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 § 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 36, 38, 39, 49 and 53 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. In claim 36, there is no antecedent basis for “the lubricious dielectric coating” and it between the solid graphite-based friction modifier and the core contradicts the direct electrical contact. In claims 38 and 39, the solid graphite-based fiction containing graphite would be inherent based on the definition “graphite-based”. In claims 49 and 53, the direct electrical contact is a double inclusion based on the feature already having been introduced. The claims were examined as best understood.
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.
Claims 34-50 are rejected under 35 U.S.C. 103 as being unpatentable over Cowles (US 2020/0291979) in view of Hansen (US 11,137,014) and Liebscher (US 9,702,369).
In considering the embodiment shown in Fig. 10B, Cowles discloses a coated fastener (80’) comprising: a core body shank; a second coating (102’) which is shown only on a non-threaded portion of the shank (84’) comprising a conductive lubricious friction modifier material (102’) which can be a solid graphite (p.[0054]). The coating layer is shown with a uniform thickness in direct contact with the core (see Fig. 10B, p.[0059]); the core and second coating is continuous between opposite sides and circumferentially; a head (85), second shank portion (84) and a thread (82) are coaxial along an axis; and the second coating is configured to contact a hole bore of a sleeve component (410).
Cowles discloses the fastener is for electrical contact (p.[0053]) but does not specifically disclose the core body comprising a conductive material. Hansen discloses a coated fastener similar to Cowles but, teaches a core body to be conductive material which can include titanium (column 4, lined 46) and the coating layer with uniform thickness of between 0.1 mil and 1 mil (column 5, line 25). Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to make the core body of Cowles with a conductive material such as titanium as disclosed in Hansen in order to facilitate the electrical contact discussed in Cowles; and with a coating thickness of between 0.1 and 1 mil because Hansen teaches that as a preferred thickness in the same field of the endeavor.
Modified Cowles does not disclose a first dielectric coating on the threads. Liebscher discloses a coated fastener with a first coating on a first threaded portion (22) which is made of a dielectric TEFLON for the fastener to be in compliance with NAS 4006 (column 5, lines 6-9). Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to provide the threaded portion of the modified Cowles with a TEFLON coating as disclosed in Liebscher in order to meet the requirements of NAS 4006. Once the combination was made, the first and second coating would be continuous.
Claims 51-53 are rejected under 35 U.S.C. 103 as being unpatentable over Cowles, Hansen, Liebscher and further in view of Haylock (US 8,475,102). Modified Cowles discloses the solid graphite-based friction modifier disposed on the shank portion and the lubricious dielectric coating disposed on the threaded portion but does not discloses the solid graphite-based friction modifier disposed on top of the lubricious dielectric coating. Haylock similarly discloses a conductive coating disposed on a shank and a dielectric coating disposed on a threaded portion but additionally teaches the conductive coating to overlap the dielectric coating (see Fig. 2a). Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to have the coatings of modified Cowles overlap as disclosed in Haylock in order to ensure the conductive coating extends completely through the apertures in the workpiece.
Response to Remarks
Applicant argues that claim 34 defines over combination Cowles in view of Hansen and Liebscher because Cowles does not disclose the graphite-based friction modifier in direct contact with the core body. Applicant points out the figures 10B and 10C show an intervening layer 104’ between the graphite-based friction modifier 102’ and the core 84’. In response, the examiner does not dispute what is shown. However, the intervening layer is disclosed as only optional: “The galvanic corrosion resistant coating 104 is optional, ..” (p.[0058]) so, with a coating 104 optioned out the graphite-based friction modifier would be direct contact with the core.
Conclusion
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 FLEMMING SAETHER whose telephone number is (571)272-7071. The examiner can normally be reached M-F 8:30 - 7:00 eastern.
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/FLEMMING SAETHER/Primary Examiner, Art Unit 3675
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