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 without traverse of Group I, claims 1-6 and 7-8, drawn to a tolerance compensation element and a screw connection, respectively, in the reply filed on August 24, 2026 is acknowledged.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the drawings filed February 15, 2024 are not proper black and white line drawings. This is frequently the result of drawings which are filed in a very dark grey (so dark that it appears black such as RGB value 37, 37, 37) instead of pure black (RGB value 0, 0, 0). While very dark grey may appear black, it causes artifacts and inconsistent line thickness. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 1 and 76. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 32'''' and 33'''' in Fig 4d; S2 in Fig 9. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because reference characters 22, 24, and 75 in Fig 5 and 22 and 24 in Fig 6 are unclear. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the features of “an only partly formed thread section” in claim 3, “wherein at least one drive feature for rotating the double threaded bolt is arranged adjacent to a first axial end and/or a second axial end of the double threaded bolt” in claim 6, and “a blind rivet nut…an insert nut or a welding nut…a thread bore” in claim 8 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract is objected to for use of legal phraseology, i.e. “means”.
The use of the term "torx", which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The disclosure is objected to because of the following informalities:
In Pg 14, lines 1-8, “dragging element 30’’, 30’’’ out of plastic material, an outer thread is provided at the respective lateral surface 32’, 32’’” is unclear
In Pg 15, line 2, “second component B” should read “first component A”
In Pg 16, line 21, “shoulder section 24” should read “shoulder section 28”
In Pg 16, line 24, “circumferential collar 22” should read “circumferential collar 27”
Appropriate correction is required.
Claim Objections
Claims 1 objected to because of the following informalities:
In claim 1, line 1, “An tolerance compensation element” should read “A tolerance compensation element”
In claim 1, line 2, “the distance” should read “a distance”
In claim 1, line 14, “a distance” should read “the distance”
In claim 3, line 3, “the thread pitch” should read “a thread pitch”
In claim 7, lines 12-13, “a female thread element” should read “the female thread element”
In claim 8, lines 3-4, “a component opening” should read “the component opening”
Appropriate correction is required.
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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
Means of a supporting shoulder in claim 1
Means of an inner thread in claim 1
Means of the tolerance compensation element in claims 1 and 7
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 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.
The term “an increased friction value” in claim 3, line 5 is a relative term which renders the claim indefinite. The term “an increased friction value” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, claim 3 will be read as “a friction value”.
Regarding claim 7, lines 6-13, claim recitations of “screwed into a thread opening of the second component...the first component is supported by the supporting shoulder...passes a fastening opening in the first component...the first component is held between the supporting shoulder” are unclear and renders the claim indefinite. For the purpose of examination, claim 7 will be read as “screwed into a thread opening of the first component...the second component is supported by the supporting shoulder...passes a fastening opening in the second component...the second component is held between the supporting shoulder”.
Regarding claim 8, lines 2 and 4-5, claim recitations of “second component” are unclear and renders the claim indefinite. For the purpose of examination, claim 8 will be read as “first component”.
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, 4, and 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Purwin (US20210018026A1), hereinafter "Purwin".
Regarding claim 1, Purwin teaches an tolerance compensation element (see Fig 1, Paragraph 0036, Examiner notes tolerance compensation apparatus as an tolerance compensation element) with which tolerances in the distance (see Figs 3A-3B) between a first component (Figs 3A-3B, component 34) and a second component (Figs 3A-3B, component 36) are compensable (see Figs 3A-3B, Abstract, Purwin indicates compensating tolerances between two components as with which tolerances in the distance between a first component and a second component are compensable), with the tolerance compensation element (see Fig 1) comprising:
a. a double threaded bolt (Fig 1, bolt 12) with a first axial thread section (Fig 1, section 24) and a second axial thread section (Fig 1, section 22) with opposite convolution direction (Paragraph 0038, Purwin indicates left-hand first threaded section 22 and a right-hand second threaded section 24), which are separated (see Fig 1) from one another (see Fig 1) by means of a supporting shoulder (Fig 1, collar 26) arranged between (see Fig 1) the first axial thread section (24) and the second axial thread section (22), and
b. adjacent (see Fig 1) to the first axial thread section (24), a retaining section (see Fig 1, Examiner notes a section of section 24 as a retaining section) with a dragging element (Fig 1, element 16) arranged (see Figs 3A-3B) thereon is provided (see Figs 3A-3B) in a direction (see Figs 3A-3B) facing away (see Figs 3A-3B) from the supporting shoulder (26), the retaining section (see Fig 1) being adapted to co-rotate (see Figs 3A-3B, Paragraphs 0045-0046) the tolerance compensation element (see Fig 1) via the dragging element (16) in a friction-fit (see Figs 3A-3B, Paragraphs 0045-0046) and/or form-fit manner (see Figs 3A-3B, Paragraphs 0045-0046) by means of an inner thread (Figs 3A-3B, thread 32) of a female thread element (Fig 1, nut 14) matching (see Figs 3A-3B, Paragraphs 0045-0046) the first axial thread section (24), so that a distance (see Figs 3A-3B) between the first component (36) and the second component (34) is automatically bridgeable (see Figs 3A-3B, Paragraphs 0045-0046) by means of the tolerance compensation element (see Fig 1).
