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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-3, 4, 5-7, 8, and 9-11, in the reply filed on June 24, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant's election with traverse of Species B, Figs 6A-9C, claims 5-8, in the reply filed on June 24, 2026 is acknowledged. The traversal is on the ground(s) that claims 9-11 are not directed to separate species corresponding to a bolt embodiment (Species C) and a nut embodiment (Species D). This is not found persuasive because claims 9-11 claim a fastening member and Figs 11-20 illustrates a bolt having a retaining portion to be fastened to a metal element and Figs 21-27 illustrates a nut having a groove to be fastened to a metal element.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
Figures 5a-5b and 10a-10b should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 51-55 and α. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: P. 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. 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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract is objected to for the use of an implied phrase, i.e. “Provided is an element”.
The disclosure is objected to because of the following informalities:
In Paragraphs 0057-0058, “mmφ” is unclear
Appropriate correction is required.
Claim Objections
Claims 5 objected to because of the following informalities:
In claims 5 and 8, lines 5-6, “a resin plate or metal plate” should read “the resin plate or metal plate”
In claim 6, line 2, “a surface” should read “the surface”
Appropriate correction is required.
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.
Claim(s) 5 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. (US20210102566A1), hereinafter "Wu".
Regarding claim 5, Wu teaches a metal element (Fig 3, fastener 1; Paragraph 0005) [to be joined (see Figs 4-6) to a resin plate or metal plate (Fig 4, members 2, 3; Paragraph 0005)], the metal element (1) comprising
a columnar part (see Fig 3, Examiner notes a body of fastener 1 as a columnar part), wherein
a surface (see Fig 3, Examiner notes a surface of fastener 1 as a surface) of the columnar part (see Fig 3) has a non-flat shape (see Fig 3, Examiner notes fastener 1 having groove 18 as has a non-flat shape), and
in [a state (see Figs 4-6) where the columnar part (see Fig 3) is inserted (see Figs 4-6) into an insertion hole (Fig 4, holes 21, 31) **drilled** (Paragraph 0024) in a resin plate or metal plate (2, 3), by applying pressure (see Figs 4-6, Paragraphs 0024-0025, Examiner notes fastener 1 bears the punching impact force as by applying pressure) in an axial direction (see Figs 4-6, Paragraphs 0024-0025) to expand a diameter (see Figs 4-6, Paragraphs 0024-0025, Examiner notes portion 16 is also deformed and completely and tightly fitted into the first through hole 21 and tightly fitted with the second through hole 31 as to expand a diameter) of the columnar part (see Fig 3) and to bring (see Figs 4-6) the columnar part (see Fig 3) into pressure contact (see Figs 4-6, Paragraphs 0024-0025, Examiner notes tightly fitted as into pressure contact) with only (see Figs 4-6, Paragraphs 0024-0025) an inner surface (see Figs 4-6, Examiner notes an inner surface of holes 21, 31 as an inner surface) of the insertion hole (21, 31) of the resin plate or metal plate (2, 3), so as to join (see Fig 6) the metal element (1) to the resin plate or metal plate (2, 3)].
Claim language set in brackets set forth above and below in this office action are considered by the Examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of a metal element, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the Examiner maintains that the board member fastener disclosed by Wu, is indeed capable of the intended use statements. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
**Examiner notes that even though a product-by-process claim is limited by and defined by the process, determination of patentability is based on the product itself. 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. In re Thorpe, 777 F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985).
Regarding claim 7, Wu teaches the metal element (1) according to claim 5 and further teaches wherein the columnar part (see Fig 3) is hollow (Fig 3, hole 11) or has both front (Fig 3, portion 12) and back surfaces (Fig 3, portion 17) or one surface (Fig 3, surface 13) formed into a depressed shape (see Fig 3).
Regarding claim 8, Wu teaches a joining structure (see Figs 4-6) for joining (see Figs 4-6) a metal element (Fig 3, fastener 1; Paragraph 0005) to a resin plate or metal plate (Fig 4, members 2, 3; Paragraph 0005), wherein
the metal element (1) includes a columnar part (see Fig 3, Examiner notes a body of fastener 1 as a columnar part), wherein
a surface (see Fig 3, Examiner notes a surface of fastener 1 as a surface) of the columnar part (see Fig 3) has a non-flat shape (see Fig 3, Examiner notes fastener 1 having groove 18 as has a non-flat shape), and
in a state (see Figs 4-6) where the metal element (1) is inserted (see Figs 4-6) into an insertion hole (Fig 4, holes 21, 31) **drilled** (Paragraph 0024) in a resin plate or metal plate (2, 3), by applying pressure (see Figs 4-6, Paragraphs 0024-0025, Examiner notes fastener 1 bears the punching impact force as by applying pressure) in an axial direction (see Figs 4-6, Paragraphs 0024-0025) to expand a diameter (see Figs 4-6, Paragraphs 0024-0025, Examiner notes portion 16 is also deformed and completely and tightly fitted into the first through hole 21 and tightly fitted with the second through hole 31 as to expand a diameter) of the columnar part (see Fig 3) of the metal element (1) and to bring (see Figs 4-6) the columnar part (see Fig 3) into pressure contact (see Figs 4-6, Paragraphs 0024-0025, Examiner notes tightly fitted as into pressure contact) with only (see Figs 4-6, Paragraphs 0024-0025) an inner surface (see Figs 4-6, Examiner notes an inner surface of holes 21, 31 as an inner surface) of the insertion hole (21, 31) **drilled** (Paragraph 0024) in the resin plate or metal plate (2, 3), so as join (see Fig 6) the metal element (1) to the resin plate or metal plate (2, 3).
Claim Rejections - 35 USC § 103
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(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu, in view of Hallock (US4004483A), hereinafter "Hallock".
Regarding claim 6, Wu teaches the metal element (1) according to claim 5 but fails to teach wherein a surface of the columnar part is provided by diamond-pattern uneven processing.
However, Hallock teaches it is known in the art to provide wherein a surface (see Fig 7, Examiner notes a surface of fastener 10 as a surface) of the columnar part (see Fig 7, Examiner notes a body of fastener 10 as the columnar part) is provided by diamond-pattern uneven processing (Fig 7, knurled side wall 23).
Therefore, as evidenced by Hallock, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine wherein a surface of the columnar part is provided by diamond-pattern uneven processing as taught by Hallock to Wu. The rationale for supporting this conclusion of obviousness is to improve engagement with the base metal and resist rotation of the fastener (Hallock, Col 3, lines 26-28).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOCK WONG whose telephone number is (571)270-1349. The examiner can normally be reached Monday - Friday, 7:30am - 5:00pm (ET).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.W./Examiner, Art Unit 3675 /KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675
Prosecution Insights