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 § 103
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 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.
Claims 1-2, 4-7 and 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over Swanstrom US5927920 (hereinafter, Swanstrom).
Regarding claim 1, Swanstrom teaches a threaded insert similar to a threaded element (11, see Fig. 1) comprising or consisting of a metal (see claim 1, line 1) having an internal thread 15, comprising:
a body (see body of fastener insert 11 in Fig. 1);
an opening (see central opening of the insert 11 in Fig. 1) that defines an inner wall (see Fig. 1) of the body; and
a threaded section (see threaded section formed by thread impressions 15 in Fig. 1) having a thread 15;
wherein the body comprises a first end (top end in Fig. 1) and a second end (bottom end in Fig. 1);
wherein the opening extends at least partially from the first end toward the second
end of the body (see Fig. 1),
wherein the threaded section is formed on the inner wall of the opening (see Fig. 1);
wherein the inner wall has at least one recess (see recess on inner side of the corner 17 or in between the threaded section 15 in Fig. 1) which crosses the threaded section.
Swanstrom fails to teach wherein the internal thread is produced by additive manufacturing.
However, it is the examiner’s position that the instant method step limitations are considered obvious over the prior art in view of rejections of the structural limitations previously set forth. Although the prior art does not explicitly set forth the method steps as claimed when the method steps essentially set forth the provision and use of an apparatus, as intended by its structure, then such method steps are considered obvious when the structure of the apparatus has been demonstrated as obvious or anticipated by the prior art.
Further, Swanstrom fails to teach wherein a surface of the threaded section has a roughness Rz in the range of 2.5-60 µm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to improve performance of the thread, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of thread roughness involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant specification of the present application, page 4, lines 7-16, applicant has not disclosed any criticality for the claimed limitations.
Furthermore, Swanstrom fails to teach wherein the metal is selected from the group consisting of amorphous alloys and/or precious metals.
However, it is the examiner’s position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the metal in Swanstrom to be selected from the group of consisting of amorphous alloys and/or precious metals, 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 engineering design choice. It is also a common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, and potential aesthetics, etc., for the application, intended use, and design considerations for that material. MPEP 2144.07.
Regarding claim 2, Swanstrom teaches and/or make obvious of the threaded element according to claim 1, but fails to expressly teach wherein an outer diameter of the thread is at least 0.5 mm.
It is the examiner’s position that it would have been an obvious matter of design choice to have modified the size of an outer diameter of the thread to be at least 0.5 mm in order to accommodate size of the bolt or component, 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. MPEP 2144.04 (iv) (a).
Regarding claim 4, Swanstrom teaches and/or make obvious of the threaded element according to claim 1, Swanstrom teaches wherein the recess and/or the thread (see Fig. 1) comprises a chamfer 16 at the first end and/or second end of the body.
Regarding claim 5, Swanstrom teaches and/or make obvious of the threaded element according to claim 1, wherein the thread comprises a plurality of thread turns (see plurality of thread turns in Fig. 1 having similar structure of thread turns in Figs. 1-3 of present application), but fails to teach wherein the thread turns have a flank angle of 10° to 70°.
However, it is the examiner’s position that changes in shape have been established to be obvious to a person of ordinary skill in the art in the absence of a persuasive evidence that the particular configuration was significant. The disclosure does not provide any evidence of the criticality of the flank angle. Therefore, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the flank angle as an obvious change in shape. MPEP 2144.04 (iv)(b). Further, the applicant admits a flank diameter, an outer diameter and/or a core diameter of the threaded section can gradually be increased or reduced along the longitudinal axis of the opening (see page 6, lines 32-35).
Regarding claim 6, Swanstrom teaches and/or make obvious of the threaded element according to claim 1, wherein the threaded section has a conical shape relative to the longitudinal axis of the opening (see thread 15 having flanks on both sides tapered forming a conical shape relative to the central longitudinal axis of the opening).
Regarding claim 7, Swanstrom teaches and/or make obvious of the threaded element according to claim 1, wherein the inner wall of the body has a plurality of recesses (see recess on inner side of the corner 17 or in between the threaded section 15 in Fig. 1) which extend at least partially from the first end toward the second end of the opening (see Fig. 1).
Regarding claim 10, Swanstrom teaches and/or make obvious of the threaded element according to claims 1, wherein the recess extends substantially in the longitudinal direction of the opening (see Fig. 1 where the recess extends from top to bottom of the nut), wherein portions of the recess are offset in the radial direction of the opening (see recess offset in the radial next to each threaded region 15 as shown in Figs. 1 and 2).
Regarding claim 11, Swanstrom teaches and/or make obvious of the threaded element according to claims 1, but fails to teach wherein a base width of the thread turns varies along the thread.
It is the examiner’s position that changes in shape have been established to be obvious to a person of ordinary skill in the art in the absence of a persuasive evidence that the particular configuration was significant. The disclosure does not provide any evidence of the criticality of the base width varying along the thread. Therefore, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape and size of the thread base width as an obvious change in shape. MPEP 2144.04 (iv)(b).
Regarding claim 12, Swanstrom teaches and/or make obvious of a method for producing a threaded element (see methods in claims 7-13) comprising or consisting of a metal having an internal thread according to claim 1, the threaded element comprising:
a body;
an opening that defines an inner wall of the body, and
a threaded section having a thread;
the body comprising a first end and a second end;
the opening extending at least partially from the first end toward the second end of the body;
the threaded section being formed on the inner wall of the body;
the inner wall having at least one recess which crosses the threaded section,
(for the structural limitations of the nut, please refer to the rejection set forth above in claim 1 as disclosed by Swanstrom)
a surface of the threaded section having a roughness Rz in the range of 2.5-60 µm, and
the metal is selected from the group consisting of amorphous alloys and/or precious metals;
(Refer to the rejection and rationale set forth above in claim 1)
(Concerning roughness range, please refer to the rejection and rationale set forth above in claim 1)
the threaded element is produced using an additive manufacturing method.
