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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3 September 2026 has been entered.
Drawings
The drawings were received on 3 September 2026. These drawings are acceptable.
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 do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “retrieval device” in claim 29.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. See paragraph [0022] of the originally filed Specification which teaches, “In the process, the counter element can be extracted from the main member by means of a retrieval device, for example by means of a rope, or a rod, which is in particular fastened to the counter element.”
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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.
Claims 15, 16, 19, 21, and 26 are 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.
The entirety of claim 15 is recited in claim 12.
Claim 16 recites, “the attachment element encloses the main member” which is not further limiting of the recitation “the attachment element enclosing the main member” of claim 12.
The entirety of claim 19 is recited in claim 12.
Claim 21 recites: “the counter element is elastically deformable so as to return to its original shape after compression” which is not further limiting of the recitations “the counter element being elastically deformable” and “the counter element returning to its original shape after the compression” of claim 12.
The entirety of claim 26 is recited in claim 12.
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
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.
Claims 12-24, 26-28, and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maeda (US 2019/0210089).
As to claim 12, Maeda teaches a method for producing a body element ([0109]: “The steel component 10 and the aluminum pipe 20 are clinched together in accordance with the following procedure.”) comprising: a) providing a hollow profile-shaped main member (aluminum pipe 20); b) disposing an attachment element (steel component 10) on the main member ([0111]: “as shown in FIG. 2A, the aluminum pipe 20 is fitted into the hole 15 in the steel component 10”), the attachment element enclosing the main member (“enclosing” is interpreted here as synonymous with “entirely surrounding.” When the pipe 20 is inserted into the hole 15 of steel component 10 as described at paragraph [0111] and shown in Figs 1A and 2A, the steel component ‘entirely surrounds’ the aluminum pipe 10. Thus the steel component encloses the pipe.); c) disposing a counter element (rubber piece 30) in the main member ([0111]: “the rubber piece 30 is inserted into the aluminum pipe 20”), the counter element being elastically deformable (rubber piece 30 is deformable; see [0112]: “the rubber piece 30 is caused to elastically deform (expand) outward from the axis L”); and, d) compressing the main member (see Figs 2A to 2B, and corresponding paragraphs [0111-0112]. The pipe 20, rubber piece 30 and steel component 10 are placed in a “pressing device 40.” The pressing device has a strike plate 42 and indenter 43. Paragraph [0111] teaches “The indenter 43 has a flat lower surface and uses the lower surface to press against the steel component 10”... “The strike plate 42 has a flat upper surface, and the steel component 10 and the rubber piece 30 are placed on the upper surface” and “the rubber piece 30 does not necessarily have to protrude from the upper end of the aluminum pipe 20, and may alternatively be flush with the upper end of the aluminum pipe 20 or be accommodated therein.” Paragraph [0112] teaches the pressing device applies a compressive force. In the situation in which the rubber piece 30 does not protrude above the top of pipe 20, the pressing device 40 applies compressive force to the pipe 20 by pressing indenter 43 and strike plate 42 together.) in order to fix the attachment element to the main member ([0110] describes the compressive pressing of device 40 results in the pipe 20 and component 10 being “clinched together.”), wherein the main member is compressed axially in relation to a longitudinal axis of the main member (as described above, the pressing device 40 compresses the pipe 20 along the axis of the pipe. See also Fig 2B.) such that a wall of the main member is forced to deform outward ([0112]: “Accordingly, the rubber piece 30 is caused to elastically deform (expand) outward from the axis L, thereby causing the aluminum pipe 20 to expand.”), the counter element blocking deformation of the main member toward an inside of the main member during the compression (this step is inherent to the configuration of Maeda. Maeda teaches the compression causes the rubber piece 30 to expand outward. This blocks deformation inward. See MPEP § 2112.02 which discusses inherent processes if the prior art device carries out the process during normal operation. In this case, the normal operation is the outward expansion of the rubber part, which blocks inward compression of the piece 30 even if Maeda doesn’t explicitly describe it as such.), and wherein the attachment element is fixed between a first radial cross-sectional enlargement (as shown in Fig 2B, the pipe 20 is radially expanded above the component 10) and a second radial cross-sectional enlargement of the main member (as shown in Fig 2B, the pipe 20 is radially expanded below the component 10) that are formed on both sides of the attachment element during the compression (‘above’ and ‘below’ constitute “both sides” of the steel component 10); and e) removing the counter element from the main member, the counter element returning to its original shape after the compression ([0113]: “After the clinching process, the rubber piece 30 from which the compressive force of the pressing device 40 has been removed restores its original shape with its own elastic force, as shown in FIG. 2D, so that the rubber piece 30 can be readily removed from the aluminum pipe 20.”).
