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 .
Status of Claims
This office action is in reply to the amendment filed on July 28, 2026. Claims 1, 8 and 15 have been amended. No additional claims have been added. No further claims have been cancelled. Claim interpretation previously made under 35 USC 112(f) is maintained. The previous 35 U.S.C. 103 rejection has been withdrawn however a new 35 U.S.C. 103 rejection is provided herewith and is discussed in greater detail below. The previous Double Patenting rejection has been maintained/updated also as discussed in greater detail below. The examiner acknowledges the request for “examiner interview” on page 8 of the response but notes that such an interview has been deemed unnecessary at this time, since multiple rejections remain. Claims 1-20 are currently pending and have been fully examined.
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 1-14 are Finally rejected under 35 U.S.C. 103 as being unpatentable over Belanger (4787274) in view of Bodecker et al. (11466719), Yang (4727782), Berkman (4219062), Cole et al. (9687946) and optionally further in view of Jones (3263320).
In reference to claims 1 and 8, Belanger discloses a temporary fastener actuation system comprising:
a temporary fastener (36) comprising:
a cylindrical body comprising an indentation (at 38, Figure 1);
a carrier (46, similar to the claimed compressible gasket);
a stem (68’); and
a plurality of tines (44/45) coupled to the stem and configured to:
expand when the stem is rotated a first direction while the cylindrical body is stationary, thereby securing the temporary fastener to a panel (see Column 3, Lines 38-40); and
contract when the stem is rotated a second direction while the cylindrical body is stationary, the second direction being opposite from the first direction (see Column 4, Lines 11-35);
a temporary fastener actuation tool (formed from 14, 11, 16, Figure 2) comprising:
a protrusion (16) comprising a groove (formed as the inner opening within 16);
a spring clip (formed from 71 and 70. Note; element 71 meets the spring and the definition of the term “clip” as defined according to www.merriam-webster.com as being: “any of various devices that grip, clasp or hook”. Since, the balls 70 are “devices that grip” [i.e. portion 38] they meet the definition above and thus the limitation of the claim.), each spring clip comprising an end (i.e. outer end of balls 70) that is aligned with an end (i.e. inner end of opening 72 or under a second interpretation the lower end of the balls are aligned with the lower end of 72, especially when a fastener is inserted and pushes the balls upwardly, see Figure 3 when it has been rotated 90 degrees clockwise) of the protrusion, the plurality of spring clips configured to hold the indentation of the temporary fastener secure against the protrusion (Figure 1);
a bearing shaft (formed from 11 and 54);
a first bearing (i.e. formed as tubular member 21, see Column 2, Line 57, which meets the limitation of the bearing, as previously interpreted under 35 U.S.C. 112(f), see section 5a in previous office action filed on 9/26/25) configured to contact the cylindrical body of the temporary fastener and hold the cylindrical body of the temporary fastener stationary (Column 4, Lines 33-34);
a second bearing (i.e. formed as tubular member 27, see Figure 1, which meets the limitation of the bearing, as previously interpreted under 35 U.S.C. 112(f), see section 5b in previous office action filed on 9/26/25) coupled to the bearing shaft and configured to contact the stem of the temporary fastener and rotate the stem of the temporary fastener (Column 4, Lines 25-35); and
a motor shaft (41) coupled to the bearing shaft;
a rotary tool (10) configured to:
couple to the motor shaft of the temporary fastener actuation tool (Figure 1);
rotate the motor shaft and the second bearing in the first direction while the first bearing is stationary, thereby causing the plurality of tines to expand (Column 3, Lines 38-40 and Column 4, Lines 1-35); and
rotate the motor shaft and the second bearing in the second direction (i.e. “counter-rotates”, Column 4, Lines 34-35) while the first bearing is stationary (Column 4, Lines 33-34), thereby causing the plurality of tines to contract.
Belanger lacks,
the temporary fastener including… a compressible gasket…compressed during rotation of the motor shaft;
a plurality of spring clips made of a flexible material, include an end that is not in contact with an end of the protrusion…and configured to contact the temporary fastener; and
forming the groove with a shape that matches a shape of the indentation of the temporary fastener.
