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 “the opening of the structural component with a thread” in claim 11 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 § 103
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 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Steffenfauseweh et al., US20100278612 (hereinafter, Steffenfauseweh).
Regarding claim 1, Steffenfauseweh teaches an adjustment element (see Figs. 1-2) with which a component (70, see Figs. 4C-4e) is fastenable and positionable in the space, comprising the following features:
a sleeve-like hollow screw 10 with a first (upper end of the hollow screw 10 in Fig. 3a) and a second axial end (bottom end of the hollow screw 10 in Fig. 3a), a drive feature (see hexagonal, tool receiving drive feature in upper end of the hollow screw 10) and an outer thread (see Figs. 3a-3d) at which a component is supportable and positionable in axial direction of the hollow screw (see Figs. 1-2),
a tube-like fastening opening (see Fig. 2) extends between the first and the second axial end of the sleeve-like hollow screw,
within the tube-like fastening opening, a dampening fastening sleeve 60 is arranged so that the hollow screw is fastenable by means of the fastening sleeve with a fastening means 40 to a structural component 50.
Steffenfauseweh fails to teach wherein vibrations between the structural component and the hollow screw is reducible.
However, it is the examiner’s position that sleeve 60 made of plastic variant is capable of achieving such limitations where the vibrations between the structural component and the hollow screw is reducible. Plastic variant of inner element 20 aid the positioning as well as the fasting is disrupted by the adjustment element.
Claim 2-15 are rejected under 35 U.S.C. 103 as being unpatentable over Steffenfauseweh in view of Braun et al., US6623226 (hereinafter, Braun).
Regarding claim 2, Steffenfauseweh teaches and/or make obvious of the adjustment element according to claim 1, but fails to teach wherein the dampening fastening sleeve of which has a circumferential and outwardly protruding radial collar on a first axial end, with the radial collar projecting beyond an inner diameter of the tube-like fastening opening, so that the
fastening sleeve is axially supportable on the first or the second axial end of the hollow screw.
However, Braun teaches a assembly unit having a cylindrical shaped bush (see Fig. 9) having a circumferential and outwardly protruding radial collar 20 on a first axial end (see Fig. 9), which the radial collar projection beyond an inner diameter of the tube-like fastening opening (see Fig. 6), so that the fastening sleeve is axially supportable on the first or the second axial end of the hollow screw.
It is the examiner’s position that it would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to have the bottom end of the fastening sleeve in Steffenfauseweh modified to have collar as taught by Braun for sealing effect.
Regarding claim 3, Steffenfauseweh in view of Braun teaches and/or make obvious of the adjustment element according to claim 1, but fails to expressly teach the dampening fastening sleeve, measured without radial collar, is configured longer than the tube-like fastening opening, so that the hollow screw is rotatably fastenable to a structural component at the fastening sleeve.
It is the examiner’s position that it would have been an obvious matter of design choice to have modified the fastening sleeve in Steffenfauseweh to be longer than the fastening opening in order to meet desired size intended by the user for effectively and securely mounting of the assembly, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. MPEP 2144.04 (iv) (a).
Regarding claim 4, Steffenfauseweh in view of Braun teaches and/or make obvious of the adjustment element according to claim 1, Braun further teaches whose dampening fastening sleeve 18 comprises a first elastic dampening layer 32 on a radially outer lateral surface so as to reduce a vibration transmission between the hollow screw and the fastening sleeve.
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to have modified the fastening sleeve in Steffenfauseweh to have elastic dampening layer as taught by Braun for frictional engagement and/or form fit secured connection (see column 5, lines 48-67).
Regarding claim 5, Steffenfauseweh in view of Braun teaches and/or make obvious of the adjustment element according to claim 4, Braun further teaches where an inner diameter of the tube-like fastening opening is smaller than an outer diameter of the dampening fastening sleeve 18 with elastic dampening layer 32, so that the fastening sleeve is held in the tube-like fastening opening in a friction-fit manner (see column 11, lines 14-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to have diameter of fastening sleeve to be bigger than the receiving space as taught by Braun to attain support by frictional engagement without allowing unnecessary rotation (see column 11, lines 14-20).
Regarding claim 6, Steffenfauseweh in view of Braun teaches and/or make obvious of the adjustment element according to claim 4, the dampening fastening sleeve of which has a circumferential and outwardly protruding radial collar on a first axial end, with the radial collar projecting beyond an inner diameter of the tube-like fastening opening, so that the fastening sleeve is axially supportable on the first or the second axial end of the hollow screw (see rejection and rationale set forth in claims 1-2 and 4 for limitations regarding collar and dampening sleeve).
and whose radial collar comprises a second elastic dampening layer on a side facing the shaft
of the fastening sleeve so as to reduce a vibration transmission in axial direction between the hollow screw and the fastening sleeve.
Concerning limitations above, it is the examiner’s position Braun is still capable of meeting such limitations given the criticality of the features in the disclosure.
The disclosure does not provide any evidence of the criticality of the shape of the second dampening layer in respect to first dampening layer in para. [0026-0027]. Therefore, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to have the shape dampening layer as an obvious change in shape. MPEP 2144.04 (iv)(b).
Regarding claim 7, Steffenfauseweh in view of Braun teaches and/or make obvious of the adjustment element according to claim 1, Steffenfauseweh further teaches wherein fastenable by means of the fastening means to a structural component, the outer diameter of which is smaller than an inner diameter of the fastening opening so as to guarantee a radial tolerance compensation between the adjustment element and the fastening means (see claim 7 stating the diameter of a through opening of the inner element is larger than the diameter of the fastening means so that a maximum lateral positioning travel of the adjustment element can be determined by the difference in the diameters).
Regarding claim 8, Steffenfauseweh in view of Braun teaches and/or make obvious of the structural component 70 with an opening to which the adjustment element according to claim 1 is fastened with a fastening means 40.
Regarding claim 9, Steffenfauseweh in view of Braun teaches and/or make obvious of the structural component according to claim 8, wherein a component 50 is fastened on the outer thread of the hollow screw of the adjustment element in a way that tolerances between the structural component and the component are adjustable (see Figs. 1-2).
Regarding claim 10, An installation method, with which an add-on part is fastenable and positionable to a structural component, wherein the installation method comprises the following steps:
screwing-in a hollow screw of the adjustment element according to claim 1 into a supporting opening of the add-on part,
b. rotating the hollow screw which is fastened to the structural component such that the
add-on part is displaced along a longitudinal axis of the hollow screw and
fastening the hollow screw with add-on part to an opening of the structural component
with a fastening means which is arranged within the tube-like fastening opening of the dampening fastening sleeve.
Regarding claim 10¸ Examiner notes that the instant method step limitations are considered obvious over the prior art in view of rejections of the structural limitations previously set forth. Although the prior art does not explicitly set forth the method steps as claimed when the method steps essentially set forth the provision and use of an apparatus, as intended by its structure, then such method steps are considered obvious when the structure of the apparatus has been demonstrated as obvious or anticipated by the prior art.
Regarding claim 11, Steffenfauseweh in view of Braun teaches and/or make obvious of the installation method according to claim 10, but fails expressly teach the opening of the structural component with a thread.
However, it is the examiner’s position that it is common and obvious for one of ordinary skill in the art before the effective filing date of claimed invention to have provide the opening of the structural component with a thread which is configured so as to match a threaded bolt as the fastening means as claimed above to fasten the fastening means 40 to the auto body sheet 70 to threadably secure the adjustment element.
Regarding claim 12, Steffenfauseweh in view of Braun teaches and/or make obvious of the installation method according to claim 11 with the further step:
arranging the threaded bolt in combination with a supporting disc 50 in the dampening fastening sleeve (see modification established in claims 2-5), so that the hollow screw is fastened in a rotatable manner to the structural component.
Regarding claim 12¸ Examiner notes that the instant method step limitations are considered obvious over the prior art in view of rejections of the structural limitations previously set forth. Although the prior art does not explicitly set forth the method steps as claimed when the method steps essentially set forth the provision and use of an apparatus, as intended by its structure, then such method steps are considered obvious when the structure of the apparatus has been demonstrated as obvious or anticipated by the prior art.
Regarding claim 13, Steffenfauseweh in view of Braun teaches and/or make obvious of the installation method according to claim 11, with the further step:
rotating the hollow screw by means of an outer or an inner drive feature (15, see Fig. 4a) so as to change the axial position of the add-on part on the hollow screw.
Regarding claim 13¸ Examiner notes that the instant method step limitations are considered obvious over the prior art in view of rejections of the structural limitations previously set forth. Although the prior art does not explicitly set forth the method steps as claimed when the method steps essentially set forth the provision and use of an apparatus, as intended by its structure, then such method steps are considered obvious when the structure of the apparatus has been demonstrated as obvious or anticipated by the prior art.
Regarding claim 14, An injection molding method with which an adjustment element according to claim 1 can be produced, the method comprising the following steps:
a. providing an injection mold with the complementary form features with respect to the
adjustment element,
b. injection molding the hollow screw and the fastening sleeve with a first plastic material in a first injection and
c. injection molding an elastic dampening layer on an outer surface of the fastening
sleeve with a second plastic material in a second injection, with the second plastic material having a higher elasticity than the first plastic material.
It is the examiner’s position that injection molding is common and well-known production method so these method step limitations are considered obvious over the prior art in view of rejections of the structural limitations previously set forth. Although the prior art does not explicitly set forth the method steps as claimed when the method steps essentially set forth the provision and use of an apparatus, as intended by its structure, then such method steps are considered obvious when the structure of the apparatus has been demonstrated as obvious or anticipated by the prior arts, Steffenfauseweh modified by Braun.
As stated in the MPEP 2113: The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
Regarding claim 15, Steffenfauseweh in view of Braun teaches and/or make obvious of the injection molding method according to claim 14 with the further configuration:
injection molding the elastic dampening layer on an outer lateral surface of the fastening sleeve or on the outer lateral surface and a side of the radial collar of the fastening sleeve which faces the lateral surface.
It is the examiner’s position that injection molding is common and well-known production method so these method step limitations are considered obvious over the prior art in view of rejections of the structural limitations previously set forth. Although the prior art does not explicitly set forth the method steps as claimed when the method steps essentially set forth the provision and use of an apparatus, as intended by its structure, then such method steps are considered obvious when the structure of the apparatus has been demonstrated as obvious or anticipated by the prior arts, Steffenfauseweh modified by Braun.
As stated in the MPEP 2113: The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIL K MAGAR whose telephone number is (571)272-8180. The examiner can normally be reached M-F 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Mills can be reached at (571) 272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIL K. MAGAR/Examiner, Art Unit 3675
/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675
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