As to claim 13, Maeda teaches the method according to claim 12, wherein the counter element (rubber piece 30) is disposed in the region of the attachment element (as shown in Figs 2A, 2B, the rubber piece 30 is disposed within aluminum pipe 20 at the same axial position as the steel component 10).
As to claim 14, Maeda teaches the method according to claim 12, wherein the attachment element (steel component 10) comes to fixedly engage with the main member (aluminum pipe 20) via radial cross-sectional enlargements of the latter that are formed during compression (as shown in Fig 2B, the pipe 20 is radially enlarged above the component 10 and below the component 10).
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As to claim 15, Maeda teaches the method according to claim 12, wherein the main member (pipe 20) is compressed axially in relation to a longitudinal axis of the main member (as described in [0111]-[0112], three levels of the rubber 30 in comparison to the top of the pipe 20 are discussed. The rubber 30 either a) protrudes from the top of the pipe, b) is equal to the top of the pipe, or c) is lower than (“accommodated within”) the pipe. When the strike plate 42 and indenter 43 are compressed toward each other in all three situations. In situations b) and c), the strike plate 43 and indenter 43 presses axially on pipe 20 along the longitudinal axis of the pipe 20. See also Maeda Figs 22A and 22B which shows that the pipe 20 is itself compressed by the strike plate 42 and indenter 43.).
As to claim 16, Maeda teaches the method according to claim 12, wherein the attachment element encloses the main member (“encloses” is interpreted here as synonymous with “entirely surrounds.” When the pipe 20 is inserted into the hole 15 of steel component 10 as described at paragraph [0111] and shown in Figs 1A and 2A, the steel component ‘entirely surrounds’ the aluminum pipe 10. Thus the steel component encloses the pipe.).
As to claim 17, Maeda teaches the method according to claim 12, wherein the main member is a tube (pipe 20 is a tube).
As to claim 18, Maeda teaches the method according to claim 12, wherein the counter element has a predetermined stiffness (the rubber 30, by virtue of being a physical object has a stiffness. By virtue of not collapsing during the compression, and rather by bulging the pipe 20 outward, the stiffness is predetermine to be able to withstand the deformation of the pipe 20).
As to claim 19, Maeda teaches the method according to claim 12, comprising: e) removing the counter element ([0113]: “After the clinching process, the rubber piece 30 from which the compressive force of the pressing device 40 has been removed restores its original shape with its own elastic force, as shown in FIG. 2D, so that the rubber piece 30 can be readily removed from the aluminum pipe 20.”).
As to claim 20, Maeda teaches a body element produced by the method according to claim 12 (this is a product-by-process claim. The combination of pipe 20 and component 10 shown in Fig 2B is produced by the process of claim 12.).
As to claim 21, Maeda teaches the body element according to claim 20, wherein the body element is a supporting tube (the pipe 20 as shown in Fig 2B is a tube. The term “supporting” here is interpreted as the tube supports some other feature. The pipe 20 supports the steel component 10).
As to claim 22, Maeda teaches a motor vehicle having at least one body element according to claim 20 ([0005]: “This joining method is suitable for copper and aluminum, which have high electric conductivity, and is put to practical use in some techniques for joining together automobile components.”).
As to claim 23, Maeda teaches the method according to claim 12, wherein the counter element is elastically deformable so as to return to its original shape after compression ([0113]: “After the clinching process, the rubber piece 30 from which the compressive force of the pressing device 40 has been removed restores its original shape with its own elastic force, as shown in FIG. 2D, so that the rubber piece 30 can be readily removed from the aluminum pipe 20.”).
As to claim 24, Maeda teaches the method according to claim 12, wherein the counter element comprises an elastomer (rubber is an elastomer).
As to claim 26, Maeda teaches the method according to claim 14, wherein the attachment element (steel component 10) is fixed between a first radial cross-sectional enlargement (as shown in Fig 2B, the pipe 20 is radially expanded above the component 10) and a second radial cross- sectional enlargement of the main member (as shown in Fig 2B, the pipe 20 is radially expanded below the component 10).
As to claim 27, Maeda teaches the method according to claim 12, wherein the main member and the attachment element are of dissimilar materials (aluminum pipe 20 and steel component 10 are of dissimilar metals).
As to claim 28, Maeda teaches the method according to claim 12, wherein the attachment element comprises fiber-reinforced plastics material (a ninth embodiment of Maeda teaches the clinching method can be used on a “resinous tube component 50” rather than a steel component 50. See Figs 22A-22B and paragraphs [0152]-[0154]).
