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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “wherein the smooth shank length is 30%-35 % and the deformed shank is 70% -65% of the entire length of the fastener” as claimed in claim 2 is not disclosed in the specification of the subject application. The closest disclosure relevant to this limitation in the specification can be found in paragraphs [016] – [018], which each disclose that “The ratio between smooth shank and deformed shank area in a fastener is between 20/80 percent. The smooth shank area is 20 percent of the entire length of the shank and the deformed shank is 80 percent entire length of the shank”.
Claim Objections
Claim 2 is objected to because of the following informalities: “the smooth shank length” at line 1 should be replaced with “a smooth shank length”. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: “the entire length” at line 2 should be replaced with “an entire length”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: “the said fastener diameter” at line 1 should be replaced with “a fastener diameter”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: “the said fastener” at line 1 should be replaced with “the fastener”. Appropriate correction is required. Claims 9 -11, 15, 17 and 18 also have similar issues which should be corrected.
Claim 6 is objected to because of the following informalities: “multiple fastener” at lines 1 – 2 should be replaced with “multiple fasteners”. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: “claim 1 is made up” at line 1 should be replaced with “claim 1, wherein the fastener is made up”. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: “the diameter” at line 6 should be replaced with “a diameter”. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: “0.135R” at line 1 should be replaced with “the fastener having a diameter of 0.135 inches”. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: “the control sample 16d common nail” at line 3 should be replaced with “a control sample 16d common nail”. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: “0.125R” at line 1 should be replaced with “the fastener having a diameter of 0.125 inches”. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: “the control sample 16d common nail” at line 3 should be replaced with “a control sample 16d common nail”. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: “of has” at line 3 should be replaced with “has”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: “0.115R” at line 1 should be replaced with “the fastener having a diameter of 0.115 inches”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: “the control sample 16d common nail” at line 3 should be replaced with “a control sample 16d common nail”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: “multiple fastener” at lines 1 – 2 should be replaced with “multiple fasteners”. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: “claim 8 is made up” at line 1 should be replaced with “claim 8, wherein the fastener is made up”. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: “the is flat” at line 2 should be replaced with “the head is flat”. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: “wherein the diameter of the fastener is 0.115, 0.125 and 0.135” at lines 6 – 7 should be replaced with “wherein a diameter of the fastener is at least one of 0.115 inch, 0.125 inch and 0.135 inch”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: “the diameter of the fastener is 0.135” at line 1 should be replaced with “the diameter of the fastener is 0.135 inches”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: “the control sample 16d common nail” at lines 3-4 should be replaced with “a control sample 16d common nail”. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: “multiple fastener” at lines 1 – 2 should be replaced with “multiple fasteners”. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: “the diameter of the fastener is 0.125” at line 1 should be replaced with “the diameter of the fastener is 0.125 inches”. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: “the control sample 16d common nail” at lines 3-4 should be replaced with “a control sample 16d common nail”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: “the diameter of the fastener is 0.115” at line 1 should be replaced with “the diameter of the fastener is 0.115 inches”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: “the control sample 16d common nail” at lines 3-4 should be replaced with “a control sample 16d common nail”. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: “claim 14 is made up” at line 1 should be replaced with “claim 14, wherein the fastener is made up”. Appropriate correction is required.
Duplicate claim warning - Applicant is advised that should claim 8 be found allowable, claim 14 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Duplicate claim warning - Applicant is advised that should claim 12 be found allowable, claim 16 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Duplicate claim warning - Applicant is advised that should claim 13 be found allowable, claim 19 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1 – 19 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.
Claims 1, 8 and 14 recite in part “the fastener has gone through a specific test to meet and beat a standard requirement compared to a control sample”. It is not clear what a specific test and a standard requirement are, such that the scope of the claims is not clear.
Claim 4 recites in part “wherein the said fastener diameter is at least one of 0.135, 0.135R, 0.115, 0.115R, 0.125 and 0.125R”. However, 0.135R, 0.115R and 0.125R are not diameters, but types of fasteners. Further, as best understood, the diameter of a 0.135R fastener is 0.135 inches, but 0.135 is already recited in this listing. Similar issues arise with 0.125R and 0.115R. Accordingly, for examination purposes, this limitation will be interpreted as “wherein a fastener diameter is at least one of 0.135 inch, 0.115 inch and 0.125 inch”.
