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 1-2 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 and 2 each recite “A water stop mounting structure of a bolt to a plate-like metal member, wherein…” in the preamble. This recitation is indefinite for several reasons. First it is unclear whether the bolt as a whole is required for infringement/anticipation to occur or if this is merely a mounting structure that can be used with a bolt in some manner. Second, it is unclear if the “to a plate-like metal member” requires such a member for infringement/anticipation to occur or if this is merely a recitation of the intended use of the bolt and/or water stop mounting structure. Third this preamble lacks a transitional phrase and it is unclear if this claim is inclusive or exclusive of other unclaimed elements. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “A bolt for mounting to a plate-like metal member, the bolt comprising a water-stop mounting structure, wherein:…”.
Claims 1 and 2 each recite “inserted into a pilot hole of the plate-like metal member and caulked” in lines 2-3. This recitation is indefinite it is unclear whether this recitation positively requires the plate-like metal member of the intended use of the preamble for infringement/anticipation to occur, or if it is a further narrowing of the prior claimed intended use. Additionally it is unclear whether the “and caulked” is an improper method limitation in an apparatus claim, is a positive structural limitation, or is another intended use/capability of the bolt. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “for insertion into a pilot hole of the plate-like metal member and for being caulked”.
Claim 1 recites “metal of a circumferential edge portion of the pilot hole of the plate-like metal member is plastically deformed towards…” in lines 10-12. This recitation is indefinite it is unclear whether this recitation positively requires the plate-like metal member of the intended use of the preamble for infringement/anticipation to occur, or if it is a further narrowing of the prior claimed intended use. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “the bolt is configured to plastically deform metal of a circumferential edge portion of the pilot hole of the plate-like metal member towards…”.
Claim 2 recites “a sealant flows between a circumferential edge portion of the pilot hole of the plate-like metal member and the bolt at a time of being caulked when the sealant is applied to a bearing surface of the bolt, and water is stopped” in lines 7-9. This recitation is indefinite it is unclear whether this recitation positively requires the plate-like metal member of the intended use of the preamble for infringement/anticipation to occur, or if it is a further narrowing of the prior claimed intended use. Additionally it is unclear whether the limitations are improper method limitations in an apparatus claim, are positive structural limitations, or are merely and intended use/capability of the sealant and bolt. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “a bearing surface of the bolt has a sealant thereon that is configured to flow between a circumferential edge portion of the pilot hole of the plate-like metal member and the bolt at a time of being caulked such that water intrusion between the bolt and the plate-like metal member can be stopped”.
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 1, as best understood, is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoshino et al. (US 2020/0011365).
With regard to claim 1, Hoshino discloses a water stop mounting structure of a bolt (see the bolt in Figs. 2, etc., including water stop mounting structures at least at due to elements 14 when installed) to a plate-like metal member (as interpreted as an intended use limitation in light of the 112(b) rejection above, Hoshino discloses such as it actually discloses such in Figs. 5-8 at element 30), wherein the bolt is a caulking bolt (Examiner notes the term “caulking” has the BRI of “sealing”, which the bolt of Hoshino is capable of depending on how it is used. Additionally see paras. [0023], etc. ) inserted into a pilot hole of the plate-like metal member and caulked (as seen in Figs. 5-8 it is capable of the claimed intended use/capability, as interpreted in light of the above 112(b) rejection), the caulking bolt has a screwless portion (20) between an upper end of a male screw (12) formed on a bolt shaft portion (11) and a bearing surface (13) of a head portion (10) of the bolt (as seen in Figs. 2, etc.), the screwless portion being thicker than an effective diameter of the male screw (as seen in Figs. 4, 6, etc.), and metal of a circumferential edge portion of the pilot hole of the plate-like metal member is plastically deformed toward the screwless portion at a time of being caulked to be brought into close contact with the screwless portion (as seen between Figs. 5-8 it is capable of the claimed intended use/capability, as interpreted in light of the above 112(b) rejection), and water is stopped (as seen at Fig. 8 it is capable of the claimed intended use/capability, as interpreted in light of the above 112(b) rejection, as it forms a sealed interface after caulking).
Claim 2, as best understood, is rejected under 35 U.S.C. 102(a)(1) as being anticipated by West et al. (US 2010/0221064).
With regard to claim 2, West discloses a water stop mounting structure of a bolt (see bolt comprising 10 and 11 as seen in Fig. 4, etc. including water stop mounting structures at least at due to element 1 when installed) to a plate-like metal member (as interpreted as an intended use limitation in light of the 112(b) rejection above, West discloses such since as seen in Fig. 4 it is capable of such as 12 can be a metal plate-like member), wherein the bolt is a caulking bolt (Examiner notes the term “caulking” has the BRI of “sealing”, which the bolt of West is capable of depending on how it is used due to sealing element 1) inserted into a pilot hole of the plate-like metal member and caulked (as seen in Figs. 4, etc. it is capable of the claimed intended use/capability, as interpreted in light of the above 112(b) rejection), and a sealant (i.e. of 1) flows between a circumferential edge portion of the pilot hole of the plate-like metal member and the bolt at the time of being caulked when the sealant is applied to a bearing surface of the bolt (as seen in between Figs. 5 and 4. Additionally see paras. [0006], etc.), and water is stopped (as seen at Fig. 4 it is capable of the claimed intended use/capability, as interpreted in light of the above 112(b) rejection, as it forms a sealed interface after caulking).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and includes additional examples of similar caulk bolts (i.e. bolts with sealing features).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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, Kristina Fulton can be reached at (571) 272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS L FOSTER/Primary Examiner, Art Unit 3675
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