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 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 1-20 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.
Claims 1-20 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: elements that would allow the system to form a joint such as a punch. The claimed system of claim 1 merely recites three metal sheets which are incapable of forming a joint on their own. Claim 15 recites a blank holder but not a punch.
Claim 1 recites the limitation “wherein the top sheet and bottom sheet are disposed between a die and a blank holder”. It is not clear if the die and blank holder are part of the claimed invention since they are not positively recited as part of the system, but only functionally claimed. The scope is unclear.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 14 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Timm (DE19701150A1, machine translation relied on).
Re Claim 1, as best understood, Timm discloses a self-piercing riveting (SPR) system for forming a joint between a top sheet 1 and a bottom sheet 1, the system comprising:the top sheet 1 and the bottom sheet 1, wherein the top sheet is layered above the bottom sheet, and wherein the top sheet and bottom sheet [are disposed between a die and a blank holder]; and a barrier 5 disposed between the bottom sheet and the die, wherein the barrier [is configured to reduce stress concentrations during formation of a joint between the top sheet and the bottom sheet], the barrier [being removable from between the bottom sheet and the die after formation of the joint] (Fig. 1-2; para. 4, 11-20). The recitation in brackets [ ] is considered functional language. The reference discloses all the structural components claimed, which read on those of the instant invention. Therefore, the system of Timm is capable of performing the same desired functions as the instant invention as claimed.
Re Claim 2, Timm discloses the top sheet comprises at least one of an aluminum layer, a magnesium layer, a plastic layer, a steel layer, or a fiber reinforced layer (para. 6, 14).
Re Claim 3, Timm discloses the bottom sheet comprises an aluminum layer, magnesium layer, a plastic layer, a steel layer, or a fiber reinforced layer (para. 6, 14).
Re Claim 13, Timm discloses the barrier comprises an aluminum alloy (para. 14).
Re Claim 14, Timm discloses the top sheet is clamped to the bottom sheet (Fig. 1-2; para. 4).
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Timm in view of Jimbo (PGPub 2019/0105700).
Re Claim 4, Timm discloses the barrier is a steel sheet (para. 11) but does not disclose the barrier is at least one of a cold formed or a dual phase steel. However, Jimbo teaches cold forming steel sheets (para. 19). It would be obvious to one of ordinary skill in the art to utilize cold formed steel, as taught by Jimbo, for the purpose of obtaining a steel sheet with optimal properties and since it is a well-known technique and material type and also since It has been held to be within the general skill of a worker 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.
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Timm in view of Iwase (JP2003340543A).
Re Claim 5, Timm does not disclose the barrier has a yield strength greater than or equal to 200MPa. Timm discloses using different materials of joining sheets (para. 6) which in turn could be used with different strength barrier layers. Iwase teaches barrier has a yield strength greater than 150MPa (pg. 3-4). It would be obvious to one of ordinary skill in the art to utilize yield strength in this range, as taught by Jimbo, for the purpose of obtaining a barrier with optimal properties and also since it has been held to be within the general skill of a worker 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.
Re Claim 6-7, Timm does not disclose the barrier has a thickness between approximately 0.5mm and 2.0mm, the barrier has a thickness between approximately 0.8mm and 1.00mm. Timm does mention making the thickness appropriate to the parts being joined (para. 11). Further, Iwase teaches barrier has a thickness in the range of 0.3 mm and 1.3mm and has an example of 0.6mm (page 5 of translation). It would be obvious to one of ordinary skill in the art to utilize barrier in the claimed thickness range, as taught by Iwase, for the purpose of providing a strong component which protects the sheets being joined while not interfering or adversely affecting the riveting process and also since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Timm in view of Behrendt (DE102016200533A1, machine translation relied on).
Re Claim 10, Timm does not disclose the top sheet comprises an epoxy coating. However, Behrendt teaches forming joints comprising a sheet which comprises an epoxy coating (para. 12, 16, 23). It would be obvious to one of ordinary skill in the art to utilize a sheet which comprises an epoxy coating, as taught by Behrendt, for the purpose of providing a desired exterior texture and strength profile and also since it has been held to be within the general skill of a worker 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.
Claim(s) 8-9, 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Timm.
Re Claim 8, Timm does not explicitly disclose the barrier comprises at least one of a polymeric or fibrous material. Timm does disclose use of composite material sheets (para. 6). Further, it would be obvious to utilize fiber reinforcement or a strong polymer in the barrier with the same goal of protecting the sheets and also since it has been held to be within the general skill of a worker 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.