However, Bodecker et al. teach that it is old and well known in the art at the time the invention was made to provide a temporary fastener (12, Figure 7, similar to the temporary fastener 36, of Belanger) comprising; a compressible carrier/gasket (at 10, Column 4, Lines 5-7, similar to the carrier 46, of Belanger) that compresses (as it comes into “contact with the exterior surface of the workpiece 14”, Column 4, Lines 28-31 and because it is formed as a thermoplastic polymer, Column 4, Lines 5-7) during normal operation (Figures 1-12). Note, since Belanger already rotates the motor shaft and the second bearing in the first direction while the first bearing is stationary, thereby causing the plurality of tines to expand (see Column 3, Lines 38-40 and Column 4, Lines 1-35), when the carrier (46), of Belanger, is modified with the compressible carrier/gasket (10), as taught by Bodecker et al., the combination as a whole provides a compressible carrier/gasket that will similarly compress during normal operation (i.e. during rotation of the motor in the first direction).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the carrier of the temporary fastener, of Belanger, with the known technique of providing the compressible carrier of a temporary fastener, as taught by Bodecker et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that eliminates or at least reduces damage to the workpiece (Column 4, Lines 28-31).
Additionally, Yang is reasonably pertinent to the problem faced by the inventor (i.e. providing holding or retaining means for holding an element inside the tool, see paragraph 3 of applicants’ Specification). Yang further teaches that it is old and well known in the art at the time the invention was made to provide a plurality of spring clips that can be formed as a spring biased ball detents (117, similar to the spring biased ball detents [70 and 71], of Belanger) or as a pair of spring clip members (116) or from “any other suitable means” (see Column 5, Lines 3-6 and Figures 3 and 4) thereby teaching that spring biased ball detents, spring clip members and “any other suitable means” are all equivalent to each other and wherein the spring clip members are made of a flexible material (“spring” material, Column 5, Line 4)…and configured to contact a temporary fastener (102, because it is similarly retained within the tool 100, of Yang, similar to how the temporary fastener [36] is retained within the tool, of Belanger).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the spring biased ball detents, of Belanger, with the known technique of providing the pair of spring clip members, as taught by Yang, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively cooperate/retain an element (Column 2, Lines 15-23).
Next, Berkman teaches that it is old and well known in the art at the time the invention was made to attach a pair of spring clips (20 and 22) to an assembly/protrusion (i.e. at 18 or at 18 and 14) “in any desired manner” (see Column 2, Lines 25-29) and includes attaching the spring clips onto a tab (40, Figure 1) that is attached to the protrusion and includes an end (24 or 26) that is not in contact (see Figure 1) with an end (i.e. at 34 of assembly/protrusion 18 or at the screw engaging tip of 14 of assembly/protrusion formed from 18 and 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the spring clips, of modified Berkman, with the known technique of attaching the pair of spring clips in “any desired manner” by attaching the spring clips onto a tab, as taught by Berkman, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that provides a shelf on which the spring clips may be more effectively attached (i.e. by cold welding or soldering).
Furthermore, the examiner notes that Belanger lacks forming the groove with a shape that matches a shape of the indentation of the temporary fastener. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the shape of the groove such that it matches a shape of the indentation of the temporary fastener, since the applicant has not disclosed that the shape solve any state problem or is for any particular purpose and it appears that the invention would perform equally well with a tubular/circular/round shape.
In addition, Cole et al. teach that it is old and well known in the art at the time the invention was made to provide a temporary fastener actuation tool (382, Figure 9) with a protrusion (i.e. outer surface of 386) having a groove (386) that matches a shape (i.e. tubular/circular/round) of an indentation (202) of a temporary fastener (200, Figures 3, 4 and 9 and Column 6, Lines 31-35).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the groove, of Belanger, with the known technique of providing the groove that matches a shape of an indentation of a temporary fastener, as taught by Cole et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively engages at least a portion of installed temporary fastener (Column 6, Lines 31-35).
Finally, assuming arguendo, that Belanger lack the following below, Jones is used for such a teaching;
the plurality of tines being configured to:
expand when the stem is rotated a first direction; and
contract when the stem is rotated a second direction, the second direction being opposite from the first direction.
Jones teach that it is old and well known in the art at the time the invention was made to provide a fastener including a plurality of tines (26) that are configured to:
expand when the stem is rotated a first direction (see claim 16); and
contract when the stem is rotated a second direction, the second direction being opposite from the first direction (see claim 16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the plurality of tines, of Belanger, with the known technique of providing the plurality of tines that expand when the stem is rotated a first direction and contract when the stem is rotated a second direction, as taught by Jones, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively to clamps the workpieces into a tight assembly (Column 3, Lines 34-36).
In reference to claims 2 and 9, Belanger discloses that the temporary fastener is a Cleco fastener (because it is a temporary fastener, Column 1, Lines 14-25). In addition, Cole et al. also explicitly teach of providing Cleco fasteners (Column 1, Lines 24-27).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the fastener, of Belanger, with the known technique of providing the Cleco fastener, as taught by Cole et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively facilitates maintaining alignment of components to be coupled together (Column 1, Lines 24-27).
In reference to claims 3 and 10, Belanger discloses the claimed invention as previously mentioned above, but lacks,
a multi-function end effector (MFEE).
However, Cole et al. further teach that it is old and well known in the art at the time the invention was made to provide a multi-function end effector (Column 2, Lines 58-65) for coupling to a driver (382) for rotating a similar fastener (200, Figure 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the device, of Belanger, with the known technique of providing the multi-function end effector, as taught by Cole et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile automated device that selectively installs temporary fasteners in the assembly in a more efficient and less labor-intensive manner to facilitate reducing the manufacturing time and cost of manufacturing known assemblies (Column 2, Lines 58-65).
In reference to claims 4 and 11, modified Belanger discloses that the temporary fastener actuation tool is coupled to the MFEE (Column 2, Lines 58-65 of Cole et al.).
In reference to claims 5 and 12, Belanger discloses that the temporary fastener actuation tool further comprises a spindle (14) coupled to the motor shaft (Figure 1); and the bearing shaft comprises a threaded end (12) that couples the bearing shaft to the spindle (Figure 1).
In reference to claims 6 and 13, Belanger discloses that the temporary fastener actuation tool is cylindrical in shape (at least in sections 14, 11 and 16, Figure 2).
In reference to claims 7 and 14, Belanger discloses that the protrusion and the plurality of spring clips are coupled to a first end (i.e. upper end thereof in Figure 2) of the temporary fastener actuation tool; the first bearing is located proximate to the first end of the temporary fastener actuation tool (Figure 1); the second bearing is located proximate to the first bearing (Figure 1); and the first bearing and the second bearing are both tubular in shape (Figure 2) such that at least a portion of the temporary fastener may be inserted through the first bearing and the second bearing.
Claims 15-20 are Finally rejected under 35 U.S.C. 103 as being unpatentable over Belanger (4787274) in view of Bodecker et al. (11466719), Yang (4727782), Berkman (4219062) and Cole et al. (9687946).
In reference to claim 15, Belanger discloses a temporary fastener actuation system comprising:
a temporary fastener actuation tool (formed from 14, 11, 16, Figure 2) comprising:
a protrusion (16) comprising a groove (formed as the inner opening within 16);
a spring clip (formed from 71 and 70. Note; element 71 meets the spring and the definition of the term “clip” as defined according to www.merriam-webster.com as being: “any of various devices that grip, clasp or hook”. Since, the balls 70 are “devices that grip” [i.e. portion 38] they meet the definition above and thus the limitation of the claim.), each spring clip comprising an end (i.e. outer end of balls 70) that is aligned with an end (i.e. inner end of opening 72 or under a second interpretation the lower end of the balls are aligned with the lower end of 72, especially when a fastener is inserted and pushes the balls upwardly, see Figure 3 when it has been rotated 90 degrees clockwise) of the protrusion, the plurality of spring clips configured to hold the indentation of the temporary fastener secure against the protrusion (Figure 1);
a bearing shaft (formed from 11 and 54);
a motor shaft (41) coupled to the bearing shaft;
a first bearing (i.e. formed as tubular member 21, see Column 2, Line 57, which meets the limitation of the bearing, as previously interpreted under 35 U.S.C. 112(f), see section 5a in previous office action filed on 9/26/25) configured to contact a cylindrical body (36) of the temporary fastener and hold the cylindrical body of the temporary fastener stationary (Column 4, Lines 33-34), wherein the cylindrical body comprises a carrier (46);
a second bearing (i.e. formed as tubular member 27, see Figure 1, which meets the limitation of the bearing, as previously interpreted under 35 U.S.C. 112(f), see section 5b in previous office action filed on 9/26/25) coupled to the bearing shaft and configured to contact the stem of the temporary fastener and rotate, using a rotary tool (10) coupled to the motor shaft (Figure 1), the stem of the temporary fastener (Column 4, Lines 25-35).