Regarding claim 4, Purwin teaches the tolerance compensation element (see Fig 1) according to claim 1 and further teaches wherein the dragging element (16) is a plastic sleeve (Paragraph 0021, Purwin indicates a plastic material) which is plugged (see Figs 3A-3B) on the retaining section (see Fig 1) or is **molded** to the retaining section.
**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).
Regarding claim 6, Purwin teaches the tolerance compensation element (see Fig 1) according to claim 1 and further teaches wherein at least one drive feature (Fig 1, feature 28) for rotating (see Figs 3A-3B, Paragraph 0038) the double threaded bolt (12) is arranged adjacent (see Fig 1) to a first axial end (see Fig 1) and/or a second axial end of the double threaded bolt (12).
Regarding claim 7, as best understood, Purwin teaches a screw connection (see Figs 3A-3B) between a first component (Figs 3A-3B, component 34) and a second component (Figs 3A-3B, component 36) in which:
the first component (34) and the second component (36) are fastened (see Figs 3A-3B, Paragraphs 0045-0046) with each other (see Figs 3A-3B, Paragraphs 0045-0046) at a distance (see Figs 3A-3B) to one another (see Figs 3A-3B, Paragraphs 0045-0046) by means of the tolerance compensation element according (see Fig 1) to claim 1 (see claim 1), wherein:
the second axial thread section (22) is screwed (see Figs 3A-3B, Paragraphs 0045-0046) into a thread opening (Figs 3A-3B, thread 20) of the second component (34),
the first component (36) is supported (see Figs 3A-3B) by the supporting shoulder (26) of the tolerance compensation element (see Fig 1) facing away (see Figs 3A-3B) from the second axial thread section (22), the first axial thread section (24) passes (see Figs 3A-3B) a fastening opening (Figs 3A-3B, bore 42) in the first component (36), and
the first component (36) is held between (see Figs 3A-3B) the supporting shoulder (26) and a female thread element (14) that is screwed (see Figs 3A-3B, Paragraphs 0045-0046) onto the first axial thread section (24).
Regarding claim 8, as best understood, Purwin teaches the screw connection (see Figs 3A-3B) according to claim 7 and further teaches where the thread opening (20) in the second component (34) is formed by: a) a bayonet fastening with a thread bore arranged in a component opening, b) a blind rivet nut arranged in a component opening, c) an insert nut (see Figs 1 and 3A-3B, Examiner notes nut 14 as an insert nut) or a welding nut, or d) a thread bore in the second component, directly.
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(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Purwin, in view of Moore (US20090304443A1), hereinafter "Moore".
Regarding claim 2, Purwin teaches the tolerance compensation element (see Fig 1) according to claim 1 and further teaches wherein the dragging element (16) comprises metal or plastic material (Paragraph 0021, Purwin indicates a plastic material) but fails to teach wherein the dragging element is a threaded sleeve with an outer thread.
However, Purwin discloses the claimed invention except that the dragging element is a sleeve without an outer thread instead of a threaded sleeve with an outer thread. Moore shows that a threaded sleeve (Fig 2I, sleeve 29) with an outer thread (Fig 2I, threads 30) is an equivalent structure known in the art, i.e. sleeve 12 in Fig 2A as compared to sleeve 29 in Fig 2I. Therefore, because these two fastening structures were art-recognized before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute an adequately sized and shaped threaded sleeve with an outer thread for a sleeve without an outer thread. The rationale for supporting this conclusion of obviousness is to provide a sleeve based on application and use requirements, e.g. cost, manufacturing, assembly, etc.
Regarding claim 3, as best understood, modified Purwin teaches the tolerance compensation element (see Fig 1) according to claim 2 and further teaches wherein the threaded sleeve (Moore, 29) comprises one of the following features or a combination of these features: an offset of the thread pitch in comparison with the first axial thread section, an only partly formed thread section (Moore, see Fig 2I, Examiner notes a section of sleeve 29 having threads 30 as an only partly formed thread section) and an outer surface (Moore, see Fig 2I) of the threaded sleeve (29) having an increased friction value (see Fig 2I, Paragraph 0151, Examiner notes a material of sleeve 29 as having an increased friction value).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Purwin.
Regarding claim 5, Purwin teaches the tolerance compensation element (see Fig 1) according to claim 4 but fails to teach wherein the plastic sleeve (Paragraph 0021) of the dragging element (16) has a cylindrical shape, or a double-conical shape, or a conical shape.
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 plastic sleeve of the dragging element to a cylindrical shape, or a double-conical shape, or a conical shape as an obvious change in shape. MPEP 2144.04 (IV)(B). The rationale for supporting this conclusion of obviousness is to provide a desired shape based on application and use requirements, e.g. cost, manufacturing, performance, etc.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOCK WONG whose telephone number is (571)270-1349. The examiner can normally be reached Monday - Friday, 7:30am - 5:00pm (ET).
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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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/J.W./Examiner, Art Unit 3675 /KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675
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