Claim 5 recites in part “compared with standard nail diameter of 0.162, 0.131 and 0.148 common nails”. However, it is not clear if the fastener is being compared will nails of all of these diameters, or one nail of one of these diameters. Further, the unit of measurement of the diameters is missing. Accordingly, for examination purposes, this limitation will be interpreted as “compared with a standard nail diameter of at least one of 0.162 inch, 0.131 inch and 0.148 inch common nails”.
Claim 8 recites in part “wherein the diameter of the fastener is at least one of a 0.135R, 0.115R, and 0.125R”. However, 0.135R, 0.115R and 0.125R are not diameters, but types of fasteners. Accordingly, for examination purposes, this limitation will be interpreted as “wherein the diameter of the fastener is at least one of 0.135 inch, 0.115 inch, and 0.125 inch”.
Claims 2, 3, 6, 7, 9 – 13 and 15 – 19 are rejected by virtue of depending from rejected claim 1, 8 or 14.
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, 3 – 6, 8 – 12 and 14 – 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rogers (U.S. Patent No. US 6,584,915 B1).
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Regarding claim 1, as best understood in view of the 112b issues noted above, Rogers discloses a fastener (24), comprising a head (28), wherein the head (28) is flat; a shank (26) that has two parts (26a, 26b), a smooth shank (26a) and a deformed shank (26b); a point (30), wherein the point (30) is a blunt diamond point (Fig 3; column 7, lines 29 – 42). The limitation of “the fastener has gone through a specific test to meet and beat a standard requirement compared to a control sample” is a product by process limitation (See MPEP 2113). The determination of patentability of a product by process claim is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. The fastener of Rogers is identical to the fastener as claimed in claim 1. The only difference between claim 1 and Rogers is that the fastener of claim 1 has gone through a specific test to meet and beat a standard requirement compared to a control sample, which has no bearing on the fastener product itself. Thus, Rogers discloses all of the limitations of claim 1.
Regarding claim 3, the limitation of wherein the specific test is at least one of lateral load test, ductility test, bending yield strength test, pull through test, withdrawal strength test, low seismic wall assembly test, in-plane cyclic load test and small scale diaphragm test is directed to the product by process limitation of claim 1, and has no bearing on the fastener product itself. Thus, Rogers discloses all of the limitations of claim 3 for the reasons set forth in the rejection of claim 1.
Regarding claim 4, as best understood in view of the 112b issues noted above, Rogers discloses wherein a fastener diameter is at least one of 0.135 inch, 0.115 inch and 0.125 inch (column 7, lines 40 – 42, which discloses that the fastener has a diameter of 3.2mm, which is equivalent to .125 inches).
Regarding claim 5, as best understood in view of the 112b issues noted above, the limitation of wherein the said fastener is compared with standard nail diameter of 0.162, 0.131 and 0.148 common nails is directed to the product by process limitation of claim 1, and has no bearing on the fastener product itself. Thus, Rogers discloses all of the limitations of claim 5 for the reasons set forth in the rejection of claim 1.
Regarding claim 6, Rogers further discloses wherein the fastener is a single fastener (Fig 3).
Regarding claim 8, as best understood in view of the 112b issues noted above, Rogers discloses a fastener (24), comprising a head (28), wherein the head (28) is flat; a shank (26) that has two parts (26a, 26b), a smooth shank (26a) and a deformed shank (26b); a point (30), wherein the point (30) is a blunt diamond point (Fig 3; column 7, lines 29 – 42), wherein the diameter of the fastener is at least one of 0.135 inch, 0.115 inch and 0.125 inch (column 7, lines 40 – 42, which discloses that the fastener has a diameter of 3.2mm, which is equivalent to .125 inches). The limitation of “the fastener has gone through a specific test to meet and beat a standard requirement compared to a control sample” is a product by process limitation (See MPEP 2113). The determination of patentability of a product by process claim is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. The fastener of Rogers is identical to the fastener as claimed in claim 8. The only difference between claim 8 and Rogers is that the fastener of claim 1 has gone through a specific test to meet and beat a standard requirement compared to a control sample, which has no bearing on the fastener product itself. Thus, Rogers discloses all of the limitations of claim 8.
Regarding claim 9, the additional limitations of the claim are directed to the product by process limitation of claim 8, and have no bearing on the fastener product itself. Thus, Rogers discloses all of the limitations of claim 9 for the reasons set forth in the rejection of claim 8.
