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 .
This Office Action is in response to Applicant’s amendment filed 11/25/2025. Claims 1-14 are currently pending in this application.
Claim Rejections - 35 USC § 112
Applicant’s amendment overcomes the previous rejection of claims 5 and 10 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. The rejection is hereby withdrawn.
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.
Claims 1-6, 9-11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. (U.S. 2013/0186951 A1) in view of Pepper et al. (U.S. 5,989,255).
Claim 1, Zhu teaches:
A system for installing a fastener (Zhu, Figs. 5 and 6) comprising:
a power tool (Zhu, Fig. 5: 40), the power tool including an onboard wireless receiver (Zhu, Fig. 5: 42, Paragraph [0029], The RFID tag reader 42 generates interrogation signals and receives information from a responding RFID tag 17.);
a fastener (Zhu, Figs. 1, 5, and 6: 10), the fastener including a head (Zhu, Figs. 1 and 5: 12) and a shaft with threads thereon (Zhu, Figs. 1 and 5: 13), the fastener including an electronic module (Zhu, Fig. 1: 17, 18, The combination of RFID chip 17 and antenna 18 and the portion of the fastener to which the RFID chip 17 and antenna 18 are attached, e.g. the head 12, is collectively interpretable as an electronic module of the fastener. Thus, the interior of the fastener that houses the RFID chip 17, the antenna 18, and micro switch 20 is interpreted as being a part of the “electronic module”.) the electronic module including an on onboard wireless transmitter (Zhu, Fig. 1: 17), the fastener further including an onboard sensor (Zhu, Fig. 1: 20) for sensing a condition of the fastener or at the fastener (Zhu, Paragraph [0026], The microswitch 20 functions as a binary torque value sensor for sensing whether a fastener 10 has been tightened to the correct torque value.);
the onboard sensor sensing a condition (Zhu, Paragraph [0026], The microswitch 20 senses a torque, which is a condition of the fastener 10.) and wirelessly transmitting to the power tool a condition signal via the onboard wireless transmitter representing the condition (Zhu, Paragraph [0028], The detected torque is stored in the RFID chip 17 and transmitted to the RFID tag reader of the power tool 40.), the power tool wirelessly receiving the condition signal via the onboard wireless receiver (Zhu, Paragraph [0028], The data stored in the RFID chip 17 is received by the RFID reader of the power tool 40.) and using information from the condition signal to control the power tool (Zhu, Paragraph [0030], The power tool 40 uses the unique identification and desired torque value from the fastener 10 to cause the power drive unit 43 to control the driver bit 44 to drive the fastener 10 to the desired torque value. If the state of the microswitch 20 indicates that the torque value is not correct, i.e. the condition signal, the initial installation process, which includes the controlling of the power drive unit 43 and the driver bit 44, can be repeated until the torque value is correct (see Zhu, Paragraph [0031]).);
wherein the fastener includes an portion therein for receiving the threaded shaft (Zhu, Fig. 4, The threaded shank 13 meets the head 12 at the lower portion 25 of the head 12.).
Zhu does not explicitly teach:
Wherein the electronic module includes an opening therein for receiving the threaded shaft.
Pepper teaches:
Wherein the head includes an opening therein for receiving the threaded shaft (Pepper, Figs. 6-18: 27, Col. 4, Lines 27-32, The opening 27 is shaped to engage with shank 13, which is a threaded shaft.).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to modify the fastener in Zhu by integrating the teaching of a head having a central opening, as taught by Pepper.
The motivation would be to make the fastener customizable for an intended usage (see Pepper, Col. 1, Lines 35-37).
Claim 2, Zhu in view of Pepper further teaches:
The system of claim 1, wherein the onboard wireless receiver is a wireless transceiver and the power tool is capable of wirelessly transmitting and receiving information (Zhu, Paragraph [0029], The RFID tag 17 receives interrogation signals from the RFID reader and transmits a response signal to the RFID reader. The RFID reader is thus capable of both transmitting the interrogation signal and receiving the response signal from the RFID tag 17.).
Claim 3, Zhu in view of Pepper further teaches:
The system of claim 1, wherein the onboard wireless transmitter is a wireless transceiver and the fastener is capable of wirelessly transmitting and receiving information (Zhu, Paragraph [0029], The RFID tag 17 receives interrogation signals from the RFID reader and transmits a response signal to the RFID reader. The RFID tag is thus capable of both receiving the interrogation signal and transmitting the response signal to the RFID reader.).
Claim 4, Zhu in view of Pepper further teaches:
The system of claim 1, wherein the onboard wireless receiver is a wireless transceiver and the power tool is capable of wirelessly transmitting and receiving information (Zhu, Paragraph [0029], The RFID tag 17 receives interrogation signals from the RFID reader and transmits a response signal to the RFID reader. The RFID reader is thus capable of both transmitting the interrogation signal and receiving the response signal from the RFID tag 17.) and wherein the onboard wireless transmitter is a wireless transceiver and the fastener is capable of wirelessly transmitting and receiving information (Zhu, Paragraph [0029], The RFID tag 17 receives interrogation signals from the RFID reader and transmits a response signal to the RFID reader. The RFID tag is thus capable of both receiving the interrogation signal and transmitting the response signal to the RFID reader.).
