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 .
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.
Election/Restrictions
Applicant’s election without traverse of Invention II, claims 8-14, in the reply filed on 09 June 2026 is acknowledged.
Claims 1-7 and 15-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09 June 2026.
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.
Claim 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Drissner (US 1,516,269).
Claim 8:
Drissner discloses a shaping tool for producing an impression of a micromechanical fastening element, comprising
a body (9) extending along a longitudinal axis about which the tool (9) is intended to be rotated (figs. 1-3, p2, ll. 21-27 – see also applicant’s disclosure as originally filed which defines a tool to comprise a body; therefore, the body and the tool comprise the same structure),
wherein the tool (9) includes, arranged at a longitudinal end of the body (9), a cutting member (18) comprising a cutting edge (18) intended to remove material from a workpiece so as to generate an impression when the tool (9) is rotated (figs. 1-3, p2, ll. 39-49); and
a matting member (14) comprising an active surface intended for matting a target surface of the impression when the tool (9) is rotated (figs. 1-3, p2, ll. 39-49).
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.
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Drissner (US 1,516,268); hereinafter Drissner ‘268 in view of Drissner (US 1,516,269); hereinafter Drissner ‘269).
Claim 8:ssh mac
Drissner ‘268 discloses a shaping tool for producing an impression of a micromechanical fastening element, comprising
a body (10) extending along a longitudinal axis about which the tool (10) is intended to be rotated (figs. 1-3, p1, ll. 79-82 – see also applicant’s disclosure as originally filed which defines a tool to comprise a body; therefore, the body and the tool comprise the same structure),
wherein the tool (10) includes a cutting member (12) comprising a cutting edge (12) intended to remove material from a workpiece so as to generate an impression when the tool (10) is rotated (figs. 1-3, p1, ll. 93-98); and
a matting member (9) comprising an active surface intended for matting a target surface of the impression when the tool (10) is rotated (figs. 1-3, p2, ll. 13-29).
Drissner ‘268 fails to disclose the cutting member is arranged at a longitudinal end of the body. Instead Drissner ‘268 discloses an embodiment wherein the cutting member is not arranged at a longitudinal end of the body (figs. 1-3).
Drissner ‘269 discloses a shaping tool for producing an impression of a micromechanical fastening element, comprising
a body (9) extending along a longitudinal axis about which the tool (9) is intended to be rotated (figs. 1-3, p2, ll. 21-27 – see also applicant’s disclosure as originally filed which defines a tool to comprise a body; therefore, the body and the tool comprise the same structure),
wherein the tool (9) includes, arranged at a longitudinal end of the body (9), a cutting member (18) comprising a cutting edge (18) intended to remove material from a workpiece so as to generate an impression when the tool (9) is rotated (figs. 1-3, p2, ll. 39-49); and
a matting member (14) comprising an active surface intended for matting a target surface of the impression when the tool (9) is rotated (figs. 1-3, p2, ll. 39-49).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to arrange the Drissner ‘268 cutting member at a longitudinal end of the Drissner ‘268 body as taught by Drissner ‘269 in order to provide for improved access to the workpiece and accommodate different workpiece geometries. Such relocation modification leaves Drissner ‘268’s shaving and burnishing functions unchanged and would have yielded a predictable result. See MPEP §2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results.
Allowable Subject Matter
Claims 9-14 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 9:
The prior art of record anticipates or renders obvious the shaping tool according to claim 8; wherein the cutting and matting members are in the form of the same disc; and, the prior art of record fails to disclose or fairly suggest the cutting and matting members are configured so that when the tool is driven in a first direction of rotation, the cutting member is active and the matting member is inactive, and when it is driven in a second direction of rotation opposite to the first direction of rotation, the cutting member is inactive and the matting member is active.
Claim 11:
The prior art of record fails to disclose or fairly suggest the shaping tool according to claim 8; wherein each of the cutting and matting members is in the form of a disc, the discs being arranged in parallel and coaxially, the cutting edges and the active surface being respectively arranged at the periphery of said discs
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hori et al. (US 2017/0341171 A1) discloses a combined machining and burnishing tool. Farrell et al. (US 2017/0259355 A1) discloses a combined machining and burnishing tool.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lee Holly whose telephone number is (571)270-7097. The examiner can normally be reached Monday - Friday 8:00 to 5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Lee A Holly/Primary Examiner, Art Unit 3726
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