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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the cylindrical structure (claims 1, 14, 19, etc.) and such with a spreading inclined surface (claims 2, 15, 18, 20), and the ribs (claim 18 and 19) in combination with the cylindrical structure (claims 1, 14, and 19) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Specifically Examiner notes that only a generally cylindrical structure is shown in Figs. 1A-3B and an annular structure is shown in Figs. 4A-5B. Examiner additionally notes the overcoming the below 112(a) and 112(b) rejections will likely obviate these objections.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-10 and 12-20 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 claim(s) 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.
Claims 1, 14, and 18-19 each recite the limitation “a cylindrical structure” in combination with other limitations meaning it must refer to elements 120 or 430, however none of these elements are disclosed as cylindrical. At best element 120 is disclosed as “generally cylindrical” and 430 is merely shown as annular or ring-shaped. Additionally the “ribs” of claims 18 and 19 are not described in combination with a cylindrical structure. Accordingly these limitations are not considered 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. Appropriate correction is required. Examiner recommends claiming “generally cylindrical structure” in claims 1 and 14 and “an annular structure” in claim 18 and 19 as the claimed ribs of such require it to only read on element 430.
Claims 2, 4, 12-13, 15, 17-18, and 20 each recites “the cylindrical structure” and thus fail to meet the written description requirement for the same reasons as claims 1, 14, and 19 (see above).
Claims 3, 5-10, and 16 fail to meet the written description requirement at least by virtue of depending on one of the above rejected claims.
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 2, 4-10, 12, 15, and 20 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 2, 15, 18, and 20 each recite “a spreading inclined surface”. This limitation in combination with the recitations of claims 1, 14, and 19 (on which these claims respectively rely) requiring the cylindrical structure to have such is indefinite as it is unclear how a cylinder can have an inclined surface on its exterior and still be a cylinder. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “a generally cylindrical structure” in claims 1, 14, and 19 as such would overcome the indefiniteness of these claims. Examiner notes such an amendment would overcome the 112(a) rejections of claims 1 and 14, but not claim 19 (see above).
Claim 12 is indefinite as it depends on a canceled claim (claim 11). Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended claim 12 to depend on claim 2 as that is what claim 11 previously depended on.
Claims 4-10 are indefinite at least by virtue of depending on an indefinite claim described above.
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 1-4 and 13-17, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wilke et al. (US 2020/0208661).
With regard to claim 1, Wilke discloses a tolerance compensation assembly (4 as seen in Figs. 3a-3b) for fastening a first part (200) to a second part (300) using a bolt (100), comprising: a tolerance compensation element (10) comprising a body (i.e. the body of 10 shown in Figs., 3a-3b) and having an axis (i.e. the central longitudinal axis through the through-hole in the center thereof), the body comprising at least two body segments (15, 15’, 15”, 15”’) arranged circumferentially about the axis (as seen in Fig. 3a), the at least two body segments together defining a channel (radially therein as seen in Figs. 3a-3b) extending along the axis (as seen in Figs. 3a-3b) and being connected to each other in a manner movable with respect to each other so as to enable the at least two body segments to come together and open with respect to each other (as described in para. [0087], etc.), and the body further including a threaded connection portion (13) provided on its outer surface for threaded connection with the first part (as seen in Fig. 3b); and a cylindrical structure (1 including 14 as seen in Figs., 3a-b, as interpreted in light of the above 112(b) interpretation above) being inserted into the channel along an insertion direction (as seen in Figs. 3a-b) and having a receiving path (2) extending along the axis (as seen in Figs. 3a-b) to receive the bolt (as seen in Fig. 3b it receives the bolt 100), the cylindrical structure being configured to be able to move in the insertion direction driven by the bolt while the bolt is fastening the first part to the second part, so as to apply a radial force to the at least two body segments to cause the at least two body segments to open by moving radially away from each other (as seen in Figs. 3a-b, disclosed in para. [0087], etc.).
With regard to claim 2, Wilke discloses that the cylindrical strucutre comprises a spreading inclined surface (as labeled in Examiner annotated Figs. 3a-b below), the spreading inclined surface extending at an angle toward the axis in the insertion direction (as seen in Figs. 3a-b); and the tolerance compensation element is provided with a mating inclined surface (i.e. the surface of 10 contacting such as seen in Figs. 3a-b) on an inner wall of the body thereof (as seen in Figs. 3a-b), and the spreading inclined surface slidably engages with the mating inclined surface to cause the at least two body segments to open by moving radially away from each other (as seen in Figs. 3a-b, disclosed in para. [0087], etc.).
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With regard to claim 3, Wilke discloses that body segments adjacent to one another are connected to each other through elastic elements (i.e. the portions where they are connected as seen in Figs. 3a-b the material thereof necessarily has elasticity under some loads).
With regard to claim 4, Wilke discloses that the cylindrical structure comprises an annular spreading ring (as seen in Figs. 3a-b), the outer surface of the spreading ring forming the spreading inclined surface (as seen in Figs. 3a-b); and wherein the spreading inclined surface slidably engages with the mating inclined surface when the spreading ring is driven by the bolt to move in the channel, thereby causing the at least two body segments to move radially away from each other (as seen in Figs. 3a-b, disclosed in para. [0087], etc.).
