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 .
Claim Objections
Claim 1 is objected to because of the following informalities: there should be a colon at the end of line 2, there should be an “and” at the end of lines 13 and 17, and “the force” in line 15 should read “a force”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: there should be a colon at the end of line 2, there should be an “and” at the end of lines 13, 17, and 30, the “and” at the end of line 27 should be removed, and “the force” in line 15 should read “a force”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-12 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.
Claim 1 recites the limitation “whereby, during an initial liquification phase:” and “during a second phase:” in lines 7-8 and 18. These limitations (and those that follow) are indefinite as it is unclear if Applicant is attempting to claim method limitations, claim an assembly, or claim a capability or intended use of the sealing fastening member. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “whereby the sealing fastening member is capable of: during an initial liquification phase:” and “during a second phase:” such that it is clear that these are capabilities that the fastening member is capable of.
Claim 2 recites the limitation “in which the main body also forms a spacer between a first item and a second item”. This limitation is indefinite as it is unclear whether it is a further narrowing of the capabilities of the fastening member, or if Applicant is not attempting to claim an assembly with the fastening member installed in a certain manner. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “wherein the main body is also capable of forming a spacer between a first item and a second item”.
Claim 12 recites the limitation “whereby, during an initial liquification phase:” and “during a second phase:” in lines 7-8 and 18. These limitations (and those that follow) are indefinite as it is unclear if Applicant is attempting to claim method limitations, claim an assembly, or claim a capability or intended use of the sealing fastening member. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “whereby the sealing fastening member is capable of: during an initial liquification phase:” and “during a second phase:” such that it is clear that these are capabilities that the fastening member is capable of.
Claim 12 recites the limitation “in which the main body also forms a spacer between a first item and a second item” in line 23. This limitation is indefinite as it is unclear whether it is a further narrowing of the capabilities of the fastening member, or if Applicant is not attempting to claim an assembly with the fastening member installed in a certain manner. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “wherein the main body is also capable of forming a spacer between a first item and a second item”.
Claims 3-11 are indefinite at least by virtue of ultimately depending on claim 1.
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 1-5, 7-9, and 11-12, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roubal (US 2,706,656).
With regard to claim 1, Roubal discloses a sealing fastening member (15) comprising: a main body (i.e. the main body of 15 as seen in Figs. 1-4) that has a central bore (16) for receiving a fastener (as seen in Figs. 1-4 it is capable of receiving a fastener (e.g. 7); a bottom contact surface (21); a protruding portion (19) protruding from the bottom contact surface (as seen in Figs. 2-4); whereby, during an initial liquification phase: the fastener extends through the central bore and at least partially into an underlying surface (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability); the protruding portion is in contact with the underlying surface (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability), the bottom contact surface thereby being at a distance from the underlying surface (as seen in Fig. 2 the sealing fastening member of Roubal is capable of such an intended use/capability); the protruding portion is caused to at least partially liquify under the force of an installation action carried out on the fastener (as the material of 15 is disclosed as rubber, the same material (i.e. rubber) as disclosed by applicant the sealing fastening member of Roubal is capable of such an intended use/capability) and, in an at least partially liquified state, to seal around a point of penetration of the underlying surface by the fastener (as seen in Figs. 3-4 the sealing fastening member of Roubal is capable of such an intended use/capability); during a second phase: the bottom contact surface is in contact with the underlying surface (as seen in Figs. 3-4 the sealing fastening member of Roubal is capable of such an intended use/capability); and the fastener is secured in the underlying surface (as seen in Figs. 3-4 the sealing fastening member of Roubal is capable of such an intended use/capability).
With regard to claim 2, Roubal discloses that the main body also forms a spacer between a first item and a second item (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability).
With regard to claim 3, Roubal discloses that the fastener is a threaded screw (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability as any rod-shaped fastener can pass through the central bore), whereby the installation action is screwing the screw through the central bore, whereby the force of the installation action has a primary component of rotational frictional between the protruding portion and the underlying surface (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability).
With regard to claim 4, Roubal discloses that the fastener is a nail (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability as any rod-shaped fastener can pass through the central bore), whereby the installation action is driving the nail, through the central bore, whereby the force of the installation action is impact force, having a primary force component normal to the underlying surface (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability).
With regard to claim 5, Roubal discloses that the protruding portion is annular.
With regard to claim 7, Roubal discloses a groove (20) in the bottom contact surface located radially outward of the protruding portion (as seen in Figs. 1-4), whereby the partially liquified protruding portion may at least partly flow into the groove as the bottom contact surface comes into contact with the underlying surface (as seen in Figs. 3-4 the sealing fastening member of Roubal is capable of such an intended use/capability as upon such it can at least partially flow thereinto as Roubal has the same material and same general shape it would have the same function/capabilities), whereby the bottom contact surface may seat securely on the underlying surface (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability).