Belanger lacks,
the cylindrical body comprising a compressible gasket/carrier disposed at an end of the cylindrical body;
a plurality of spring clips made of a flexible material, include an end that is not in contact with an end of the protrusion…and configured to contact the temporary fastener; and
forming the groove with a shape that matches a shape of the indentation of the temporary fastener.
However, Bodecker et al. teach that it is old and well known in the art at the time the invention was made to provide a temporary fastener (12, Figure 7, similar to the temporary fastener 36, of Belanger) comprising; a compressible carrier/gasket (at 10, Column 4, Lines 5-7, similar to the carrier 46, of Belanger) disposed at an end of a cylindrical body (12, Figure 7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the carrier of the temporary fastener, of Belanger, with the known technique of providing the compressible carrier of a temporary fastener being disposed at an end of the cylindrical body, as taught by Bodecker et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that eliminates or at least reduces damage to the workpiece (Column 4, Lines 28-31).
In addition, Yang is reasonably pertinent to the problem faced by the inventor (i.e. providing holding or retaining means for holding an element inside the tool, see paragraph 3 of applicants’ Specification). Yang further teaches that it is old and well known in the art at the time the invention was made to provide a plurality of spring clips that can be formed as a spring biased ball detents (117, similar to the spring biased ball detents [70 and 71], of Belanger) or as a pair of spring clip members (116) or from “any other suitable means” (see Column 5, Lines 3-6 and Figures 3 and 4) thereby teaching that spring biased ball detents, spring clip members and “any other suitable means” are all equivalent to each other and wherein the spring clip members are made of a flexible material (“spring” material, Column 5, Line 4)…and configured to contact a temporary fastener (102, because it is similarly retained within the tool 100, of Yang, similar to how the temporary fastener [36] is retained within the tool, of Belanger).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the spring biased ball detents, of Belanger, with the known technique of providing the pair of spring clip members, as taught by Yang, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively cooperate/retain an element (Column 2, Lines 15-23).
Next, Berkman teaches that it is old and well known in the art at the time the invention was made to attach a pair of spring clips (20 and 22) to an assembly/protrusion (i.e. at 18 or at 18 and 14) “in any desired manner” (see Column 2, Lines 25-29) and includes attaching the spring clips onto a tab (40, Figure 1) that is attached to the protrusion and includes an end (24 or 26) that is not in contact (see Figure 1) with an end (i.e. at 34 of assembly/protrusion 18 or at the screw engaging tip of 14 of assembly/protrusion formed from 18 and 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the spring clips, of modified Berkman, with the known technique of attaching the pair of spring clips in “any desired manner” by attaching the spring clips onto a tab, as taught by Berkman, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that provides a shelf on which the spring clips may be more effectively attached (i.e. by cold welding or soldering).
Additionally, the examiner notes that while Belanger lacks forming the groove with a shape that matches a shape of the indentation of the temporary fastener.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the shape of the groove such that it matches a shape of the indentation of the temporary fastener, since the applicant has not disclosed that the shape solve any state problem or is for any particular purpose and it appears that the invention would perform equally well with a tubular/circular/round shape.