(Concerning manufacturing method, please refer to the rejection and rationale set forth above in claim 1)
Regarding claim 13, Swanstrom teaches and/or make obvious of the method according to claim 12, but fails to teach wherein the additive manufacturing method is selected from the group consisting of selective laser melting (SLM), selective electron beam melting (SEBM), laser metal deposition (LMD) and selective laser sintering (SLS).
However, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention because Swanstrom teaches and/or make obvious of the structural limitations and claimed methods are considered well known methods, and one having ordinary skill in the art would have known to manufacture in such way to yield predictable result.
Regarding claim 14, Swanstrom teaches and/or make obvious of the method according to claim 12, further Swanstrom teaches the recess (see interior corners in Fig. 1) is designed to receive excess material from a thread turn while screwing in a screw.
However, it is the examiner’s position that Swanstrom teaches and/or make obvious of the structural limitations, and the insert in Swanstrom is capable of such limitation. Further, the recess in Fig. 1 is designed with corners to receive excess material from a thread turn while screwing in a screw (see column 5, lines 61-67 and column 6, lines 1-16).
Regarding claim 15, Swanstrom teaches and/or make obvious of the threaded element according to claim 1, but fails to teach wherein the surface of the threaded section has a roughness Rz in the range of 10-25 µm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have selected and preferred material having roughness Rz in the range of 10-25 µm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of thread roughness involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant specification of the present application, page 4, lines 7-16, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 16, Swanstrom teaches and/or make obvious of the method according to claim 12, but fails to teach wherein the surface of the threaded section has a roughness Rz in the range of 10-25 µm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have preferred material having roughness Rz in the range of 10-25 µm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of thread roughness involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant specification of the present application, page 4, lines 7-16, applicant has not disclosed any criticality for the claimed limitations.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Swanstrom in view of Kawaguchi US20180073616 (hereinafter, Kawaguchi).
Regarding claim 8, Swanstrom teaches and/or make obvious of the threaded element according to claims 1, but fails to teach wherein the recess is formed helically along the threaded section.
Kawaguchi teaches a nut 3 having a helical groove (3a, see Fig. 2a-b) formed on its inner circumference.
It is the examiner’s position that it would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to have modified the thread of the Swanstrom to be helical as taught by Kawaguchi to accommodate matching screw shaft (see Figs. 1a-b).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Swanstrom in view of Lawrence et al., US4764071 (hereinafter, Lawrence).
Regarding claim 9, Swanstrom teaches and/or make obvious of the threaded element according to claims 1, but fails to teach wherein the recess comprises a counter thread which is formed in the opposite direction to the thread of the threaded section.
However, Lawrence teaches a nut segment 24 having a interior segments surfaces 50 having a helical textured surfaces 54, similar to thread and a counter thread as claimed above.
It is the examiner’s position that it would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to have modified nut disclosed by Swanstrom to have helical threads with counter thread as taught by Lawrence so the nut is complimentary to, and matingly engageable with the corresponding surface texture of the reinforcing rod.
Response to Arguments
Applicant's arguments filed 08/05/2026 have been fully considered but they are not persuasive.
Applicant’s amendment in response to rejection under 35 USC 112 has been accepted. Therefore, indefiniteness rejections of previous Office Action have been withdrawn.
Applicant, in page 6, argues Swanstrom does not even mention roughness at all, let alone that claimed range.
The Examiner respectfully disagrees.
Swanstrom teaches and/or make obvious of the structural limitations of the claimed fastener. Roughness of the metal in additive manufacturing is directly related to process parameters, and additive manufacturing method is well-known process in manufacturing industry. Therefore, the 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).
Applicant argues that the structure formed by Swanstrom’s method is not the same as that formed by claims 1 and 12 – the claimed additive manufacturing method imparts distinct structural difference.
The Examiner acknowledges that the method in present application and the Swanstrom’s method are not the same, however additive manufacturing method is common and well-known form of manufacturing method. Therefore, as stated in the MPEP 2113: 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. Therefore, it would have been obvious to one of ordinary skill in the art to produce intended roughness using well-known manufacturing method, i.e. additive manufacturing method.
Regarding claim 8, the applicant argues Kawaguchi fails to correct deficiency.
The examiner respectfully disagrees.
The examiner notes that Kawaguchi is a teaching reference teaching a helical thread section, wherein base reference, Swanstrom, teaches and/or make obvious of the most of the structural limitations. Further, Kawaguchi teaches a similar structured barrel nut 3 having a helical thread (see Figs. 1-3) to engage the screw shaft (see para. [0003]). Therefore, it would have been obvious to one of ordinary skill in the art to modify Swanstrom using Kawaguchi to accommodate matching screw shaft to the helical thread.
Regarding claim 9, the applicant argues the present threaded element is uniquely formed by additive manufacturing and Lawrence does not provide to any reason to modify.
The examiner respectfully disagrees.
As established above, additive manufacturing is well-known method commonly used in manufacturing industry. Applicant’s argument lack reason as to why Lawrence fails to correct deficiency and has been found unpersuasive. Please refer to the rejection and rationale set forth above in claim 9, and see column 4, lines 31-51 stating textured surfaces are formed to be complimentary to and matingly engage with reinforcing rod.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIL K MAGAR whose telephone number is (571)272-8180. The examiner can normally be reached M-F 7:30-5:30.
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, Christine Mills can be reached at (571) 272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIL K. MAGAR/Examiner, Art Unit 3675
/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675
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