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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-2) in the reply filed on is 06/25/2026 is acknowledged. Claim 3 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a floating mechanism in claim 2.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the originally filed specification reveals that the floating mechanism FM as shown in Fig. 5 is cylindrical member provided so as to cover the base portion P23. The floating mechanism FM is provided with a plurality of springs AB. Each of the springs AB is arranged around the base portion P23 and biases the base portion P23 toward its center. With this structure, the second reference pin P20 can swing in the radial direction of the second reference pin P20 with respect to the second base member 210 (specification, paragraph [0022]).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-2 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.
Claim 1 recites the limitations “at least three non-threaded pilot holes” line 2, “at least two of the pilot holes in the use state” in lines 12-13. However, the limitation “is insertable into the pilot hole in the use state” in line 15 is confusing and unclear which of the pilot holes recited earlier in claim 1 is this limitation being referred to. Is this one of the three non-threaded pilot holes or one of the at least two of the pilot holes.
Claim 2, lines 2-4 recites the limitation “the second base member further includes a floating mechanism corresponding to a second reference pin, which is a positioning pin other than a first reference pin being one positioning pin, among the at least two positioning pins” which is confusing as there is no recitation of a first reference pin prior to the second reference pin. Furthermore, the phrase “which is positioning pin other than a first reference pin being one positioning pin” is awkwardly worded. Claim 1 recites that the positioning component includes at least two positioning pins and claim 2 appears to recite a floating mechanism corresponding to two reference pins with each of the reference pins being one of the at least two positioning pins which is very confusing.
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.
(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(s) 1, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moss (US 3,148,562).
As applied to claim 1, Moss teaches a jig a tapping screw fastening jig that fastens a fastening tool using a tapping screw to a mating member having at least three non-threaded pilot holes (intended use limitation, emphasis added), the jig (10, Figs. 1-9) comprising a guide component (12); and a positioning component (14), wherein the guide component includes a first base member (12/34) provided with a guide hole portion (hole 52) through which the tapping screw is insertable at a position corresponding to each of the pilot holes in a use state of the tapping screw fastening jig (intended use limitation, emphasis added); and the positioning component (14) includes a second base member (14/48); and at least two positioning pins (44/46 and 60/62/64) provided on the second base member (14), where the at least two positioning pins are provided at positions corresponding to at least two of the pilot holes in the use state (intended use limitation, emphasis added), wherein each of the at least two positioning pins (44/46 and 60/62/64) including a first outer diameter portion (pin 44/46 has two diameters including first outer diameter 44 and second outer diameter 46, see Fig. 9; pin 60/62/64 has two diameters including first outer diameter 64 and second outer diameter 60, see Fig. 5) that is insertable into the pilot hole in the use state (intended use limitation, emphasis added), and a second outer diameter portion that is connected to the first outer diameter portion on a base end side of the first outer diameter portion and is insertable through the guide hole portion in the use state (intended use limitation, emphasis added).
The limitation “a tapping screw fastening jig that fastens a fastening tool using a tapping screw to a mating member having at least three non-threaded pilot holes” is considered to be intended use limitation. Although the recitations have been fully considered, it carries limited patentable weight. The applicant is reminded 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 structural limitations of the claim, as is the case here; refer to MPEP 2114-II. In the instant case, the apparatus of Moss meets all of the structural limitations, as claimed, and is capable of performing the limitations above.
Allowable Subject Matter
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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: The prior art of record fails to teach or fairly suggest the second member further includes a floating mechanism having the structure and elements including a cylindrical member and a plurality of spring, as supported in paragraph [0022] of the originally filed specification, such that the floating mechanism supports the second reference pin with respect to the second base member so as to be able to swing in a radial direction of the second reference pin.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Efune (DE4123344C1) teaches a jig including an angular guide for a tap drill comprises a guide sleeve (1), through which the drill drive passes which bears with an end foot on the surface of the work. The foot part consists of at least three vertically and circumferentially adjustable arms (9), each with two spaced, radially adjusting legs (14). Each arm can preferably be set to height and required angle by a trapezoidal groove (6) extending around the sleeve and each arm has a vertical groove (10) to work with a countersunk screw (8, abstract, Figs. 1-13, see English Machine Translation).
Maeda (US 20180333811A1) teaches a screw fastening process that can be performed by reliably positioning a screw in a screw hole while suppressing a decrease in the degree of freedom of movement of a screw fastening device. Provided is a screw guide device that guides a screw to a screw hole. The screw is fastened by a screw fastening device to the screw hole formed in a workpiece to be fastened to be fastened. The screw guide device includes a guide device body provided at a support that supports the workpiece to be fastened, and also includes a guide member that is provided in the guide device body and that is openable and closable in a radial direction orthogonal to a central axis of a shaft section of the screw. The guide member forms a screw insert through which the shaft section is inserted when the guide member is in a closed state (abstract, Figs. 1-12).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARANG AFZALI whose telephone number is (571)272-8412. The examiner can normally be reached M-F 7 am - 4 pm EST.
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/SARANG AFZALI/Primary Examiner, Art Unit 3726 07/10/2026
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