Finally, Cole et al. also teach that it is old and well known in the art at the time the invention was made to provide a temporary fastener actuation tool (382, Figure 9) with a protrusion (i.e. outer surface of 386) having a groove (386) that matches a shape (i.e. tubular/circular/round) of an indentation (202) of a temporary fastener (200, Figures 3, 4 and 9 and Column 6, Lines 31-35).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the groove, of Belanger, with the known technique of providing the groove that matches a shape of an indentation of a temporary fastener, as taught by Cole et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively engages at least a portion of installed temporary fastener (Column 6, Lines 31-35).
In reference to claim 16, Belanger discloses that the temporary fastener is a Cleco fastener (because it is a temporary fastener, Column 1, Lines 14-25).
In reference to claims 17 and 18, Belanger discloses the claimed invention as previously mentioned above, but lacks,
a rotary tool…, wherein the rotary tool is configured as a multi-function end effector (MFEE).
However, Cole et al. further teach that it is old and well known in the art at the time the invention was made to provide a multi-function end effector (Column 2, Lines 58-65) for coupling to a driver (382) for rotating a similar fastener (200, Figure 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the device, of Belanger, with the known technique of providing the rotary tool formed as the multi-function end effector, as taught by Cole et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile automated device that selectively installs temporary fasteners in the assembly in a more efficient and less labor-intensive manner to facilitate reducing the manufacturing time and cost of manufacturing known assemblies (Column 2, Lines 58-65).
In reference to claim 19, Belanger discloses that the temporary fastener actuation tool further comprises a spindle (14) coupled to the motor shaft (Figure 1); and the bearing shaft comprises a threaded end (12) that couples the bearing shaft to the spindle (Figure 1).
In reference to claim 20, Belanger discloses that the protrusion and the plurality of spring clips are coupled to a first end (i.e. upper end thereof in Figure 2) of the temporary fastener actuation tool; the first bearing is located proximate to the first end of the temporary fastener actuation tool (Figure 1); the second bearing is located proximate to the first bearing (Figure 1); and the first bearing and the second bearing are both tubular in shape (Figure 2) such that at least a portion of the temporary fastener may be inserted through the first bearing and the second bearing.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are Finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12636742 in view of Berkman (4219062) and in the alternative further in view of Bodecker et al. (11466719).
In reference to claims 1 and 8, U.S. Patent No. 12636742 discloses a temporary fastener actuation system comprising:
a temporary fastener comprising (see claim 1);
a cylindrical body comprising an indentation (see claim 1);
a compressible gasket (see claim 1);
a stem (see claim 1);and
a plurality of tines coupled to the stem and configured to:
expand when the stem is rotated a first direction while the cylindrical body is stationary, thereby securing the temporary fastener to a panel (see claim 1); and
contract when the stem is rotated a second direction while the cylindrical body is stationary, the second direction being opposite from the first direction (see claim 1);
a temporary fastener actuation tool comprising:
a protrusion comprising a groove that matches a shape of the indentation of the temporary fastener (see claim 1);
a plurality of spring clips, each spring clip made of a flexible material and comprising an end that is aligned with but not in contact with an end of the protrusion, the plurality of spring clips configured to contact the temporary fastener and hold the indentation of the temporary fastener secure against the protrusion (see claim 1);
a bearing shaft (see claim 1);
a first bearing (formed as the “collar” in claim 1) configured to contact the cylindrical body of the temporary fastener and hold the cylindrical body of the temporary fastener stationary (see claim 1);
a second bearing coupled to the bearing shaft and configured to contact the stem of the temporary fastener and rotate the stem of the temporary fastener (see claim 1); and
a motor shaft coupled to the bearing shaft (see claim 1);
a rotary tool configured to:
couple to the motor shaft of the temporary fastener actuation tool (see claim 1);
rotate the motor shaft and the second bearing in the first direction while the first bearing is stationary, thereby causing the plurality of tines to expand (see claim 1) and the compressible gasket to compress (the examiner notes that the following limitation is considered intended use, “the compressible gasket…to compress” and since it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). In this situation, since U.S. Patent No. 12636742 has met all of the previous structural limitations of the claim [i.e. the gasket being compressible], the gasket can be compressed during normal operation which includes rotating the motor shaft, see claim 1); and
rotate the motor shaft and the second bearing in the second direction while the first bearing is stationary, thereby causing the plurality of tines to contract (see claim 1).
