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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16-17, 19-27 and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over O’Banion (US 2003/0012619 A1).
Claim 16:
O’Banion discloses a fastening element for fastening to a substrate (abstract), comprising
a shaft (28) defining a fastening direction and having an end face (35) pointing in the fastening direction and a circumferential surface (30) adjoining directly to the end face (35), wherein the shaft (28) is configured to be welded on the substrate at the circumferential surface (30) when the fastening element is driven into a blind hole to anchor the fastening element in the blind hole, and wherein the circumferential surface (30) is slanted relative to the fastening direction (figs. 1-4, [0016] and [0017]).
O’Banion fails to disclose an angle of inclination of the circumferential surface relative to the fastening direction is between 2° and 4°. Instead, O’Banion discloses an angle of inclination of the circumferential surface relative to the fastening direction is undefined. MPEP 2144.04 Legal Precedent as Source of Supporting Rational instructs that “where the only difference between the prior art and the claims was a recitation of relative dimensions and the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” See MPEP 2144.04(IV)(A)). A person of ordinary skill is also a person of ordinary creativity, not an automaton. Therefore, it would have been within the level of ordinary skill in the art for one having ordinary skill in the art to modify the device taught by O’Banion to provide an angle of inclination of the circumferential surface relative to the fastening direction between 2° and 4°, without modification of the functionality of the device. Thus, O’Banion renders obvious applicant’s claimed invention as recited by claim 16.
Claim 17:
O’Banion renders obvious the fastening element according to claim 16, wherein the fastening element has an anchoring section (34), which is configured to be anchored in the blind hole and includes the shaft (28), and a connection section (32) protruding from the anchoring section (34) and configured to connect an attachment to the fastening element (figs. 1-4, [0016]).
Claim 19:
O’Banion renders obvious the fastening element according to claim 16, wherein a cross-sectional area of the shaft (28) oriented perpendicular to the fastening direction has external dimensions, which increase steadily along the fastening direction starting from the end face (35) (figs. 1-4, [0016]).
Claim 20:
O’Banion renders obvious the fastening element according to claim 19, wherein the cross-sectional area has the shape of a circle, and wherein the outer dimensions comprise a diameter of the circle (figs. 1-4, [0016]).
Claim 21:
O’Banion renders obvious the fastening element according to claim 20, wherein the diameter of the circle increases up to a maximum diameter dmax. O’Banion fails to disclose dmax is at least 5.2 mm and at most 5.8 mm. MPEP 2144.04 Legal Precedent as Source of Supporting Rational instructs that “where the only difference between the prior art and the claims was a recitation of relative dimensions and the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” See MPEP 2144.04(IV)(A)). A person of ordinary skill is also a person of ordinary creativity, not an automaton. Therefore, it would have been within the level of ordinary skill in the art for one having ordinary skill in the art to modify the device taught by O’Banion to provide a maximum diameter dmax which is at least 5.2 mm and at most 5.8 mm, without modification of the functionality of the device. Thus, O’Banion renders obvious applicant’s claimed invention as recited by claim 21.
Claim 22:
O’Banion renders obvious the fastening element according to claim 20, wherein the circumferential surface (30) has the shape of a truncated cone (figs. 3-4).
Claim 23:
O’Banion renders obvious the fastening element according to claim 16, wherein the shaft (28) has a shaft length L in the fastening direction. O’Banion fails to disclose shaft length L is at least 5.8 mm and at most 6.7 mm. MPEP 2144.04 Legal Precedent as Source of Supporting Rational instructs that “where the only difference between the prior art and the claims was a recitation of relative dimensions and the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” See MPEP 2144.04(IV)(A)). A person of ordinary skill is also a person of ordinary creativity, not an automaton. Therefore, it would have been within the level of ordinary skill in the art for one having ordinary skill in the art to modify the device taught by O’Banion to provide a shaft length L in the fastening direction which is at least 5.8 mm and at most 6.7 mm, without modification of the functionality of the device. Thus, O’Banion renders obvious applicant’s claimed invention as recited by claim 23.
Claim 24:
O’Banion renders obvious the fastening element according to claim 16, wherein the end face (35) has the shape of a circle and has an end face (35) diameter ds which is at least 4.3 mm and at most 5.0 mm. MPEP 2144.04 Legal Precedent as Source of Supporting Rational instructs that “where the only difference between the prior art and the claims was a recitation of relative dimensions and the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” See MPEP 2144.04(IV)(A)). A person of ordinary skill is also a person of ordinary creativity, not an automaton. Therefore, it would have been within the level of ordinary skill in the art for one having ordinary skill in the art to modify the device taught by O’Banion to provide an end face having a diameter ds which is at least 4.3 mm and at most 5.0 mm, without modification of the functionality of the device. Thus, O’Banion renders obvious applicant’s claimed invention as recited by claim 24.
Claim 25:
O’Banion renders obvious the fastening element according to claim 16, wherein the end face (35) comprises a lead-in bevel (26) at its circumferential edge, and wherein the circumferential surface (30) adjoins directly to the lead-in bevel (figs. 1-4, [0016]).
Claim 26:
O’Banion renders obvious the fastening element according to claim 25, wherein the lead-in bevel (26) extends along the full circumferential edge of the end face (35) (figs. 1-6, [0016]).
Claim 27:
O’Banion renders obvious the fastening element according to claim 25, wherein the lead-in bevel (26) comprises a chamfer (figs. 1-4, [0016]).
