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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02 April 2026 has been entered.
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 30-31 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), the end face having outer dimensions, wherein the shaft (28) is configured to be welded on the substrate at the circumferential surface (30) when the fastening element is linearly driven by a bolt-firing tool (torque transmitting device) into a blind hole having a blind hole diameter to anchor the fastening element in the blind hole, wherein the outer dimensions of the end face are configured to exceed the blind hole diameter, so that when the shaft is driven into the blind hole, the shaft is configured to displace a part of the substrate in a depth direction, and the shaft is welded on the substrate at the circumferential surface, and wherein the circumferential surface (30) is slanted relative to the fastening direction (figs. 1-4, [0016] [0017] and [0018]).
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 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 are rejected under 35 U.S.C. 103 as being unpatentable over Foser (US 2017/0097025 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), the end face having outer dimensions, wherein the shaft (150) is configured to be welded on the substrate at the circumferential surface (140) when the fastening element is linearly driven by a bolt-firing tool into a blind hole having a blind hole diameter to anchor the fastening element in the blind hole, wherein the outer dimensions of the end face are configured to exceed the blind hole diameter, so that when the shaft is driven into the blind hole, the shaft is configured to displace a part of the substrate in a depth direction, and the shaft is welded on the substrate at the circumferential surface, and wherein the circumferential surface is slanted relative to the fastening direction, and wherein the circumferential surface (140) is slanted (frustoconical) relative to the fastening direction (fig. 1, [0013] [0026]).
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 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 02 April 2026, with respect to the rejection of claims 16-28, 30 and 31 under 35 U.S.C. 103 have been fully considered and are not persuasive.
On page 5, Applicant argues the Office has not disclosed how O’Banion renders obvious the structural limitations of claim 29. Applicant’s arguments are moot because Applicant has canceled claim 29.
Applicant’s remarks on pages 6-9 consist primarily of descriptive statements and Applicant observations regarding the disclosed invention, Applicant’s interpretation of the cited references, and comparisons between selected figures. These remarks do not, in substantial part, identify specific claim limitations that are allegedly absent from the cited references.
The remarks presented by Applicant on pages 6-9 consist largely of narrative statements and Applicant observations rather direct arguments that the cited references fail to disclose particular claim limitations. More specifically: In the first paragraph of page 6, Applicant describes features and operation of the disclosed invention. In the second and third paragraphs of page 6, Applicant provides Applicant’s interpretation of O’Banion and summarizes O’Banion’s use of a spin-weld pin. In the fourth paragraph of page 6, Applicant discusses the intended manner of use of the claimed fastening element and asserts that the fastening element is not intended to be rotationally driven. Applicant cites passages from the original disclosure to support this interpretation and further asserts limitations regarding a “bolt-firing tool” that are not expressly set forth in the originally filed disclosure. In the fifth paragraph of page 6, Applicant describes purported operational benefits of the disclosed invention. In the final paragraph of page 6, Applicant highlights visual differences between figure 1 of the present application and figure 3 of O’Banion. On pages 8-9, Applicant states that Foser discloses a threaded connection that is reversible and therefore allegedly does not teach the claimed fastening arrangement.
The foregoing remarks do not clearly identify any specific deficiency in the Examiner’s claim interpretation, factual findings, or mapping of the cited references to the pending claims. Nor do the remarks persuasively demonstrate that any expressly recited claim limitation is absent from the prior art of record. To the extent Applicant’s statements are understood as asserting otherwise, such inferred arguments are addressed below and are not persuasive.
To the extent Applicant’s statements are understood as asserting that: 1. O’Banion does not teach a fastening element that is linearly driven by a bolt-firing tool; and, 2. Foser does not teach a welded connection formed by linear insertion into a blind hole, such inferred arguments are not persuasive for the reasons set forth below.
1. O’Banion does not teach a fastening element that is linearly driven by a bolt-firing tool
Applicant’s disclosure as originally filed does not limit “bolt-firing tool” to a particular structure. The specification recites “the shaft is driven in a linear manner into the blind hole. Preferably, a bolt-firing tool is used for this purpose” ([0015]); and, “the shaft 50 is driven in a linear manner into the blind hole 80, for example using a bolt-firing tool” ([0026]). The use of the term “preferably” and “for example” demonstrates that a bolt-firing tool is merely an illustrative example of a tool used to drive the fastening element linearly into the blind hole. The specification does not define a bolt-firing tool in structural terms and does not limit the term to powder-actuated, gas-actuated or impact-only devices. Under a broadest reasonable interpretation, a “bolt-firing tool” encompasses any tool capable of engaging the fastening element and applying force to drive the fastening element linearly into the blind hole. And, O’Banion applies linear force to drive the fastening element.
O’Banion expressly discloses that the torque-transmitting device applies an axial force to the pin while driving the pin into the substrate. Although, O’Banion additionally rotates the pin, the claim, and/or Applicant’s disclosure as originally filed, does not exclude simultaneous rotation and does not recite “without rotation,” “solely by linear impact,” or similar limiting language or negative claim limitations. Thus, O’Banion teaches a fastening element that is driven linearly by a tool into the substrate, even when rotational motion is present.
2. Foser does not teach a welded connection formed by linear insertion into a blind hole
Foser expressly teaches linear driving. Foser discloses that the fastening element is “pressed, glued, welded, soldered and/or screwed into the blind bore” and further states that the fastening element may be formed as a “screw, nail, rivet, pin or bolt” ([0013]). Pressing a fastening element into a blind bore constitutes linear driving of the fastening element along its longitudinal axis. Foser therefore expressly teaches a fastening element configured to be linearly driven into a blind bore.
3. The claim does not require the tool to perform welding
The claimed invention is directed to the structure and configuration of the fastening element and the resulting installation in the substrate. The claim does not require any specific internal mechanism of the installation tool. The welding occurs as a result of frictional interaction between the fastening element and the substrate during insertion.
4. The amendment does not introduce a structural distinction
The phrase “linear driven by a bolt-firing tool” describes the manner in which the fastening element is installed and the type of tool that may be used. It does not impose any additional structural limitation on the fastening element beyond what is already disclosed by O’Banion and Foser.
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.
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/Lee A Holly/Primary Examiner, Art Unit 3726
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