CTFR 18/411,461 CTFR 101634 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-27 AIA Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2023-045967 , filed on 3/22/2023 . 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Response to Arguments Examiner acknowledges and accepts applicant’s response to 35 U.S.C. §112(b) rejection for claims 1 and 2. Applicant’s arguments, see page 6 of Applicant's Remarks , filed 3/26/2026, with respect to claims 1 and 2 have been fully considered and are persuasive. The 35 U.S.C. §112(b) rejection of 2/13/2026 has been withdrawn. Applicant’s arguments, see page 6 of Applicant's Remarks, filed 3/26/2026, with respect to claim 1 have been fully considered and are persuasive. The 35 U.S.C. of claim 1 has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Potocki and Urayama . 07-30-03-h AIA Claim Interpretation Examiner acknowledges applicant’s response to examiner’s interpretation of claim 1 under 35 U.S.C. §112(f), wherein claim 1 has been amended to remove “a casting step for” and “a driving step for” and thus recites sufficient acts to perform the recited function without relying on generic placeholder language to achieve a particular function. Therefore, amended claim 1 does not invoke provisions of 35 U.S.C. §112(f). Claim Rejections - 35 USC § 112 07-30-01 AIA 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. 07-31-01 Amended claim 1 and claims 3-6 are 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 claims 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. Applicant states in 07-30-02 AIA 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. 07-34-01 Claims 4 and 5 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. 07-34-03 AIA The term “ within a predetermined period ” in claim 4, line 4, and claim 5, line 2 is a relative term which renders the claim indefinite. The term “ within a predetermined period ” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicant states in the specification since the first member 12 and the second member 14 are fastened (joined) without waiting for the molding heat of the first member 12 to cool down, the time until the molding heat of the first member 12 cools down can be effectively utilized . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim 1, and claims 3 and 6 are rejected under 35 U.S.C. §103 as being unpatentable over Potocki US 2018/0187281, in view of Urayama JP 2013059770 A. JP 2013059770 A is a published patent application hereinafter to be referred to as the Urayama patent . Potocki discloses a manufacturing method for a fastening structure, the fastening structure including a first member (Potocki – Vehicle Body Member 308, FIG. 3D), a second member (Potocki – Vehicle Body Member 306, FIG. 3D), and a self-piercing rivet (Potocki – Fastening Member 304, FIG. 3D), the manufacturing method comprising casting the first member (Potocki – 308) by die casting (Potocki Para [0089]: the vehicle body member (308) may be formed at a die casting station using a high pressure die casting procedure or other casting procedures.); and driving the self-piercing rivet (Potocki – 304) into, from a second member side, an overlapping part in which the second member (Potocki – 306) overlaps the first member (Potocki -308), while heat from casting remains in the first member (Potocki – 308) after casting the first member (Potocki – 308) (Potocki Para [0091]: FIG. 3D shows the punch 331 and die 332 with the rivet (304) being driven by the punch 331 into the laser conditioned selective portions 310 of the vehicle body member (306) and the vehicle body member (308); FIG. 3D; Potocki Para [0081]: In one embodiment, the vehicle body member (306) may be formed at the forming stations 10F and is transferred, using the transfer system 222, to the assembly station 10A. A proximate location between forming station 10F and assembly station 10A provides that heat produced within the casting during die casting would remain within the casting. After die casting, the casting would be exposed to an environment at room temperature. A room temperature environment would maintain some heat of the casting.). Potocki fails to disclose wherein a part of the first member overlapped by the second member is heated by a support member that supports the first member from a first side opposite to a second side on which the self-piercing rivet is to be driven into the overlapping part while driving the self-piercing rivet without heating from the second side. Urayama teaches a part of the first member (Urayama – Lower Member 6, FIG. 3) overlapped by the second member (Urayama – Upper Member 7, FIG. 3) is heated by a support member (Urayama – Die 3, FIG. 3) that supports the first member (Urayama – 6) from a first side opposite to a second side on which the self-piercing rivet (Urayama – Rivet 5, FIG. 3) is to be driven into the overlapping part while driving the self-piercing rivet (Urayama – 5) without heating from the second side (Urayama Para [0043]: The heater 4 built in the rivet die (3) is operated to heat the lower member (6) through the rivet die (3) in a state where the overlapping portion of the upper member (7) and the lower member (6) is positioned on the top surface 3a.; Para [0045]: by sliding the punch 2 in the cylinder 1 in a state where only the lower member (6) is softened, and pushing the self-piercing rivet (5) from the punch 2 toward the upper member (7) (pressure force Q) The body 5a of the rivet (5) is driven into the upper member (7) and penetrates it). