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 Objections
Claim 1 is/are objected to because of the following informalities:
Claim 1 recites “a fastener comprising a fastener with an axial through bore” in Ln 1 and 2 however it is unclear what the applicant is referring by “comprising a fastener” in a fastener. The applicant is suggested to make the following correction: “A fastener comprising: an axial through bore and flange”.
Claim 1 is further objected to because it recites “a flange having an upward facing and laterally disposed top contact surface” in Ln 3 of Claim 1 after introducing the flange in Ln 2, “flange located at a bottom of the fastener”. The applicant is suggested to make the following correction in Ln 3 : “the flange having an upward facing and laterally disposed…”.
Claim 1 is further objected to because it recites “on a top portion of the fastener” in Ln 4 after introducing “top contact surface’ of the flange in Ln 3. The applicant is suggested to make the following correction in Ln 4 of Claim 1 : “an axially extending collar on the top contact surface of the flange”.
Claim 1 is further objected because it recites “a flange having an upward facing and laterally disposed top contact surface” in Ln 3 while also reciting “ flange contact surface” in Ln 5 and 7 and “contact surface of flange” in Ln 8. The applicant is suggested to change “flange contact surface” and “the contact surface of the flange” to “the top contact surface of the flange” for claim language consistency.
Appropriate correction is required.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The fastener in “comprising a fastener” in Ln 2 of Claim 1 lacks proper antecedent basis from the specification for the claimed subject matter. In the description of the preferred embodiment, the applicant does not describe what the fastener is in their invention, rather describes the bushing (paragraph 0016, 11 in Figure 1). For the purpose of the examination, the examiner will interpret the fastener in the claims as bushing, described in the specification.
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.
Claim 1-11 is/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.
Claim 1 recites the limitation “comprising a fastener” in Ln 2 along with “a fastener” as preamble in Ln 1. There is insufficient antecedent basis for this limitation in the claim since the applicant also describes a bushing (11 in figure 1) in the instant specification in paragraph 0016, and the bushing is performing the same function as the fastener in Ln2 of Claim 1. Therefore, it is unclear if the bushing requires any fastening or if the fastener is any different than the bushing. For examination purposes, the fastener referred to in Ln 2 is being interpreted as the bushing in the specification.
The Ln 4 of Claim 1 recites “ an axially extending collar on a top portion of the fastener”. There is insufficient antecedent basis for this claim limitation since the phrase “top portion of the fastener” is not specified in paragraph 0008 of the instant application specification or in the drawings. Therefore, it is unclear if the “top portion of the fastener” refers to the top contact surface of the flange (introduced in Ln 3 of Claim 1) or if it is an additional new top portion. For examination purposes, “top portion of the fastener” will be interpreted as “the top contact surface of the flange”.
The Ln 2 of Claim 11 recites the limitation “the hardness of the fastener and the panel are of like hardness”. There is insufficient antecedent basis for this claim limitation since the phrase “are of like hardness” is not specified in paragraph 0021 or 0023 of the instant application. Therefore, it is unclear if the “are of like hardness” refers to ‘same hardness’ or ‘similar hardness’. For examination purposes, "are of like hardness" is being interpreted to as "similar hardness".
Claims 2-11 are all rejected due to their dependency on Claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 recites “The fastener of claim 1 having an axial through bore”. However, Claim 1 already recites “an axial through bore” in Ln 2, exemplifying the failure of Claim 5 to properly limit the subject matter.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-3 and 5-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Terence et al (US Patent No. 5,217,339, herein Terence).
Regarding Claim 1, Terence discloses a fastener (Please see claim objection and 112b rejection above regarding Claim 1. The plate 12 in Fig.4 is deemed as the bushing/fastener as this instant application claims), comprising: a fastener with an axial through bore (40, Fig.4) and flange (28, Fig.4) located at a bottom of the fastener (Fig. 4, it is the position of the examiner that 28 and 40 are located at the bottom surface 32. Please note that the surface 32 is considered the bottom of the fastener since no relative orientation is required by the claim), a flange having an upward facing and laterally disposed top contact surface (Fig.4, it is the position of the examiner that surface 34 is the top contact surface of the flange, radially disposed. Please note that the surface of 34 is considered the upper surface of the fastener since no relative orientation is required by the claim); an axially extending collar on a top portion of the fastener extending upwardly from the flange contact surface (Col 3 Ln 25, A hub 36 extends from surface 34, it is the position of the examiner that hub 36 is the extending collar, and is considered extending upwardly from the surface 34 since no relative orientation is required by the claim); and a plurality of ribs positioned along the outer surface of the collar (Col 4 Ln 7, plurality of circumferentially spaced ribs 44, and Fig.1, the ribs 44 are positioned along the outer surface of the hub 36) and extending axially downward to the flange contact surface (Col 4 Ln 7, ribs 44 extending downwardly from the lower surface 34 of the plate portion 28) where they translate uninterrupted to the lateral direction after a bend (Col 4 Ln 13, the ribs 44 have a curvilinear shape, Fig.1) and then following a curved path on the contact surface of the flange (Col 4 Ln 23, the ribs 44 form an arcuate section with the concave side oriented in a direction of rotation of the plate 12, Fig.1).
