workpiece (e.g. since the screw thread would only contact partly to the hole or aperture in the workpiece).
Cole discloses the invention as claimed above but fails to disclose a relief in a distal portion of an inside of the tubular shank and the relief having minimum inner diameter and a maximum outer diameter. DE ‘389 discloses a threaded insert or threaded fastener having an inside (e.g. inner side 10 having 14, 14 are threads), an outer side (e.g. outer side having 12) that is tapered with threads thereabout (e.g. see 12), a countersink on a top end on the inside (e.g. countersink 22) and a relief (e.g. 24) on a bottom end on the inside. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the steel fastener or the steel threaded insert of Cole to have countersink and relief as taught by DE ‘389 with reasonable expectation of success to eliminate sharp edges (e.g. due to chamfer in DE ‘389) and provide a screw that can be placed flush with a work piece (e.g. inherent of countersink)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 VISHAL A PATEL whose telephone number is (571)272-7060. The examiner can normally be reached 7:00 am to 4:00pm.
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, Christine Mills can be reached at 571-272-8322. 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.
/VISHAL A PATEL/Primary Examiner, Art Unit 3675
Prosecution Insights