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the manufacturing method for a fastening structure disclosed by Potocki to heat a first side of the first member without heating from a second side, as taught by Urayama, so to maintain the rigidity of the overlapping/upper member and begin the process of the rivet deforming as the rivet penetrates the upper member and into the lower member, wherein the rivet will further deform outwardly. (Urayama Para [0044]: When the matrix resin of the lower member (6) is softened, the matrix resin of the upper member (7) is not softened, and thus the upper member (7) has high rigidity as compared to the lower member (6).; [0046]: Then, the body 5a receives pressure q from the inside in the process of penetrating the upper member (7), opens outward while plastically deforming, and receives pressure q from the inside also in the process of being driven into the softened lower member (6) It will open outward while deforming.). Regarding claim 3, Potocki in view of Urayama discloses a manufacturing method for a fastening structure (See claim 1 rejection above). Urayama teaches a second member (Urayama – 7) is not heated from the second side on which the self-piercing rivet (Urayama – 5) is to be driven into the overlapping part (Urayama Para [0044]: When the matrix resin of the lower member (6) is softened, the matrix resin of the upper member (7) is not softened); Para [0045]: by sliding the punch 2 in the cylinder 1 in a state where only the lower member (6) is softened, and pushing the self-piercing rivet (5) from the punch 2 toward the upper member (7) (pressure force Q) The body 5a of the rivet (5) is driven into the upper member (7) and penetrates it). Regarding claim 6, Potocki discloses a manufacturing method for a fastening structure wherein the support member is a die (Potocki – Die 332) that includes a general support surface and a recessed portion (See FIG. 3D below), the general support surface directly contacting the first member (Potocki – 308) and the recessed portion being spaced apart from the first member (Potocki – 308). PNG media_image1.png 566 641 media_image1.png Greyscale FIG. 3D Urayama teaches the first member (Urayama – 6) is heated from the general support surface and the recessed portion by a built-in heater (Urayama – Heater 4, FIG. 2) of the die (Urayama – 3), the built-in heater being provided at positions corresponding to the general support surface and the recessed portion (See FIG. 2 below). PNG media_image2.png 614 873 media_image2.png Greyscale FIG. 2 07-22-aia AIA Claim s 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Potocki US 2018/0187281 A1 in view of Urayama JP2013059770A as applied to claim 1 above, and further in view of Smeyers et al. US 9,352,377 B2. US 9,352,377 is a published patent hereinafter to be referred to as the Smeyers patent . Regarding claim 4, Potocki in view of Urayama discloses the manufacturing method for a fastening structure, wherein the self-piercing rivet is driven into the overlapping part, however, Potocki in view of Urayama fails to disclose wherein the self-piercing rivet is driven into the overlapping part within a predetermined period after casting the first member. Smeyers teaches driving a self-piercing rivet into an overlapping part within a predetermined period after casting a first member (Smeyers Col 4, Lines 28-45: A particular embodiment of the invention relates to a method for producing a joint in at least two overlapping metal work pieces using a joining tool comprising a punch to insert a rivet, more preferably a self-piecing rivet, into the work pieces to form the joint, the work pieces having a first surface that is nearest to the tool, the method comprising placing the work pieces between the tool and a die, and positioning a rivet between the punch and the first surface, using the punch to insert the rivet into the at least two overlapping work pieces such that the first surface is pierced by the rivet, and wherein at least one of the first work piece and second work piece is a sheet material made of an aluminium alloy of the AA7000-series, and wherein there is applied a heat-treatment to at least the work piece of said 7000-series sheet material within 120 minutes prior to the production of the joint and/or for at least part of the time during production of the joint so as to temporarily reduce the tensile strength in the joining area of at least of the work piece of said 7000-series sheet material; Col. 9, Lines 13-16: Before riveting, the T4-temper sheet had undergone a heat-treatment of 190° C. for between 1 and 10 seconds, and the rivets were produced within 2 hours from the heat-treatment.