Regarding Claim 2, Terence discloses all the limitations of Claim 1. Terence also discloses wherein the ribs each follows a straight axial path along the collar (Col 4 Ln 9, each of the ribs includes an inner end 46 which abuts against the hub 36, from Fig.1, it is the position of the examiner that the ribs follow a straight axial path along the hub 36).
Regarding Claim 3, Terence discloses all the limitations of Claim 1. Terence also discloses wherein each of the ribs are tapered both vertically and width-wise (Col 4 Ln 31, the ribs taper upwardly towards the outer periphery 30; in Fig.1, it is the position of the examiner that the ribs are tapered widthwise as it progressively narrows towards the outer periphery 30).
Regarding Claim 5, Terence discloses all the limitations of Claim 1. Terence already discloses an axial through bore in Claim 1 (also see 112d rejection).
Regarding Claim 6, Terence discloses all the limitations of Claim 5. Terence also discloses wherein the through bore is internally threaded (Col 3 Ln 50, it is mentioned that second set of threads 26 has a diameter such that it will engage with the opening 40, confirming that opening 40 is threaded).
Regarding Claim 7, Terence discloses all limitations of Claim 1. Terence also discloses wherein the fastener is electrically conductive (Col 5 Ln 54, the plate could be formed of a metal, and metal conducts electricity).
Regarding Claim 8, Terence discloses all limitations of Claim 1. Terence also discloses wherein the curved path is circular (Fig. 1 depicts that the path taken by the ribs 44 is circular along the periphery 30 of the plate 12)
Regarding Claim 9, Terence discloses all limitations of Claim 1. Terence also discloses wherein the curved path is spiral (Fig. 1 depicts that the path taken by the ribs 44 is spiral along the periphery 30 of the plate 12).
Regarding Claim 10, Terence discloses all limitations of Claim 3. Terence also discloses wherein the distal ends of the ribs terminate at the contact surface of the flange (Col 4 Ln 9, each of the ribs includes an inner end 46 which abuts against the hub 36 and an outer end 48 in proximity to the outer periphery 30. See Fig. 1).
Regarding Claim 11, Terence discloses all limitations of Claim 3 as stated above. Terence also discloses an assembly of the fastener of claim 1 affixed to a panel wherein the fastener is broached into a hole of the panel by pressing (Col 4 Ln 2, To prevent rotation of the plate 12 with the fastener, the plate is provided with abutment means to engage with the insulation 16, Fig.4) and wherein the hardness of the fastener and the panel are of like hardness (See 112b for Claim 11. Col 4 Ln 38, it is the abutment of the ribs against these upwardly extending portions of the insulation which provides a great deal of the resistance against rotation. It is the position of the examiner, that if the abutment between the ribs of the plate assembly and the insulation provide resistance to rotation, then the hardness of the two components is similar).
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Terence et al (US Patent No. 5,217,339, herein Terence).
Regarding Claim 4, Terence discloses all limitations of Claim 1 as stated above. Terence also discloses 6 ribs equally spaced at 60 angular degrees apart (Fig.1, it is the position of the examiner, that there are six ribs (44) radially disposed in the circumference, hence 360 degrees divided by 6 is 60 degrees, hence each rib is 60 angular degrees apart from one another).
However, Terence fails to disclose twenty-four ribs equally spaced fifteen angular degrees apart.
In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. Additionally, the instant specification paragraph (0009 and 0020) discusses about the twenty-four ribs equally spaced fifteen angular degrees apart and does not assign any criticality on the number of ribs. Hence it would have been obvious to one of
ordinary skill in the art before the effective filing date of the claimed invention to have configured the invention of Terrence to possess twenty-four ribs equally spaced fifteen angular degrees similar to the instant application. The motivation is to provide greater surface area for engagement between the ribs and the insulation 16 as well as greater resistance to rotation and loosening of the plate 12 (Col 4 Ln 18).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jensen et al (US20190120269A1, herein Jensen), ADHESIVE BASED MOUNTING STRUCTURE.
Fultz et al (US5489176A, here in Fultz), Male Clinch Fastener With Cold-formed Locking Flange And Associated Installation Method.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMAD FAROOQ whose telephone number is (571)270-3284. The examiner can normally be reached Monday to Thursday between 10:00am to 6:30pm EST.
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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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/AHMAD FAROOQ/Examiner, Art Unit 3675
/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675
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