DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 03/24/2026 without traverse of species I-1, claims 1-8 & 10-12 for further examination. Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on 09/25/2023 is being considered by the examiner.
Claim Interpretation
4. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “spray assembly” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant wishes to provide further explanation or dispute the examiner' s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 2, 5-7 & 10 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 2, line 12 recites the limitation “the magnets”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the magnets” as “the at least one magnet” recited in line 6. To correct this problem, amend line 12 to recite “the at least one magnet”.
As regards to claim 5, line 13 recites the limitation “the rotatable second slotted plate”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the rotatable second slotted plate” as “the second rotatable slotted plate” recited in line 4. To correct this problem, amend line 13 to recite “the second rotatable slotted plate”.
As regards to claim 5, line 14 recites the limitation “the rotatable slotted fastener conveyer”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the rotatable slotted fastener conveyer” as “the slotted fastener conveyer” recited in lines 1-2. To correct this problem, amend line 14 to recite “the slotted fastener conveyer”.
As regards to claim 5, line 14 recites the limitation “the magnets”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the magnets” as “the at least one magnet” recited in line 6. To correct this problem, amend line 14 to recite “the at least one magnet”.
As regards to claim 10, line 1 recites the limitation “the sprayer”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the sprayer” as “the spray assembly” recited in claim 1, line 9. To correct this problem, amend line 1 to recite “the spray assembly”.
Claims 6-7 are rejected at least based on their dependency from claim 5.
Allowable Subject Matter
7. Claims 1, 3-4, 8 & 11-12 are allowable. Claims 2, 5-7 & 10 would be allowable if amended to overcome the current rejections under 35 U.S.C. 112(b) above. Claims 1-12 would be allowable because the closest prior arts of record, Lat et al. (US 5,033,181 A), Jailloux (GB 2313331 A), Duffy (WO 9510364 A1), Alexander et al. (US 4,155,327 A), Dimaio et al. (WO 91/05613 A1) and none of the other cited closest prior arts of record teach nor suggest “(e) a heater configured to heat the head portions of the fasteners as the fasteners are being conveyed by the slotted fastener conveyer; and (f) a spray assembly configured to apply corrosion-resistant metal coatings to the heated head portions of the fasteners being conveyed by the slotted fastener conveyer” as in the context of independent claim 1.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights