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 with traverse of Group I in the reply filed on May 4, 2026 is acknowledged. The traversal is on the ground(s) that “a thorough search for the subject matter of any one group would necessarily encompass a search for the subject matter of the remaining group…MPEP §803…”. This is not found persuasive because the Applicant is making an argument that is only proper under US Restriction practice. The instant application is a 371 application, and therefore subject to Unity of Invention rules (see MPEP §1850).Therefore, as Applicant has not argued about the presented Unity of Invention analysis, and instead relies on US Restriction practice arguments, the presented arguments are not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
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.
In the instant application, the claim limitations that invoke an interpretation under 35 USC 112(f) are “first snap-in formation means” and “second snap-in formation means”. Accordingly, to the specification, the structure of these elements is interpreted as ribs and grooves, respectively, as well as equivalents thereof.
Claim Objections
Claims objected to because of the following informalities:
Claim 10, lines 4-5 recites “the thread formation” which examiner believe should read --the screw thread formation-- to maintain consistent wording throughout the claims.
Claim 15, line 5 recites “the thread formation” which examiner believe should read --the screw thread formation-- to maintain consistent wording throughout the claims.
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 7-9 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 7 and 8 recite “a first outer zone” and “a second inner zone” which renders the scope of the claim indefinite. It is unclear how two zones on an outer surface could be inner and outer. There is also not a first “inner” zone, thus the use of “second” adds to the lack of clarity. Furthermore, the claim lacks a reference point to delineate the scope of “outer” and “inner”, thus rendering the claims indefinite.
Claim 9 is rejected as depending from a rejected indefinite claim.
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 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rawdon et al US Patent Application Publication 2020/0049188 hereinafter referred to as Rawdon.
Regarding claims 1 and 2, Rawdon discloses a fastener assembly (Abstract; Fig 3, 5) for securing a first member or assembly (202) to a second member or assembly (204), the fastener assembly including a pin, stud or bolt (210) with a screw thread formation on a shaft portion (216), the thread formation being cooperable with a threaded nut member (230), the fastener assembly further including a cup shaped cover member (250) with a continuous wall structure having an internal surface defining an internal space (see Fig 3, 5), the continuous wall structure having an open mouth region with a continuous peripheral edge zone (as shown on the Figures), said internal surface of said cover member having first snap-in formation means (264) cooperable with second snap-in formation means (282) on an outer surface region of the threaded nut member to secure said cover member to said threaded nut member [0138, 0140], and in use when so secured, said continuous peripheral edge zone is positioned closely adjacent to a first region surrounding said threaded nut member (see Fig 3), said first and said second snap-in formation means being configured to either prevent rotation of said outer cover member relative to said threaded nut member, or if relative rotation is possible, said first and said second snap-in formation means remain engaged upon such relative rotation (as the first and second snap-in formation are positively engaged and based on their shape, it is considered that they remain engaged upon relative rotation); said first snap-in formation means being configured such that when engaged with said second snap-in formation means, said continuous seal means (260) is operable, in use, to seal said internal space (see Fig 3 - sealing against item 206).
Regarding claim 3, Rawdon discloses an internal space is filled with blocking filler material [0131].
Regarding claim 4, the recitation in claim 1 that the fastener assembly is “for securing a first member or assembly to a second member or assembly” is merely an intended use. Applicants’ attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. A claim containing 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' if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647. Given that Rawdon discloses all of the claimed structure, this intended use is met by the prior art.
Regarding claims 5-9, Rawdon discloses wherein the threaded nut member (230) includes an outer surface region (as shown) that is capable of being engaged with a tool member, or hexagonal tooth member, to rotate it. Furthermore, the taper of the outer surfaces read on the different transverse sizes (as shown on the figures). Given the grooves on the first outer zone, the size of the first outer zone is smaller than the second outer zone.
Regarding claims 10-15, the recitation in the claims that the fastener assembly is for a “treatment apparatus” or “a multi jackbolt tensioner assembly” is merely an intended use. Applicants’ attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. A claim containing 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' if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647. Given that Rawdon discloses all of the claimed structure, this intended use is met by the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARA SCHIMPF whose telephone number is (571)270-7741. The examiner can normally be reached Monday-Friday 7:30am - 3:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Fristoe can be reached at (571) 272-4926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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