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the manufacturing method for a fastening structure disclosed by Potocki in view of Urayama, to drive the self-piercing rivet into the overlapping part within a predetermined period after casting the first member, as taught by Smeyers, to reduce the tensile strength around the joining area to prevent the formation of cracks, and produce a sound joint (Smeyers Col 4, Lines 33-45: the method comprising placing the work pieces between the tool and a die, and positioning a rivet between the punch and the first surface, using the punch to insert the rivet into the at least two overlapping work pieces such that the first surface is pierced by the rivet, and wherein at least one of the first work piece and second work piece is a sheet material made of an aluminum alloy of the AA7000- series, and wherein there is applied a heat-treatment to at least the work piece of said 7000-series sheet material within 120 minutes prior to the production of the joint and/or for at least part of the time during production of the joint so as to temporarily reduce the tensile strength in the joining area of at least of the work piece of said 7000-series sheet material; Col. 9, Lines 16-19: The resulting riveted joints shown in FIGS. 7-10 show that there was no formation of cracks, and a sound and reproducible joint is formed in each case.). Regarding claim 5, Potocki in view of Urayama and Smeyers discloses the manufacturing method for a fastening structure, wherein the self-piercing rivet is driven into the overlapping part within a predetermined period. Smeyers further teaches driving a self-piercing rivet into an overlapping part within a predetermined period after casting a first member and before a temperature of the first member falls below a predetermined temperature during a period after casting the first member (Smeyers Col 4, Lines 28-45: A particular embodiment of the invention relates to a method for producing a joint in at least two overlapping metal work pieces using a joining tool comprising a punch to insert a rivet, more preferably a self-piecing rivet, into the work pieces to form the joint, the work pieces having a first surface that is nearest to the tool, the method comprising placing the work pieces between the tool and a die, and positioning a rivet between the punch and the first surface, using the punch to insert the rivet into the at least two overlapping work pieces such that the first surface is pierced by the rivet, and wherein at least one of the first work piece and second work piece is a sheet material made of an aluminium alloy of the AA7000-series, and wherein there is applied a heat-treatment to at least the work piece of said 7000-series sheet material within 120 minutes prior to the production of the joint and/or for at least part of the time during production of the joint so as to temporarily reduce the tensile strength in the joining area of at least of the work piece of said 7000-series sheet material; Col. 8, Lines 64-67: the same sheets in the T4 condition have been heat-treated for 10 sec. at 180° C., cooled on air to RT and then within about 5 minutes after cooling joined using the two SPR techniques.). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the manufacturing method for a fastening structure disclosed by Potocki in view of Urayama, to drive the self-piercing rivet into the overlapping part within a predetermined period after casting the first member and before a temperature of the first member falls below a predetermined temperature during a period after casting the first member, as taught by Smeyers, to reduce the tensile strength around the joining area to prevent the formation of cracks, and produce a sound joint (Smeyers Col 4, Lines 33-45: the method comprising placing the work pieces between the tool and a die, and positioning a rivet between the punch and the first surface, using the punch to insert the rivet into the at least two overlapping work pieces such that the first surface is pierced by the rivet, and wherein at least one of the first work piece and second work piece is a sheet material made of an aluminum alloy of the AA7000-series, and wherein there is applied a heat-treatment to at least the work piece of said 7000-series sheet material within 120 minutes prior to the production of the joint and/or for at least part of the time during production of the joint so as to temporarily reduce the tensile strength in the joining area of at least of the work piece of said 7000-series sheet material; Col. 9, Lines 16-19: The resulting riveted joints shown in FIGS. 7-10 show that there was no formation of cracks, and a sound and reproducible joint is formed in each case.). Conclusion 07-40 AIA Applicant's amendment necessitated the new grounds 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 DARLINGTON N IBEKWE whose telephone number is (571)272-2474. The examiner can normally be reached Monday - Friday 8am - 4:00pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Templeton can be reached at (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. 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Patent Examiner Art Unit 3725 /Christopher L Templeton/Supervisory Patent Examiner, Art Unit 3725 Application/Control Number: 18/411,461 Page 2 Art Unit: 3725 Application/Control Number: 18/411,461 Page 3 Art Unit: 3725 Application/Control Number: 18/411,461 Page 4 Art Unit: 3725 Application/Control Number: 18/411,461 Page 5 Art Unit: 3725 Application/Control Number: 18/411,461 Page 6 Art Unit: 3725 Application/Control Number: 18/411,461 Page 7 Art Unit: 3725 Application/Control Number: 18/411,461 Page 8 Art Unit: 3725 Application/Control Number: 18/411,461 Page 9 Art Unit: 3725 Application/Control Number: 18/411,461 Page 10 Art Unit: 3725 Application/Control Number: 18/411,461 Page 11 Art Unit: 3725 Application/Control Number: 18/411,461 Page 12 Art Unit: 3725
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