U.S. Patent No. 12636742 lacks explicitly disclosing that the,
plurality of spring clips…include an end that is not in contact with an end of the protrusion
However, Berkman teaches that it is old and well known in the art at the time the invention was made to attach a pair of spring clips (20 and 22) to an assembly/protrusion (i.e. at 18 or at 18 and 14) “in any desired manner” (see Column 2, Lines 25-29) and includes attaching the spring clips onto a tab (40, Figure 1) that is attached to the protrusion and includes an end (24 or 26) that is not in contact (see Figure 1) with an end (i.e. at 34 of assembly/protrusion 18 or at the screw engaging tip of 14 of assembly/protrusion formed from 18 and 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the spring clips, of U.S. Patent No. 12636742, with the known technique of attaching the pair of spring clips in “any desired manner” by attaching the spring clips onto a tab thereby not being in contact with an end of the protrusion, as taught by Berkman, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that provides a shelf on which the spring clips may be more effectively attached (i.e. by cold welding or soldering).
In further reference to claim 1 and in the alternative assuming arguendo that, U.S. Patent No. 12636742 also lacks,
the temporary fastener including… a compressible gasket…compressed during rotation of the motor shaft, then Bodecker et al. is hereby used for such a teaching.
Bodecker et al. teach that it is old and well known in the art at the time the invention was made to provide a temporary fastener (12, Figure 7, similar to the temporary fastener 36, of Belanger) comprising; a compressible carrier/gasket (at 10, Column 4, Lines 5-7, similar to the carrier 46, of Belanger) that compresses (as it comes into “contact with the exterior surface of the workpiece 14”, Column 4, Lines 28-31 and because it is formed as a thermoplastic polymer, Column 4, Lines 5-7) during normal operation (Figures 1-12). Note, since U.S. Patent No. 12636742 already rotates the motor shaft and the second bearing in the first direction while the first bearing is stationary, thereby causing the plurality of tines to expand (see claim 1), when the compressible gasket, of U.S. Patent No. 12636742, is modified with the compressible carrier/gasket (10), as taught by Bodecker et al., the combination as a whole provides a compressible carrier/gasket that will similarly compress during normal operation (i.e. during rotation of the motor in the first direction).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the carrier of the temporary fastener, of U.S. Patent No. 12636742, with the known technique of providing the compressible carrier of a temporary fastener that compresses during normal operation, as taught by Bodecker et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that eliminates or at least reduces damage to the workpiece (Column 4, Lines 28-31).
In reference to claims 2 and 9, of U.S. Patent No. 12636742 discloses that the temporary fastener is a Cleco fastener (see claim 2).
In reference to claims 3 and 10, U.S. Patent No. 12636742 discloses that the rotary tool is a multi-function end effector (MFEE) (see claim 3).
In reference to claims 4 and 11, U.S. Patent No. 12636742 discloses that the temporary fastener actuation tool is coupled to the MFEE (see claim 4).
In reference to claims 5 and 12, U.S. Patent No. 12636742 discloses that the temporary fastener actuation tool further comprises a spindle coupled to the motor shaft; and the bearing shaft comprises a threaded end that couples the bearing shaft to the spindle (see claim 5).
In reference to claims 6 and 13, U.S. Patent No. 12636742 discloses that the temporary fastener actuation tool is cylindrical in shape (see claim 6).
In reference to claims 7 and 14, U.S. Patent No. 12636742 discloses that the protrusion and the plurality of spring clips are coupled to a first end of the temporary fastener actuation tool; the first bearing is located proximate to the first end of the temporary fastener actuation tool; the second bearing is located proximate to the first bearing; and the first bearing and the second bearing are both tubular in shape such that at least a portion of the temporary fastener may be inserted through the first bearing and the second bearing (see claim 7).
Claims 15-20 are Finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12636742 in view of Bodecker et al. (11466719) and Berkman (4219062).
