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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claims 1-8, drawn to a gripper for a fastener installation assembly, classified in B05C13/025, Figs. 4-16; or
II. Claims 9-15, drawn to a sealant applicator, classified in F16B33//0044, Figs. 1-3; or
III. Claims 16-20, drawn to a method for applying sealant, classified in B05D2258/00; Fig. 17.
The inventions are distinct, each from the other because of the following reasons:
Inventions III and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the process can be practiced by another different apparatus such as a second gripper for sealing exposed metal protrusions with a conductive coating to dissipate electric charge. The apparatus can be used to practice a different process such as a receiving a threaded portion of a fastener and dispensing sealant on the threaded portion or receiving a threaded portion of a fastener and dispensing sealant on the unthreaded portion or receiving an unthreaded portion of a fastener and dispensing sealant on the threaded portion.
Inventions III and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the process can be practiced by another different apparatus such as a second gripper for sealing exposed metal protrusions with a conductive coating to dissipate electric charge. The apparatus can be used to practice a different process such as a receiving a threaded portion of a fastener and dispensing an adhesive on the threaded portion or receiving a threaded portion of a fastener and dispensing an adhesive on the unthreaded portion or receiving an unthreaded portion of a fastener and dispensing an adhesive on the threaded portion.
Inventions I and II are directed to related apparatuses. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have materially different designs, as group I is directed to a gripper with a lip having a recess configured to engage an unthreaded portion of a fastener, while group II has a pair of arms are configured to receive between them an unthreaded portion of a fastener. Groups I and II are shown in separate non-overlapping Figures. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason(s) apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these 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(a) of the other invention.
In a telephone call from Erin Mondloch, Reg. Num. 78,816, on February 17, 2026, a provisional election was made with traverse to prosecute the invention of Group I, claims 1-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to non-elected inventions.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “fastener installation assembly” in claims 1 and 7-8 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The use of the term “Gemcor” has been noted in this application in paragraphs 3, 35, 37, 48, and 53.
Clarification of the status of this term as a trademark is request.
Trademarks should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. Num. 5,647,111 to Zienkiewicz et al (hereinafter Zienkiewicz).
Regarding claim 1, Zienkiewicz teaches a gripper (72, 154) for a fastener installation assembly, the gripper comprising: a body, the body (154) comprising a first end (end of 90 adjacent 86) and a second end (224) opposite the first end, and the body having a passage (90) extending between the first end and the second end; and a lip (shaped end 84, 86) extending from the first end of the body, the lip (shaped end 84, 86) having at least one orifice in fluid communication with the passage (90); wherein the lip (shaped end 84, 86) has a recess ( recess 230) configured to engage an unthreaded portion of a fastener; and wherein the body is configured to deliver sealant to the orifice via the passage for application to the unthreaded portion of the fastener engaged by the lip (shaped end 84, 86). (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Intended use language is located in the preamble of claim 1 (apparatus for a fastener installation assembly). A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Zienkiewicz is capable of the intended use and as a result meets the claim limitation.
Regarding claim 2, Zienkiewicz teaches the recess ( recess 230) of the lip (bottom edge of shaped end 84, 86) is configured to receive the unthreaded portion of the fastener. (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Regarding claim 3, Zienkiewicz teaches the recess (230) of the lip (shaped end 84, 86) is configured to cooperate with a second gripper to grip the fastener when the unthreaded portion of the fastener is received by the recess (230). (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Regarding claim 4, Zienkiewicz teaches the recess (230) has a rounded shape. (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Regarding claim 5, Zienkiewicz teaches the lip (shaped end 84, 86) comprises a curved wall (interior portion of 230) defining the recess (230) and the curved wall has a channel (portion of 90 connecting to 230) . (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Regarding claim 6, Zienkiewicz teaches the channel (portion of 90 connecting to 230) extends azimuthally along the curved wall (86). (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Regarding claim 7, Zienkiewicz teaches the body is configured to be operatively coupled to the fastener installation assembly. (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 10 to 30, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Regarding claim 8, Zienkiewicz teaches the body is configured to be operatively coupled to the fastener installation assembly such that the gripper (72,154) is selectively movable relative to the fastener installation assembly (movable relative to transfer path). (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 10 to 30, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1-8 are rejected under 35 U.S.C. 103(a) as being unpatentable over US Pat. Num. 4,359,965 to Thomas Bridges,Sr. (hereinafter Bridges) and US Pat. Num. 5,647,111 to Zienkiewicz et al (hereinafter Zienkiewicz).
Regarding claim 1, Bridges teaches a gripper (13, 17) for a fastener installation assembly, the gripper comprising: a body, the body (16) comprising a first end (end of 90 adjacent 86) and a second end (224) opposite the first end, and the body having a passage (18) extending between the first end and the second end; and a lip (annular shaped end 29 in Fig. 2) extending from the first end of the body (end including 20), the lip (annular shaped end 29 in Fig. 2) having at least one orifice (28) in fluid communication with the passage (18); wherein the lip (shaped end 29) has a recess (area circumscribed by 21) configured to engage a portion of a fastener; and wherein the body is configured to deliver sealant to the orifice via the passage for application to the portion ( bottom of 14) of the fastener engaged by the lip (annular shaped end 29 in Fig. 2). (See Bridges , Abstract, Figs. 1-5, col. 2, lines 9-64; col. 3, lines 2-68.)