Regarding claim 10, the additional limitations of the claim are directed to the product by process limitation of claim 8, and have no bearing on the fastener product itself. Thus, Rogers discloses all of the limitations of claim 10 for the reasons set forth in the rejection of claim 8.
Regarding claim 11, the additional limitations of the claim are directed to the product by process limitation of claim 8, and have no bearing on the fastener product itself. Thus, Rogers discloses all of the limitations of claim 11 for the reasons set forth in the rejection of claim 8.
Regarding claim 12, Rogers further discloses wherein the fastener is a single fastener (Fig 3).
Regarding claim 14, as best understood in view of the 112b issues noted above, Rogers discloses a fastener (24), comprising a head (28), wherein the head (28) is flat; a shank (26) that has two parts (26a, 26b), a smooth shank (26a) and a deformed shank (26b); a point (30), wherein the point (30) is a blunt diamond point (Fig 3; column 7, lines 29 – 42), wherein the diameter of the fastener is at least one of 0.135 inch, 0.115 inch and 0.125 inch (column 7, lines 40 – 42, which discloses that the fastener has a diameter of 3.2mm, which is equivalent to .125 inches). The limitation of “the fastener has gone through a specific test to meet and beat a standard requirement compared to a control sample” is a product by process limitation (See MPEP 2113). The determination of patentability of a product by process claim is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. The fastener of Rogers is identical to the fastener as claimed in claim 14. The only difference between claim 14 and Rogers is that the fastener of claim 1 has gone through a specific test to meet and beat a standard requirement compared to a control sample, which has no bearing on the fastener product itself. Thus, Rogers discloses all of the limitations of claim 14.
Regarding claim 15, the additional limitations of the claim are directed to the product by process limitation of claim 14, and have no bearing on the fastener product itself. Thus, Rogers discloses all of the limitations of claim 15 for the reasons set forth in the rejection of claim 14.
Regarding claim 16, Rogers further discloses wherein the fastener is a single fastener (Fig 3).
Regarding claim 17, the additional limitations of the claim are directed to the product by process limitation of claim 14, and have no bearing on the fastener product itself. Thus, Rogers discloses all of the limitations of claim 17 for the reasons set forth in the rejection of claim 14.
Regarding claim 18, the additional limitations of the claim are directed to the product by process limitation of claim 14, and have no bearing on the fastener product itself. Thus, Rogers discloses all of the limitations of claim 18 for the reasons set forth in the rejection of claim 14.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Rogers.
Regarding claim 2, Rogers discloses the claimed invention except for wherein the smooth shank length is 30%-35% and the deformed shank is 70%-65% of the entire length of the fastener. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rogers such that the smooth shank length is 30%-35% and the deformed shank is 70%-65% of the entire length of the fastener, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Such a modification would provide a length of smooth shank for reducing resistance when fastened to material to ensure that the fastener can be fully inserted into the material, while providing grooves along a large portion of the fastener to ensure that the fastener resists being pulled from a material being fastened. Further, the applicant has not provided any critically of these ranges.
Claims 7, 13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Rogers in view of Dalidowitz et al. (U.S. Patent Application Publication No. US 2005/0232723 A1).
Regarding claims 7, 13 and 19, Rogers discloses the claimed invention except for wherein the fastener is made up of carbon steel with a grade between C1020- C1050.
Dalidowitz is directed to a fastener. Dalidowitz specifically discloses wherein the fastener (10) is made up of carbon steel (paragraph [0036]).
A person of ordinary skill in the art before the effective filing date of the claimed invention
would have been motivated to modify Rogers such that the fastener is made up of carbon steel as taught by Dalidowitz, as both references and the claim invention are directed to fasteners. As discloses by Dalidowitz, it is well known for a fastener is made up of carbon steel. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rogers such that the fastener is made up of carbon steel as taught by Dalidowitz, as such a modification would provide a fastener that resists corrosion and ensures that the fastener is suitable for use in adverse environmental conditions (paragraph [0036]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rogers such the carbon steel is a grade between C1020- C1050, since the selection of a known material on the basis of its suitability for an intended use involves only routine skill in the art. Such a modification would provide a steel with a set material property to ensure that the material provides a suitable strength. Further, the applicant has not provided any critically of using these specific materials.
Conclusion
Accordingly, claims 1 – 19 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON D SHANSKE whose telephone number is (571)270-5985. The examiner can normally be reached Mon - Fri 9:30 - 5:30.
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/JASON D SHANSKE/Supervisory Patent Examiner, Art Unit 3614