In reference to claim 15, U.S. Patent No. 12636742 discloses a temporary fastener actuation tool comprising:
a protrusion comprising a groove that matches a shape of the indentation of the temporary fastener (see claim 1);
a plurality of spring clips, each spring clip made of a flexible material and comprising an end that is aligned with but not in contact with an end of the protrusion, the plurality of spring clips configured to contact the temporary fastener and hold the indentation of the temporary fastener secure against the protrusion (see claim 1);
a bearing shaft (see claim 1);
a motor shaft coupled to the bearing shaft (see claim 1);
a first bearing (formed as the “collar” in claim 1) configured to contact the cylindrical body of the temporary fastener and hold a cylindrical body of the temporary fastener stationary, the cylindrical body comprising a compressible gasket (see claim 1);
a second bearing coupled to the bearing shaft and configured to contact the stem of the temporary fastener and rotate the stem of the temporary fastener (see claim 1).
U.S. Patent No. 12636742 lacks explicitly disclosing that the,
the cylindrical body comprising a compressible gasket/carrier disposed at an end of the cylindrical body; and
plurality of spring clips…include an end that is not in contact with an end of the protrusion
However, Bodecker et al. teach that it is old and well known in the art at the time the invention was made to provide a temporary fastener (12, Figure 7, similar to the temporary fastener, of U.S. Patent No. 12636742) comprising; a compressible carrier/gasket (at 10, Column 4, Lines 5-7) disposed at an end of a cylindrical body (12, Figure 7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the compressible gasket, of U.S. Patent No. 12636742, with the known technique of providing the compressible gasket/carrier of a temporary fastener being disposed at an end of the cylindrical body, as taught by Bodecker et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that eliminates or at least reduces damage to the workpiece (Column 4, Lines 28-31).
In addition, Berkman teaches that it is old and well known in the art at the time the invention was made to attach a pair of spring clips (20 and 22) to an assembly/protrusion (i.e. at 18 or at 18 and 14) “in any desired manner” (see Column 2, Lines 25-29) and includes attaching the spring clips onto a tab (40, Figure 1) that is attached to the protrusion and includes an end (24 or 26) that is not in contact (see Figure 1) with an end (i.e. at 34 of assembly/protrusion 18 or at the screw engaging tip of 14 of assembly/protrusion formed from 18 and 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the spring clips, of U.S. Patent No. 12636742, with the known technique of attaching the pair of spring clips in “any desired manner” by attaching the spring clips onto a tab thereby not being in contact with an end of the protrusion, as taught by Berkman, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that provides a shelf on which the spring clips may be more effectively attached (i.e. by cold welding or soldering).
In reference to claim 16, of U.S. Patent No. 12636742 discloses that the temporary fastener is a Cleco fastener (see claim 2).
In reference to claim 17, U.S. Patent No. 12636742 tool is configured to couple to a rotary tool (see claim 1).
In reference to claim 18, U.S. Patent No. 12636742 discloses that the rotary tool is a multi-function end effector (MFEE) (see claim 3).
In reference to claim 19, U.S. Patent No. 12636742 discloses that the temporary fastener actuation tool further comprises a spindle coupled to the motor shaft; and the bearing shaft comprises a threaded end that couples the bearing shaft to the spindle (see claim 5).
In reference to claim 20, U.S. Patent No. 12636742 discloses that the protrusion and the plurality of spring clips are coupled to a first end of the temporary fastener actuation tool; the first bearing is located proximate to the first end of the temporary fastener actuation tool; the second bearing is located proximate to the first bearing; and the first bearing and the second bearing are both tubular in shape such that at least a portion of the temporary fastener may be inserted through the first bearing and the second bearing (see claim 7).
Response to Arguments
Applicants’ arguments, see pages 9-10, filed July 28, 2026, with respect to amended claims 1, 8 and 15 have been fully considered and are persuasive. The previous 35 U.S.C. 103 rejection of claims 1-20 has been withdrawn.
Applicants’ arguments with respect to claims 1, 8 and 15 have been considered but are moot because the new grounds of rejection (see above) do not rely on any reference as previously applied in the prior rejection of record for any teaching or matter as specifically challenged in the argument.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action.
Specifically, applicants amended claims 1 and 8 to require that rotation of the motor in the first direction compresses the compressible gasket and amended claim 15 requires that the compressible gasket is disposed at an end of the cylindrical body.
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 ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723
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