FINAL REJECTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The Amendment filed 06/21/2026 has been entered. Claims 6-20 have been added. Claims 1-20 remain pending in the application. Applicant’s amendments to the Drawings, Specification and Claims have overcome each and every objection and 112(b) rejections previously set forth in the Non-Final Office Action mailed 03/19/2026.
Claim Objections
Claim 2 is objected to because of the following informalities:
In claim 2, line 7, a semicolon “;” should be added to the end of the line after “rod body”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 recites that in the step of separating the rod body, the “exposed fragile portion is fuse-cut by allowing current to flow between one of the fasteners attached at the end and the clamping member clamping the rod body”. However, claim 3 already recites that the step of “separating the rod body at the exposed fragile portion” is performed “by operating the manipulator to apply a mechanical force to the exposed fragile portion by moving the manipulator in a direction transverse to the longitudinal axis of the rod body”. The written description describes these two steps as different embodiments of the method (Pg. 7, 17-18), and does not state or suggest that they are useable at the same time (the Specification appears to suggest that an operator chooses one separating method or the other). Consequently, it is unclear whether the inventor has possession of the claimed invention of claim 5, as the written description fails to clearly describe the claimed subject matter. It is suggested that the applicant either draft a separate independent method claim containing the subject matter of claim 5, but not the separating step of claim 3. Alternatively, claim 3 could be amended to explicitly state that one of the two potential separating steps is to be selected to separate the rod body at the exposed fragile portion.
Claim 19 is rejected by virtue of dependence on claim 5.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cho (KR 20090105136 A, see previously provided English translation).
Regarding independent claim 1, Cho discloses a fastener apparatus 10 (Fig. 4) to be welded to a workpiece 80 (“base material”) by a fastener attaching device (“automatic stud welding device” with “welding gun 70”, Fig. 4), the fastener apparatus comprising fasteners 10 (“stud wire”) oriented in a same direction (along a longitudinal direction of the stud wire; note, the claim does not explicitly describe what it means by “same direction” or require that the direction must be strictly linear or straight; in this case, the direction is the longitudinal direction of the stud wire, which follows the wire even when it is coiled; at least a portion of the wire is straight due to the straightener 40) and joined together via a separable fragile portion 11 (“cutting portion”, Fig. 4) to form a rod body (Fig. 4, 6, 7, the fastener apparatus 10 is straightened into a straight rod shape by straightener 40 as shown, thus forming a “rod body”, Pg. 5, “The stud wire (10) is guided through a welding gun (70) and fed to the parent material (80). In order to plastically deform the curved stud wire (10) that is wound around the wire roll into a straight shape, a straightener (40) is configured, and is installed between the main feeder (20) and the welding gun (70) so that the stud wire (10) can be straightened before being fed into the welding gun (70)”).
Cho fails to disclose wherein each of the fasteners is a pre-formed discrete fastener body that is individually formed prior to being joined together to form the rod body.
However, it has been held in re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). “[I]t is the patentability of the product claimed (in this case the fastener apparatus comprising fasteners oriented in a same direction and joined together via separable fragile portions to form a rod body) and not of the recited process steps (in this case, the rod body formed by discrete pre-formed fasteners individually formed and joined together) which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” (see MPEP 2113). In this case, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has been given very little patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product (in this case “rob body comprising fasteners oriented in a same direction and joined together via a separable fragile portion”), does not depend on its method of production (i.e. being made of pre-formed discrete fasteners that are joined together to form the rod body), In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985). Further, where a product by process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the two. See In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). Since the end product of the rod body is disclosed by Cho, the limitation is interpreted as being anticipated.
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Regarding claim 12, Cho discloses the fastener apparatus according to Claim 1, wherein the fragile portion 11 comprises a small-diameter portion forming a constriction between adjacent fasteners in the rod body (Fig. 4, the rod body has cut portions 11 forming the fragile portions between the fasteners 10, which is shown having a small diameter compared to the diameter of the fasteners).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Cho in view of Schneider (EP 3269488 A1, previously cited).
Regarding claim 2, Cho discloses a fastener attaching device (Fig. 4 above) configured to weld the fasteners 10 formed as the rod body according to Claim 1 to a workpiece 80 by supplying current (from a power source 60), the fastener attaching device comprising:
a rod body holder 70 (the “weld gun”) provided at an end and configured to accommodate and hold the rod body comprising the fasteners (Fig. 4 above).