With regard to claim 8, Roubal discloses that the main body is shaped as the frustum of a cone (as seen in Figs. 1-4 in the undeformed state it is shaped with an outer inclined surface that is like a cone with its tip removed).
With regard to claim 9, Roubal discloses that the sealing fastening member is made of at least one material chosen from the group of natural rubber and synthetic rubber (i.e. see col. 1 lines 70-73, etc. disclosing rubber, which is necessarily either natural or synthetic rubber).
With regard to claim 11, Roubal discloses that the underlying surface is an underlayment located on roof sheathing (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability as it can be used with a variety of surfaces by virtue of its structure).
With regard to claim 12, Roubal discloses a sealing fastening member (15) comprising: a main body (i.e. the main body of 15 as seen in Figs. 1-4) that has a central bore (16) for receiving a fastener (as seen in Figs. 1-4 it is capable of receiving a fastener (e.g. 7); a bottom contact surface (21); a protruding portion (19) protruding from the bottom contact surface (as seen in Figs. 2-4); whereby, during an initial liquification phase: the fastener extends through the central bore and at least partially into an underlying surface (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability); the protruding portion is in contact with the underlying surface (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability), the bottom contact surface thereby being at a distance from the underlying surface (as seen in Fig. 2 the sealing fastening member of Roubal is capable of such an intended use/capability); the protruding portion is caused to at least partially liquify under the force of an installation action carried out on the fastener (as the material of 15 is disclosed as rubber, the same material (i.e. rubber) as disclosed by applicant the sealing fastening member of Roubal is capable of such an intended use/capability) and, in an at least partially liquified state, to seal around a point of penetration of the underlying surface by the fastener (as seen in Figs. 3-4 the sealing fastening member of Roubal is capable of such an intended use/capability); during a second phase: the bottom contact surface is in contact with the underlying surface (as seen in Figs. 3-4 the sealing fastening member of Roubal is capable of such an intended use/capability); and the fastener is secured in the underlying surface (as seen in Figs. 3-4 the sealing fastening member of Roubal is capable of such an intended use/capability), in which: the main body also forms a spacer between a first item and a second item (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability); the fastener is a threaded screw (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability as any rod-shaped fastener can pass through the central bore), whereby the installation action is screwing the screw through the central bore, whereby the force of the installation action has a primary component of rotational frictional between the protruding portion and the underlying surface (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability); and the protruding portion is annular; the sealing fastening member is made of at least one material chosen from the group of natural rubber and synthetic rubber (i.e. see col. 1 lines 70-73, etc. disclosing rubber, which is necessarily either natural or synthetic rubber); said main body further including a groove (20) in the bottom contact surface located radially outward of the protruding portion (as seen in Figs. 1-4), whereby the partially liquified protruding portion may at least partly flow into the groove as the bottom contact surface comes into contact with the underlying surface (as seen in Figs. 3-4 the sealing fastening member of Roubal is capable of such an intended use/capability as upon such it can at least partially flow thereinto as Roubal has the same material and same general shape it would have the same function/capabilities), whereby the bottom contact surface may seat securely on the underlying surface (as seen in Figs. 1-4 the sealing fastening member of Roubal is capable of such an intended use/capability).
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 6 and 10, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Roubal (US 2,706,656) alone.
With regard to claim 6, Roubal fails to disclose that the protruding portion is non-annular. However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have modified the device of Roubal such that the protruding portion is non-annular as Examiner hereby takes Official Notice that the art is replete with examples of washers with non-annular protruding portions. Such a modification would provide the expected result of reducing material costs, reducing initial friction, allowing for more deformation/spreading out upon partial liquification, etc.
With regard to claim 10, Roubal is silent as to the specific type of rubber and thus fails to explicitly disclose that the synthetic rubber is chosen to include at least one of the group butyl rubber, polybutadiene rubber, styrene-butadiene rubber, halogenated polyisobutylene rubber, and ethylene propylene diene monomer (EPDM). However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have modified the device of Roubal such that the synthetic rubber is chosen to include at least one of the group butyl rubber, polybutadiene rubber, styrene-butadiene rubber, halogenated polyisobutylene rubber, and ethylene propylene diene monomer (EPDM) as Examiner hereby takes Official Notice that the art is replete with examples of washers made of materials selected from the group of butyl rubber, polybutadiene rubber, styrene-butadiene rubber, halogenated polyisobutylene rubber, and ethylene propylene diene monomer (EPDM). Such a modification would provide the expected result of providing good temperature resistance, UV resistance, weather resistance, etc. Additionally and/or alternatively it would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have modified the device of Roubal such that the synthetic rubber is chosen to include at least one of the group butyl rubber, polybutadiene rubber, styrene-butadiene rubber, halogenated polyisobutylene rubber, and ethylene propylene diene monomer (EPDM) as it has been held to be within the general skill in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Such a modification would have provided the expected benefits of providing good temperature resistance, UV resistance, weather resistance, etc.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and provides additional examples of similar sealing fastening members (e.g. sealing washers).
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