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 2 and 4-5 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 2 recites the limitation “the screwless portion”. This limitation lacks antecedent basis and is indefinite as it is unclear if Applicant intended to newly claim this limitation here, if Applicant believes this limitation is already inherent to the claim, or if this claim was intended to depend on a claim that does recite such. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “a screwless portion”.
Claims 4-5 are indefinite at least by virtue of depending on indefinite claim 2 (see above).
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 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 bolt (see bolt comprising 10, 11, 15, etc. as seen in Fig. 4, etc.) for mounting to a plate-like metal member (West discloses such an intended use since as seen in Fig. 4 it is capable of such as 12 can be a metal plate-like member), the bolt comprising a water stop mounting structure (i.e. at least at due to element 1 when installed), 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) for insertion into a pilot hole of the plate-like metal member and for being caulked (as seen in Figs. 4, etc. it is capable of the claimed intended use/capability), and a bearing surface (the underside of head 10) of a head portion (10) of the bolt (as seen in Figs. 4, etc.) has a sealant (i.e. of 1) thereon (as seen in Fig. 4, etc.) that is configured to flow between a circumferential edge portion of the pilot hole of the plate-like metal member and the screwless portion (11) of the bolt at a time of being caulked (as seen in between Figs. 5 and 4. Additionally see paras. [0006], etc.) such that water intrusion between the bolt and the plate-like metal member can be stopped (as seen at Fig. 4 it is capable of the claimed intended use/capability as it forms a sealed interface after caulking. Additionally see paras. [0006], etc.), and wherein the screwless portion is thicker than an effective diameter of a male screw (as seen in Figs. 4, etc.).
Claim Rejections - 35 USC § 102/103
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 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rom (US 5,513,933).
With regard to claim 1, Rom discloses a bolt (10) for mounting to a plate-like metal member (as seen in Figs. 6, etc. it is capable of such an intended use limitation), the bolt comprising a water-stop mounting structure (i.e. the structure of the bolt which when installed (as seen in Figs. 8, etc.) is capable of stopping some amount of water), wherein the bolt is a caulking bolt (Examiner notes the term “caulking” has the BRI of “sealing”, which the bolt of Rom is capable of depending on how it is used as seen in Figs. 6-8, etc. at least to some degree) for insertion into a pilot hole of the plate-like metal member and for being caulked (as seen in Figs. 1, 6-8, etc. it is capable of such an intended use), the caulking bolt has a screwless portion (the cylindrical portion between the threads and 20 as seen in Figs. 1, etc.) between an upper end of a male screw (16) formed on a bolt shaft portion (14) and a bearing surface (i.e. of 22) of a head portion (12) of the bolt (as seen in Figs. 1, etc.), the screwless portion being thicker than an effective diameter of the male screw (as seen in Fig. 1 as the effective diameter is where the width of the threads would equal the width of the gaps and thus approximately half-way through the total height of the threads) and smaller than the outer diameter of the male screw (as clearly seen in Fig. 1), and the bolt is configured to plastically deform metal of a circumferential edge portion of the pilot hole of the plate-like metal member toward the screwless portion at a time of being caulked to be brought into close contact with the screwless portion (the bolt of Rom is capable of such depending on what it is installed with and the method of installation (e.g. a differently shaped/thicker plate-like metal member and/or a plate-like member made of a softer metal would allow the metal to extrude sufficiently for such an intended use and thus the bolt of Rom has this capability)), and water is stopped (as seen in Fig. 7-9 it is capable of the claimed intended use/capability as it forms a caulked interface).
If Applicant disagrees with Examiner’s interpretation that Rom discloses the screwless portion being thicker than an effective diameter of the male screw, the following grounds of rejection would apply: Rom discloses at least that the screwless portion is at least approximately thicker than an effective diameter of the male screw, but fails to explicitly state that the screwless portion is thicker than an effective diameter of the male screw. It would have been considered obvious to one having ordinary skill in the art at the time the invention was filed to have modified the device of Rom such that the screwless portion is thicker than an effective diameter of the male screw as a change in the shape of a prior art device is a design consideration within the level of ordinary skill in the art, as a change in the proportion of the prior art is generally recognized as an obvious matter of design choice/routine skill in the art, and/or since applicant has not disclosed that these ranges solve any particular problem or purpose and it appears other similar ranges would work equally well. Furthermore, routine experimentation would lead one of ordinary skill in the art to these ranges.. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP §21440.05 and Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."), etc. Such a modification would provide the expected result of providing essentially the same desired secure fastening while providing less wobble of the bolt in the hole during installation.
With regard to claim 3, Rom discloses that a surface of the screwless portion is substantially parallel to a surface of a shaft portion of the bolt (as seen in Fig. 1).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4-5, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over West et al. (US 2010/0221064).
With regard to claim 4, West discloses the screwless portion is approximately equal to the outer diameter of the male screw (see Fig. 4, etc.) but is silent to and thus fails to explicitly disclose that the screwless portion is smaller than an outer diameter of the male screw.
It would have been considered obvious to one having ordinary skill in the art at the time the invention was filed to have modified the device of West such that the screwless portion is smaller than an outer diameter of the male screw as a change in the shape of a prior art device is a design consideration within the level of ordinary skill in the art, as a change in the proportion of the prior art is generally recognized as an obvious matter of design choice/routine skill in the art, and/or since applicant has not disclosed that these ranges solve any particular problem or purpose and it appears other similar ranges would work equally well. Furthermore, routine experimentation would lead one of ordinary skill in the art to these ranges. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP §21440.05 and Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."), etc. Such a modification would provide the expected result of providing essentially the same desired secure and sealed (i.e. caulked) fastening while allowing sufficient room for the sealant to extrude.
With regard to claim 5, West discloses that a surface (i.e. the outer surface of 11) of the screwless portion is substantially parallel to a surface of a shaft portion of the bolt (as seen in Figs. 4, etc.).
Response to Arguments
Applicants’ arguments with respect to claims 1-5 have been considered but are moot in view of the new/amended ground(s) of rejection. In so much as they apply to the new/amended grounds of rejection above, Applicant’s arguments filed 28 July 2026 have been fully considered but are not persuasive as the above new/amended grounds of rejection reject all the new/argued limitations (see above).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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