Claim 29:
O’Banion renders obvious the fastening element according to claim 16, wherein the shaft (28) is configured to be welded on the substrate at the circumferential surface (30) when the fastening element is linearly driven into the blind hole.
Claim 30:
O’Banion renders obvious the fastening element according to claim 16, wherein the fastening element consists of a first material comprising at least one of a metal and an alloy (figs 1-4, [0021]).
Claim 31:
O’Banion renders obvious the fastening element according to claim 30, wherein the fastening element consists of a metal or an alloy (figs. 1-4, [0021]).
Claims 16-18 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Foser (US 2003/0012619 A1).
Claim 16:
Foser discloses a fastening element for fastening to a substrate (abstract), comprising
a shaft (150) defining a fastening direction and having an end face (170) pointing in the fastening direction and a circumferential surface (140) adjoining directly to the end face (170), wherein the shaft (150) is configured to be welded on the substrate at the circumferential surface (140) when the fastening element is driven into a blind hole to anchor the fastening element in the blind hole, and wherein the circumferential surface (140) is slanted (frustoconical) relative to the fastening direction (fig. 1 [0023]).
Foser fails to disclose an angle of inclination of the circumferential surface relative to the fastening direction is between 2° and 4°. MPEP 2144.04 Legal Precedent as Source of Supporting Rational instructs that “where the only difference between the prior art and the claims was a recitation of relative dimensions and the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” See MPEP 2144.04(IV)(A)). A person of ordinary skill is also a person of ordinary creativity, not an automaton. Therefore, it would have been within the level of ordinary skill in the art for one having ordinary skill in the art to modify the device taught by Foser to provide an angle of inclination of the circumferential surface relative to the fastening direction between 2° and 4°, without modification of the functionality of the device. Thus, Foser renders obvious applicant’s claimed invention as recited by claim 16.
Claim 17:
Foser renders obvious the fastening element according to claim 16, wherein the fastening element has an anchoring section (150), which is configured to be anchored in the blind hole and includes the shaft (150), and a connection section (180) protruding from the anchoring section (150) and configured to connect an attachment to the fastening element (130) (fig. 1, [0023] – [0026]).
Claim 18:
Foser renders obvious the fastening element according to claim 17, comprising, between the anchoring section (150) and the connection section (180), a stop shoulder (210) configured to abut upon a surface of the substrate (fig. 1, [0023] – [0026]).
Claim 35:
Foser discloses a fastening system (abstract) comprising
a substrate (100) consisting of a substrate material and a fastening element (130), which has a shaft (150) defining a fastening direction having an end face (170) pointing in the attachment direction and having a circumferential surface (140) adjoining directly to the end face (170), wherein the shaft (150) is configured to be welded on the substrate (100) at the circumferential surface when the fastening element (130) is driven into a blind hole (110) to anchor the fastening element (130) in the blind hole (110), and wherein the circumferential surface (140) is stepped (threads) relative to the fastening direction.
Foser fails to disclose an angle of inclination of the circumferential surface relative to the fastening direction is between 2° and 4°. MPEP 2144.04 Legal Precedent as Source of Supporting Rational instructs that “where the only difference between the prior art and the claims was a recitation of relative dimensions and the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” See MPEP 2144.04(IV)(A)). A person of ordinary skill is also a person of ordinary creativity, not an automaton. Therefore, it would have been within the level of ordinary skill in the art for one having ordinary skill in the art to modify the device taught by Foser to provide an angle of inclination of the circumferential surface relative to the fastening direction between 2° and 4°, without modification of the functionality of the device. Thus, Foser renders obvious applicant’s claimed invention as recited by claim 16.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over O’Banion as applied to claim 16 above, and further in view of Yamazaki (JP 2010 190342 A) as provided by machine translation of (JP 2010 190342) as an English language equivalent.
Claim 28:
O’Banion renders obvious the fastening element according to claim 16; and O’Banion fails to disclose the circumferential surface has a plurality of different angles of inclination relative to the fastening direction, starting from the end face against the fastening direction.
Yamazaki discloses a fastening element (2) for fastening to a substrate (31) (figs. 1-2, [0021]), comprising a shaft defining a fastening direction (LP) and having an end face pointing in the fastening direction (LP) and a circumferential surface adjoining directly to the end face (figs. 1-2, [0023] and [0026] – see also annotated reproduction of fig. 2, below); wherein the circumferential surface has a plurality of different angles of inclination (21 and 22) relative to the fastening direction, starting from the end face against the fastening direction (figs. 1-2, [0024] – see also annotated reproduction of fig. 2, below). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the fastening element of O’Banion by providing a plurality of different angles of inclination relative to the fastening direction as taught by Yamazaki. See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because both prior art references are drawn to fastening elements.
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Response to Arguments
Applicant’s arguments, see Applicant Arguments/Remarks Made in an Amendment, filed 22 September 2025, with respect to claims 16-20, 22, 25-20 and 33-35 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant has amended the claimed invention. The 35 U.S.C 103 rejection(s) of claims 16-20, 22, 25-29 and 33-35 have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of O’Banion (US 2003/0012619 A1) and Foser (2003/0012619 A1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Birkelbach (US 2008/0253829 A1) discloses a fastening element for a friction-welded joint.
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 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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/Lee A Holly/Primary Examiner, Art Unit 3726