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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 8-10 and 11-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11913488 in view of Schmidt. See claims of patent 11913488 which teach limitation of claims and other limitation are taught by Schmidt with regard to claim 1, 8-10 and 11-15 (see rejection with regard to limitation of claims 1, 8-10 and 11-15).
Patent ‘488 discloses the invention as claimed above but fails to disclose in short what is stated in claim 1 with regard to 1st and 2nd perimeter surfaces, intermediate surface, outer peripheral surface, recessed pocket, punch portion and pilot embossment. Schmidt discloses what is stated in paragraph 005 below. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the self-clinching construction element of patent ‘488 with additional structure taught by Schmidt with reasonable expectation of success to provide groove that receives material of a substrate being deformed (e.g. see description of pocket, 1st and 2nd perimeter surfaces and other elements of Schmidth).
Claims 2-7 and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11913488 in view of Schmidt and further in view of Warn. See claims of patent 11913488 which teach limitation of claims and other limitation are taught by Schmidt with regard to claim 1, 8-10 and 11-15 (see rejection with regard to limitation of claims 1, 8-10 and 11-15 in paragraph 005 and see rejection with regard to claims 2-7 and 16-19 via Schmidt and Warn).
Patent ‘488 discloses the invention as claimed above but fails the engagement surface is perpendicular to the central axis. Warn teaches in paragraph 8 that the engagement surface is perpendicular to the central axis. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to configure the engagement surface of Patent ‘488 to be perpendicular as taught by Warn with reasonable expectation of success, since having different structure is a matter of design and to further deform a metallic substrate (see description of figure 1 and figure 4 of Warn).
Claim Rejections - 35 USC § 102
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) 1, 8-10 and 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmidt (US20200108475A1).
Schmidt discloses a self-clinching construction element (e.g. 2) for attachment to a plastically deformable metal substrate (e.g. attaching and plastically deformable metal substrate is considered to be intended use and the self-clinching element of Schmidt is capable of this, see MPEP 2113-2114), the self-clinching construction element comprising a body portion (e.g. 2) with a central axis (e.g. X, figure below), the body portion including an outer peripheral surface (e.g. outer surface having C) extending in a direction of the central axis, and an annular-shaped surface (e.g. AS) extending in a direction perpendicular to the central axis, a punch portion (e.g. portion having IS, 1st P and 2nd P) being coaxial with the central axis and extending from the body portion, the punch portion including an outer peripheral surface (e.g. figure below) extending in the direction of the central axis, the outer peripheral surface of the punch portion having first (e.g. 1st P) and second (e.g. 2nd P) perimeter surfaces, and an intermediate surface (e.g. IS) disposed therebetween, wherein the intermediate surface is angled (e.g. angle of IS) with respect to the central axis, wherein the first and second perimeter surfaces lie on first (e.g. C2) and second (e.g. C3) imaginary circumferential planes, respectively, wherein the second imaginary circumferential plane is radially offset from the first imaginary circumferential plane (e.g. see figure below), and wherein the radial offset defines a recessed pocket (e.g. RP) in the outer peripheral surface of the punch portion, and a pilot embossment (e.g. PE) being coaxial with the central axis and extending from the body portion such that the pilot embossment is concentrically disposed between the annular-shaped surface (e.g. AS) and the punch portion (e.g. figure below), wherein the pilot embossment continuously extends about the punch portion in an uninterrupted manner (e.g. see figures), and wherein the pilot embossment (e.g. PE) is configured to engage and plastically deform the metal substrate such that the metal substrate flows into the recessed pocket (e.g. again the plastically deform is method or intended use limitation and given little or no patentable weight, see MPEP 2113-2114), wherein the first perimeter surface extends axially from the pilot embossment to the intermediate surface (see surface between AS and IS), and wherein the second perimeter surface extends axially from the intermediate surface to a first end surface (e.g. 1st end) of the self-clinching construction element (e.g. see figure below). Regarding claim 2, wherein the pilot embossment comprises a perimetric surface (e.g. perimetric surface having RA) and an engagement surface (e.g. ES) and wherein the perimetric surface extends in the direction of the central axis. Regarding claim 3, wherein the perimetric surface lies on a third imaginary (e.g. C1) circumferential plane that is parallel to the central axis. Regarding claim 4, wherein a radial distance between the central axis and the third imaginary circumferential plane is greater than a radial distance between the central axis and the second imaginary (e.g. C3) circumferential plane (e.g. compare radius of d2 relative to radius of d1 from the axis X). Regarding claim 5, wherein a radial distance between the central axis and the outer peripheral surface of the body portion is greater than a radial distance between the central axis and the third imaginary circumferential plane (e.g. compare radius of d1 to radius of dk). Regarding claim 6, wherein a radial distance between the central axis and the perimetric surface is greater than a radial distance between the central axis and the second imaginary circumferential plane (e.g. compare radius of d2 and radius of d1). Regarding claim 7, wherein a radial distance between the central axis and the outer peripheral surface of the body portion is greater than a radial distance between the central axis and the perimetric surface (e.g. compare radius of dk and radius of d1).
Regarding claim 8: The self-clinching construction element further comprising a bore (e.g. bore having axis X) extending through both the body portion and the punch portion in the direction of the central axis such that the bore extends from the first end surface of the self-clinching construction element to a second end surface of the self-clinching construction element (e.g. see figure below).
Regarding claim 9: Wherein the bore is threaded (e.g. paragraph 0028) along the central axis (e.g. thread on inner diameter of the bore).
Regarding claim 10: The self-clinching construction element further comprising a shank (e.g. not shown in figure but is received by interthread in cavity 4) extending outwards from the first end surface of the self-clinching construction element, wherein the shank is coaxial with and is threaded along the central axis (e.g. see description paragraph 0030, “thus forms a through bore for receiving and/or passing through a rod-shaped element, by way of example the shaft of a screw or bolt”).