With regard to claim 13, Wilke discloses a fastening system (as seen in Figs. 3a-b) for fastening a first part (200) to a second part (300), comprising: a bolt (100); and the tolerance compensation assembly according to claim 1 (as detailed in the rejection of claim 1 above); wherein the threaded connection portion on the body of the tolerance compensation element of the tolerance compensation assembly is threadedly connected with the first part (as seen in Fig. 3b at 203), and the bolt is inserted into the receiving path of the cylindrical structure and into the second part (as seen in Fig. 3b).
With regard to claim 14, Wilke discloses a tolerance compensation assembly (4 as seen in Figs. 3a-3b) for fastening a first part (200) to a second part (300) using a bolt (100), comprising: a tolerance compensation element (10) comprising a body (i.e. the body of 10 shown in Figs., 3a-3b) and having an axis (i.e. the central longitudinal axis through the through-hole in the center thereof), the body comprising at least two body segments (15, 15’, 15”, 15”’) arranged circumferentially about the axis (as seen in Fig. 3a), the at least two body segments together defining a channel (radially therein as seen in Figs. 3a-3b) extending along the axis (as seen in Figs. 3a-3b) and being connected to each other in a manner movable with respect to each other so as to enable the at least two body segments to come together and open with respect to each other (as described in para. [0087], etc.), and the body further including a threaded connection portion (13) provided on its outer surface for threaded connection with the first part (as seen in Fig. 3b); and a cylindrical structure (1 including 14 as seen in Figs., 3a-b, as interpreted in light of the above 112(b) interpretation above) being inserted into and fully accommodated by the channel along an insertion direction (as seen in Figs. 3a-b it is received therein and the channel accommodates such to the full extent that it can receive it and depending on how tight the screw is screwed in and how large the hole in the first part is. Examiner notes Applicant has not otherwise defined “fully accommodated” to require a narrower interpretation) and having a receiving path (2) extending along the axis (as seen in Figs. 3a-b) to receive the bolt (as seen in Fig. 3b it receives the bolt 100), the cylindrical structure being configured to be able to move in the insertion direction driven by the bolt while the bolt is fastening the first part to the second part, so as to apply a radial force to the at least two body segments to cause the at least two body segments to open by moving radially away from each other (as seen in Figs. 3a-b, disclosed in para. [0087], etc.).
With regard to claim 15, Wilke discloses that the cylindrical strucutre comprises a spreading inclined surface (as labeled in Examiner annotated Figs. 3a-b above), the spreading inclined surface extending at an angle toward the axis in the insertion direction (as seen in Figs. 3a-b); and the tolerance compensation element is provided with a mating inclined surface (i.e. the surface of 10 contacting such as seen in Figs. 3a-b) on an inner wall of the body thereof (as seen in Figs. 3a-b), and the spreading inclined surface slidably engages with the mating inclined surface to cause the at least two body segments to open by moving radially away from each other (as seen in Figs. 3a-b, disclosed in para. [0087], etc.).
With regard to claim 16, Wilke discloses that body segments adjacent to one another are connected to each other through elastic elements (i.e. the portions where they are connected as seen in Figs. 3a-b the material thereof necessarily has elasticity under some loads).
With regard to claim 17, Wilke discloses that the cylindrical structure includes a neck section (as labeled in Examiner annotated Fig. 3a below as it is a reduced size portion), a step section (as labeled in Examiner annotated Fig. 3a below as it forms a step shape), and extension section (as labeled in Examiner annotated Fig. 3a below as it extends from another portion), an inclined connecting section (as labeled in Examiner annotated Fig. 3a below as it is an inclined surface and connected to at least another portion), and an operating section (as labeled in Examiner annotated Fig. 3a below as it has a function (e.g. as a stop)).
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Allowable Subject Matter
Though no claims are currently in condition for allowance upon correcting the above 112(a)/(b) issues claims 5-10, 12, 18-20 would appear to merely be objected to for depending on a rejected claim and should be allowable if rewritten into independent form (including any intervening claims). Examiner does note that such a determination of allowability would depend on the exact wording of any claim such amendments and may necessitate additional search and/or consideration.
Response to Arguments
Applicant's arguments with respect to claims 1-10 and 12-20 have been considered but are moot in view of the new/amended ground(s) of rejection above. In so much as they may apply to the new/amended grounds of rejection above, Applicant’s arguments filed 28 July 2026 have been fully considered but are not persuasive.
Applicant’s first argument against the prior art rejection of claim 1 (and presumably new claim 14) is that Wilke fails to disclose the body segments (15-15”’) are not connected to each other. This argument is not persuasive as they are clearly connected via element 11. It appears Applicant is arguing a narrower interpretation (e.g. that they are directly connected perhaps) than what the claims require. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s other arguments are with respect to the new limitations in new claims, however as such are all fully rejected in the new grounds of rejection above are not persuasive.
Other arguments asserting allowability of a dependent claim by virtue of being dependent on an argued base claims are not persuasive as all claims are currently rejected.
In the interest of advancing prosecution Examiner recommends correcting the above 112(a) and (b) issues, incorporating claim 5 into claim 1, incorporating claim 17 into claim 14 with additional descriptions of what each “section” is and where it is located, and canceling claim 18.
Conclusion
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 NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at (571) 272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS L FOSTER/ Primary Examiner, Art Unit 3675
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