Regarding claim 1, Bridges does not explicitly teach the lip has a recess configured to engage an unthreaded portion of a fastener; and wherein the body is configured to deliver sealant to the orifice via the passage for application to the unthreaded portion of the fastener engaged by the lip. Zienkiewicz teaches the lip (bottom edge of shaped end 84, 86) has a recess ( recess 230) configured to engage an unthreaded portion of a fastener; and wherein the body is configured to deliver sealant to the orifice via the passage for application to the unthreaded portion (shank end of the fastener col. 6, line 60 to col. 7, line 19) of the fastener engaged by the lip (bottom edge of shaped end 84, 86).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the lip has a recess configured to engage an unthreaded portion of a fastener; and wherein the body is configured to deliver sealant to the orifice via the passage for application to the unthreaded portion of the fastener engaged by the lip, because Zienkiewicz teaches this structure would enable an unthreaded portion of a fastener to be treated with sealant. (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Examiner is considering apparatus for treating a threaded or unthreaded fasteners as art recognized equivalents based on the same apparatus being capable of treating either substrate.
The coating apparatus in Bridges in view of Zienkiewicz would be capable of coating unthreaded fastener. Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
Intended use language is located in the preamble of claim 1 (apparatus for a fastener installation assembly). A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Zienkiewicz in view of Bridges is capable of the intended use and as a result meets the claim limitation.
Regarding claim 2, Bridges does not explicitly teach the recess of the lip is configured to receive the unthreaded portion of the fastener. Zienkiewicz teaches the recess ( recess 230) of the lip (bottom edge of shaped end 84, 86) is configured to receive the unthreaded portion of the fastener. (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the recess of the lip is configured to receive the unthreaded portion of the fastener, because Zienkiewicz teaches this structure would enable an unthreaded portion of a fastener to be treated with sealant. (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Regarding claim 3, Bridges does not explicitly teach the recess of the lip is configured to cooperate with a second gripper to grip the fastener when the unthreaded portion of the fastener is received by the recess. Zienkiewicz teaches the recess (230) of the lip (annular shaped end 29 in Fig. 2) is configured to cooperate with a second gripper to grip the fastener when the unthreaded portion of the fastener is received by the recess (230). (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the recess of the lip is configured to cooperate with a second gripper to grip the fastener when the unthreaded portion of the fastener is received by the recess, because Zienkiewicz teaches this structure would enable an unthreaded portion of a fastener to be treated with sealant. (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Regarding claim 4, Bridges teaches the recess (area circumscribed by 21) has a rounded shape. (See Bridges , Abstract, Figs. 1-5, col. 2, lines 9-64; col. 3, lines 2-68.)
Regarding claim 5, Bridges teaches the lip (shaped end 84, 86) comprises a curved wall (interior portion of 21) defining the recess (area circumscribed by 21) and the curved wall has a channel (24) . (See Bridges , Abstract, Figs. 1-5, col. 2, lines 9-64; col. 3, lines 2-68.)
Regarding claim 6, Bridges teaches the channel (24) extends azimuthally along the curved wall (interior portion of 21. (See Bridges , Abstract, Figs. 1-5, col. 2, lines 9-64; col. 3, lines 2-68.)
Regarding claim 7, Bridges does not explicitly teach the body is configured to be operatively coupled to the fastener installation assembly.
Zienkiewicz teaches the body is configured to be operatively coupled to the fastener installation assembly. (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 10 to 30, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the body is configured to be operatively coupled to the fastener installation assembly, because Zienkiewicz teaches this structure would enable an unthreaded portion of a fastener to be installed in the desired area. (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Regarding claim 8, Bridges does not explicitly teach the body is configured to be operatively coupled to the fastener installation assembly such that the gripper is selectively movable relative to the fastener installation assembly.
Zienkiewicz teaches the body is configured to be operatively coupled to the fastener installation assembly such that the gripper (72,154) is selectively movable relative to the fastener installation assembly (movable relative to transfer path). (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 10 to 30, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the body is configured to be operatively coupled to the fastener installation assembly such that the gripper is selectively movable relative to the fastener installation assembly, because Zienkiewicz teaches this structure would enable an unthreaded portion of a fastener to be installed in the desired area. (See Zienkiewicz , Abstract, Figs. 1-8, and col. 4, lines 31 to 59; col. 5, lines 44 to col. 6, line 47; and col. 7, lines 2 to 18.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARL V KURPLE whose telephone number is (571)270-3477. The examiner can normally be reached Monday-Friday 8 AM-5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at (571) 272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARL KURPLE/
Primary Examiner
Art Unit 1717