Regarding claim 11: Wherein the first (e.g. 1st P) and second (e.g. 2nd P) perimeter surfaces and the intermediate surface are all planar, in cross-section (e.g. figure below).
Regarding claim 12: Wherein the intermediate surface gradually and continuously inclines from the first perimeter surface to the second perimeter surface in the direction perpendicular to the central axis (e.g. see IS, figure below).
Regarding claim 13: Wherein the recessed pocket extends continuously about the punch portion in an uninterrupted manner (e.g. see RP, figure below).
Regarding claim 14: Wherein the pilot embossment has a polygonal shape (e.g. see polygonal shape shown in figure 1, PS having RA).
Regarding claim 15: Wherein the pilot embossment has a cylindrical shape (e.g. this is the pilot embossment having ES which is cylindrical shape).
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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) 2-7 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt in view of Warn et al (US. 3736969).
Schmidt (e.g. see annotated figure below) discloses a self-clinching construction element for attachment to a plastically deformable metal substrate, the self-clinching construction element comprising a body portion (e.g. body portion in figure below) with a central axis, the body portion including an outer peripheral surface (e.g. outer peripheral surface defined by C) extending in a direction of the central axis, and an annular-shaped surface (e.g. AS) extending in a direction perpendicular to the central axis (e.g. see figure below and rejection of claim 1), a punch portion (e.g. punch portion having 1st P, IS and 2nd P) being coaxial with the central axis and extending from the body portion, the punch portion including an outer peripheral surface (e.g. outer peripheral surface having 1st P, IS and 2nd P) extending in the direction of the central axis, the outer peripheral surface of the punch portion having first (e.g. 1st P) and second (e.g. 2nd P) perimeter surfaces, and an intermediate surface (e.g. IS) disposed therebetween, wherein the intermediate surface is angled (e.g. angle of IS) with respect to the central axis, wherein the first and second perimeter surfaces lie on first (e.g. C2) and second (e.g. C3) imaginary circumferential planes, respectively, wherein the second imaginary circumferential plane is radially offset from the first imaginary circumferential plane (e.g. see C3 relative to C2), wherein the radial offset defines a recessed pocket (e.g. RP) in the outer peripheral surface of the punch portion, wherein the recessed pocket extends continuously about the punch portion in an uninterrupted manner, a pilot embossment (e.g. PE) being coaxial with the central axis and extending from the body portion such that the pilot embossment is concentrically disposed between the annular-shaped surface and the punch portion, wherein the pilot embossment continuously extends about the punch portion in an uninterrupted manner (e.g. see PE having RA, figure 1), wherein the pilot embossment comprises a perimetric surface (e.g. perimeter surface having RA and defined by C1) and an engagement surface (e.g. ES), wherein the perimetric surface extends in the direction of the central axis (e.g. see figure below and the perimetric surface defined by C1), wherein the engagement surface is annular in shape (e.g. ES is annular), wherein the pilot embossment (e.g. PE) is configured to engage and plastically deform the metal substrate such that the metal substrate flows into the recessed pocket (e.g. attaching and plastically deformable metal substrate is considered to be intended use and the self-clinching element of Schmidt is capable of this, see MPEP 2113-2114), wherein the first perimeter surface (e.g. 1st P) extends axially from the pilot embossment to the intermediate surface (e.g. IS), wherein the second perimeter surface (e.g. 2nd P) extends axially from the intermediate surface to an end surface (e.g. 1st end) of the self-clinching construction element, wherein a radial distance (e.g. distance between X and the perimetric surface defined by C1) between the central axis (e.g. X) and the perimetric surface is greater than a radial distance (e.g. distance between X and the C3) between the central axis and the second imaginary circumferential plane (e.g. compare radius of d2 to d1, abstract states d2 is smaller than d1), and wherein the radial distance (e.g. the distance between X and the perimetric surface) between the central axis and the perimetric surface is less than a radial distance between the central axis and the outer peripheral surface (e.g. outer peripheral surface defined by C) of the body portion (e.g. compare radius of dk to radius d1). Regarding claim 17, wherein the first and second perimeter surfaces and the intermediate surface are all planar, in cross-section (e.g. see planar surfaces of 1st P and 2nd P). Regarding claim 18, wherein the pilot embossment has a polygonal shape (e.g. see polygonal shape defined by RA, see figure 1). Regarding claim 19, Wherein the pilot embossment has a cylindrical shape (see rejection of claim 15, the pilot embossment having ES).
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Schmidt discloses the invention as claimed above but fails to disclose the engagement surface extends in the direction perpendicular to the central axis. Warn discloses a pierce nut (e.g. see annotated figure 1 of Warn below) having a surface that is formed by 1st perimeter surface (e.g. 1st P), an intermediate surface (e.g. IS), 2nd perimeter surface (e.g. 2nd P) and an engagement surface that is inclined (e.g. ES similar to Schmidt). Warn also discloses in figure 4 a pierce nut (e.g. see annotated figure 4 of Warn below) having a surface that is formed by 1st perimeter surface (e.g. 1st P), an intermediate surface (e.g. IS), 2nd perimeter surface (e.g. 2nd P) and an engagement surface (e.g. ES) that is perpendicular relative to a central axis of the pierce nut (e.g. similar to applicants’ invention). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to configure the engagement surface of Schmidt to be perpendicular as taught by Warn with reasonable expectation of success, since having different structure is a matter of design and to further deform a metallic substrate (see description of figure 1 and figure 4 of Warn).
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL A PATEL whose telephone number is (571)272-7060. The examiner can normally be reached 7:00 am to 4:00pm.
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/VISHAL A PATEL/Primary Examiner, Art Unit 3675