Claim 5, Zhu in view of Pepper further teaches:
The system of claim 1, wherein the wireless system is an RFID system (Zhu, Paragraph [0029], The system utilizes RFID tags 17 and an RFID tag reader.).
Claim 6, Zhu in view of Pepper further teaches:
The system of claim 1, wherein the onboard sensor senses a physical condition at the fastener (Zhu, Paragraph [0028], A torque of the fastener 10 is a physical condition of/at the fastener.).
Claim 9, Zhu in view of Pepper further teaches:
A method of installing a fastener using the system of claim 4 (Zhu, Figs. 5 and 6), comprising the steps of:
transmitting a first signal from the power tool to the fastener (Zhu, Paragraphs [0028-0029], The interrogation signal from the RFID reader is a first signal.);
receiving the first signal from the power tool at the fastener (Zhu, Paragraphs [0028-0029], The interrogation signal from the RFID reader is received by the RFID tag 17.);
sensing a condition at the fastener and generating a sensed signal therefrom (Zhu, Paragraphs [0028-0029], The sensed torque stored in the RFID chip memory is transmitted by the RFID tag 17, which is functionally equivalent to a sensed signal.);
transmitting the sensed signal to the power tool (Zhu, Paragraphs [0028-0029], The transmitted signal from the RFID tag 17 is transmitted to the RFID reader of the power tool 40.);
using the sensed signal to control an operation of the power tool (Zhu, Paragraph [0030], The power tool 40 uses the unique identification and desired torque value from the fastener 10 to cause the power drive unit 43 to control the driver bit 44 to drive the fastener 10 to the desired torque value. If the state of the microswitch 20 indicates that the torque value is not correct, i.e. the condition signal, the initial installation process, which includes the controlling of the power drive unit 43 and the driver bit 44, can be repeated until the torque value is correct (see Zhu, Paragraph [0031]).).
Claim 10, Zhu in view of Pepper further teaches:
The system of claim 9, wherein the wireless system is an RFID system (Zhu, Paragraph [0029], The system utilizes RFID tags 17 and an RFID tag reader.).
Claim 11, Zhu in view of Pepper further teaches:
The system of claim 9, wherein the onboard sensor senses a physical condition at the fastener (Zhu, Paragraph [0028], A torque of the fastener 10 is a physical condition of/at the fastener.).
Claim 14, Zhu in view of Pepper further teaches:
The system of claim 1, wherein the electric module is disposed between the head and a workpiece to which the fastener is anchored (Zhu, Fig. 4, Paragraph [0027], Elements 30 and 34 represent structural members to which the fastener is fastened, i.e. workpieces. It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify the mounting locations of the RFID chip 17 and the antenna 18, such that the RFID chip 17 and antenna 18 are disposed between the head 12 and the workpieces. Such a modification would not change the principal operation of the system, as a whole, and additionally would not render the invention inoperable for its intended function, and would thus yield predictable results. See MPEP 2144.04.).
Claims 7-8 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. (U.S. 2013/0186951 A1) in view of Pepper et al. (U.S. 5,989,255) in view of Smith et al. (U.S. 7,412,898 B1).
Claims 7 and 12, Zhu in view of Pepper further teaches:
The system of claims 1 and 9.
Zhu in view of Pepper does not explicitly teach:
Wherein transmission from the fastener to the power tool is based on a passive system which does not require a battery.
Smith teaches:
A passive system which does not require a battery (Smith, Col. 6, Lines 32-39).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to substitute the RFID tag in Zhu in view of Pepper with a passive RFID tag, as taught by Smith.
Such a modification is known in the art, and one of ordinary skill in the art could have substituted the passive RFID tag in Smith for the RFID tag in Zhu in view of Pepper, and such a substitution would produce predictable results.
Claims 8 and 13, Zhu in view of Pepper further teaches:
The system of claims 1 and 9.
Zhu in view of Pepper does not explicitly teach:
The fastener includes a wirelessly chargeable energy storage device.
Smith teaches:
A wirelessly chargeable energy storage device (Smith, Col. 6, Lines 32-39, The RFID tag is powered via an inductive circuitry that is powered by a signal from the RFID reader. The inductive circuitry is functionally equivalent to a wirelessly chargeable energy storage device.).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to substitute the RFID tag in Zhu in view of Pepper with a passive RFID tag, as taught by Smith.
Such a modification is known in the art, and one of ordinary skill in the art could have substituted the passive RFID tag in Smith for the RFID tag in Zhu in view of Pepper, and such a substitution would produce predictable results.
Response to Arguments
Applicant's arguments filed 11/25/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the Zhu and Peppers references are very different devices, that because they are dissimilar, the Examiner’s burden is to provide a clear reasoning as to why the dissimilar combination is obvious, and then a lack of clear reasoning as to how these two references are combined on Pages 6-7, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, in the combination of Zhu in view of Pepper, as stated in the rejection above, the physical design of the screw apparatus 10 of Pepper incorporated into the intelligent fastener, as taught by Zhu, has the added benefit of being
customizable for an intended usage (see Pepper, Col. 1, Lines 35-37).
Conclusion
THIS ACTION IS MADE FINAL. 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 JAMES J YANG whose telephone number is (571)270-5170. The examiner can normally be reached 9:30am-6:00p M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN ZIMMERMAN can be reached at (571) 272-3059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES J YANG/Primary Examiner, Art Unit 2686