Re Claim 9, Timm does not explicitly disclose the barrier has a yield strength of 110 MPa. However, Timm discloses using different materials of joining sheets (para. 6) which in turn could be used with different strength barrier layers. It would be obvious to specifically have a barrier material with a yield strength of 110 MPa for the purpose of obtaining a barrier with optimal properties and also since it has been held to be within the general skill of a worker in the art to select a known material (thereby obtaining a specific yield strength) on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Re Claim 11, Timm does not explicitly disclose the barrier comprises a composite material. Timm does disclose use of composite material sheets (para. 6). Further, it would be obvious to utilize fiber reinforcement or a strong composite in the barrier with the same goal of protecting the sheets and also since it has been held to be within the general skill of a worker 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.
Re Claim 12, Timm does not disclose the barrier has a length of approximately 6 inches and a width of approximately 4 inches. It would be obvious to one of ordinary skill in the art to utilize barrier in the claimed size range for the purpose of providing optimal size and also since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 15-16, 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Timm in view of Furusako (US 10,722,935).
Re Claim 15, Timm discloses a self-piercing riveting (SPR) system for forming a joint between a first sheet 1 and a second sheet 1, the system comprising:a die; the first sheet layered with the second sheet, wherein the first sheet and the second sheet are disposed between the die and a punch; and a barrier disposed between the second sheet and the die, wherein the barrier [is configured to reduce stress concentrations during formation of a joint between the first sheet and the second sheet], wherein the barrier [is removable from between the second sheet and the die after formation of the joint] (Fig. 1-2; para. 4, 11-20). The recitation in brackets [ ] is considered functional language. The reference discloses all the structural components claimed, which read on those of the instant invention. Therefore, the system of Timm is capable of performing the same desired functions as the instant invention as claimed. Timm does not disclose a blank holder, the first sheet and the second sheet are disposed between the die and the blank holder. However, Furusako teaches forming a joint between a first sheet and a second sheet, a die and a blank holder 7, the first sheet and the second sheet are disposed between the die and the blank holder (col. 8, lines 45-60; fig. 1). It would be obvious to one of ordinary skill in the art to utilize a blank holder, as taught by Furusako, for the purpose of contacting the sheet at the punch side to press the sheet against the die to ensure optimal rivet placement and efficiency in the riveting process.
Re Claim 16, Timm does not explicitly disclose the barrier comprises a composite material. Timm does disclose use of composite material sheets (para. 6). Further, it would be obvious to utilize fiber reinforcement or a strong composite in the barrier with the same goal of protecting the sheets and also since it has been held to be within the general skill of a worker 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.
Re Claim 19, Timm discloses the first sheet is layered above the second sheet (Fig. 1-2; para. 4, 11-20).
Re Claim 20, Timm discloses the first sheet comprises one of a steel alloy (para. 14) but does not disclose the second sheet comprises a first magnesium alloy. However, Furusako teaches a sheet comprises magnesium (col. 9 , line 35+). It would be obvious to utilize a magnesium alloy, as taught by Furusako, for the purpose of obtaining desired strength characteristics and also since it has been held to be within the general skill of a worker 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.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Timm in view of Furusako in further view of Jimbo (PGPub 2019/0105700).
Re Claim 17, Timm discloses the barrier is a steel sheet (para. 11) but does not disclose the barrier is at least one of a cold formed or a dual phase steel. However, Jimbo teaches cold forming steel sheets (para. 19). It would be obvious to one of ordinary skill in the art to utilize cold formed steel, as taught by Jimbo, for the purpose of obtaining a steel sheet with optimal properties and since it is a well-known technique and material type and also since It has been held to be within the general skill of a worker 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.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Timm in view of Furusako in further view of Iwase (JP2003340543A).
Re Claim 18, Timm does not disclose the barrier has a thickness between approximately 0.5mm and 2.0mm. Timm does mention making the thickness appropriate to the parts being joined (para. 11). However, Iwase teaches barrier has a thickness between approximately 0.5mm and 2.0mm (page 5 of translation). It would be obvious to one of ordinary skill in the art to utilize barrier in this thickness range, as taught by Iwase, for the purpose of providing a strong component which protects the sheets being joined while not interfering or adversely affecting the riveting process and also since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN J WALTERS whose telephone number is (571)270-5429. The examiner can normally be reached M-F 9am-5pm EST.
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, Thomas Hong can be reached at (571) 272-0993. 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.
/Ryan J. Walters/Primary Examiner, Art Unit 3799