Cho fails to disclose the fastener attaching device is fixed to a working end of a manipulator of a robot, and a clamping member provided at an end of the rod body holder and configured to clamp the accommodated and held rod body from a periphery of the rod body;
wherein the clamping member has an insertion hole into which the rod body is inserted, and wherein an inner diameter of the insertion hole is sized to stably grip the rod body when the rod body is inserted into the clamping member.
Schneider teaches a fastener attaching device 10 for welding elements 16 to a workpiece 14, the fastener attaching device being fixed to a working end of a manipulator robot 12 (“joining robot”, Fig. 1, Para. 0044, “Fig. 1 shows a joining head 10, which is arranged on an arm of a joining robot 12 in order to process a workpiece 14”).
Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the apparatus of Cho such that the fastener attaching device is fixed to a working end of a manipulator robot, as taught by Schneider, in order to utilize the fastener attaching device in an automated system where the fasteners are welded to the workpiece in an automated manner as known in the art, particularly for automotive industry manufacturing (Schneider Para. 0002-0009). Cho does discuss the use of “conventional stud welding apparatus” by a “robot” (Cho Pg. 2, “Conventional stud welding equipment continuously supplies each stud to a welding gun and performs welding manually or automatically using a robot”), but does not go into specifics as to the arrangement of the attaching device on a robot. One skilled in the art would know, based on prior art teachings such as in Schneider, to apply the fastener attaching device of Cho to an end of a robot arm/manipulator, to enable its use in automated manufacturing systems.
Schneider further teaches a clamping member 20 (“clamping portion”, Fig. 2a-2c) provided at an end of the rod body holder 18 (“joining element holder”, Fig. 2a-2c) and configured to clamp the accommodated and held rod body at an end of the welding device (i.e. the fasteners 16IK, 16IIK, 16IIIK) from a periphery of the rod body (Fig. 2a-2c, the clamping member holds the rod body/fastener at an end of the holder 18 at the fastener’s peripheral outer surface); wherein the clamping member 20 has an insertion hole into which the rod body (the stack of fasteners 16) is inserted (Fig. 2b, 2c, the end of the clamping member 20 has an opening for inserting the fasteners at the end of the device as shown), and wherein an inner diameter of the insertion hole is sized to stably grip the rod body (fastener 16II about to be installed to the workpiece that is at the end of the device) when the rod body is inserted into the clamping member (Para. 0044, the fastener 16 is “clamped in a clamping portion 20”, and consequently the diameter of the insertion hole receiving the fastener must be sized to stably grip the fastener in order to “clamp” it in place).
Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have incorporated into the apparatus of Cho, the clamping member at an end of the rod body holder for clamping the accommodated rod body from a periphery of the rod body, the clamping member having an insertion hole into which the rod body is inserted, and wherein an inner diameter of the insertion hole is sized to stably grip the rod body, as taught by Schneider, in order to support and securely hold the fastener about its periphery at the end of the rod body holder, while the fastener is being welded to the workpiece (Schneider Claim 1, Para. 0048, 0053-55, 0058-59). While Schneider does not teach use of a rod body having its fasteners joined together via fragile portions, the device of Schneider is analogous to that of Cho, and the clamping member could easily be applied for use with the rod body of Cho, since it would merely serve to secure the rod body at the end of the fastener attaching device for welding the next fastener onto the workpiece. Cho already appears to depict a clamping member with some insertion hole for the rod body (Cho Fig. 4, 6 & 7), but does not describe said feature in detail.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Cho.
Regarding claim 15, Cho discloses the fastener apparatus of claim 1, but fails to disclose wherein the rod body comprises between 10 and 20 of the fasteners joined together via the fragile portions.
However, it has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP § 2144.05, II, A. In this case, the fastener apparatus of Cho is shown to have a plurality of fasteners 10 joined together via the fragile portions 11. One skilled in the art would have known to discover an optimal number of fasteners to comprise the rod body, such as between 10 to 20, in order to optimize the size of the rod body for use in an appropriate fastener attaching device. Doing so would have been a routine optimization requiring no undue experimentation.
Allowable Subject Matter
Claims 3-4, 6-11, 13-14, 16-18 & 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 5 & 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claims 1-20 have been considered but are moot in view of the new grounds of rejection that was necessitated by Applicant’s amendment. However, to the extent possible, Applicant’s arguments have been addressed in the body of the rejections above, at the appropriate locations.
Contact Information
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 ALAIN CHAU whose telephone number is (571)272-9444. The examiner can normally be reached M-F 9am-6pm PST.
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/ALAIN CHAU/Primary Examiner, Art Unit 3741
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