As to claim 31, Maeda teaches the method according to claim 12, wherein the main member comprises steel or aluminum (aluminum pipe 20 is aluminum.).
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 25 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda (US 2019/0210089).
As to claim 25, Maeda teaches the method according to claim 13, but does not teach the counter element protrudes beyond the attachment element on both sides in a longitudinal direction of the main member.
Rather, Maeda teaches the rubber protrudes from the top of the pipe 20, but not the bottom of the pipe 20. Maeda teaches the protrusion of the rubber is useful for forming the upper edge 21 as shown in Fig 2C.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided for the rubber 30 to protrude from the bottom of a pipe 30 in addition to protruding from the top.
Such a person would have been motivated to do so in order to achieve the clinch of upper edge 21 (a complete fold-over) at both the top and bottom of the of the component 10, in order to form a stronger clinch.
See also MPEP § 2143 VI B which indicates the prima facie obviousness of the mere duplication of parts. In this case, providing for the configuration of the top of a pipe for both the top and bottom amounts to the mere duplication of process, for which there is legal precedent of prima facie obviousness.
As to claim 29, Maeda teaches the method according to claim 19, but does not teach the counter element is extracted from the main member via a retrieval device.
Maeda teaches at [0113]: “After the clinching process, the rubber piece 30 from which the compressive force of the pressing device 40 has been removed restores its original shape with its own elastic force, as shown in FIG. 2D, so that the rubber piece 30 can be readily removed from the aluminum pipe 20.” Maeda does not teach a specific “retrieval device.” However, in the mechanical arts, it was well known at the time the invention was effectively filed to provide for a device to perform a process which might have otherwise been performed by hand. There is legal precedent for the prima facie obviousness of automating a manual activity. See MPEP § 2144.04 III. In this case, the automation of the process of removing the rubber 30 would by definition involve a “device” which performs the step of “retrieval” and would therefore meet the broadest reasonable interpretation of “retrieval device.”
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Maeda as applied to claim 21 above, and further in view of DaCosta (WO 2011058270 A1).
As to claim 30, Maeda teaches the body element according to claim 21, but does not teach the supporting tube is a crossmember for a dashboard of a motor vehicle disposed between two A-pillars.
Rather, Maeda teaches the connection between pipe 20 and steel component 10 is useful in a vehicle, but for a component different than a supporting tube crossmember for a dashboard disposed between two A-pillars.
However, DaCosta teaches at page 1: “It generally comprise a dashboard crossbar intended to be arranged transversely between the front lateral uprights of the body of a motor vehicle, generally called “A-pillars”, and fastening elements of the dashboard crossmember on the uprights.” DaCosta includes a join between two materials at Fig 3, between second section 20 of tube 22 and the fastening device 8.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have replaced the join of Fig 3 of DaCosta with the joining method of Maeda. Such a person would have been motivated to do so with a reasonable expectation of success in order to achieve the benefits of Maeda such as improved joint strength as described by Maeda’s abstract.
Response to Arguments
Applicant's arguments filed 3 September 2026 have been fully considered but they are not persuasive.
As only Maeda and DaCosta are relied upon for rejection in the Action above, only Applicant’s arguments pertaining to Maeda and DaCosta will be addressed here.
Applicant’s arguments begin at page 10.
Applicant argues that Maeda’s steel component 10 does not “enclose[e] the main member.” Applicant argues that instead the aluminum pipe 20 is fitted through a hole 15 in the bottom wall 11 of the steel component 10.
Examiner is not persuaded. The broadest reasonable interpretation of “enclose” is to “entirely surround.” Since the pipe 20 is fit into hole 15, the pipe 20 is entirely surrounded by the steel component 10. Applicant also uses the term “encircle.” Again, since the steel component entirely surrounds the circular pipe 20, the pipe 20 is “encircled.” If Applicant has some other understanding of “enclose,” he is encouraged to put it on the record.
At pages 10-11 Applicant argues Maeda teaches a “single clinch of a pipe passing through a hole in a plate – not an enclosing attachment element captured between two radial cross-sectional enlargements formed on both sides.”
Examiner disagrees. There is a single enlargement at the top of component 10, and there is a single enlargement at the bottom of component 10. This meets the limitations of claim 12. Examiner has provided an annotated Figure above illustrating the radial enlargements above and below of the component 10. Applicant agrees that Maeda teaches the pipe is expanded radially, but then disagrees that the component 10 is fixed between radial expansions of the pipe 20 above and below the component 10. It is unclear whether Applicant believes the upper edge 21 is a radial expansion. Even if upper edge 21 is folded outward, it still constitutes a radial expansion as the radius of the pipe is expanded. This is also true of the pipe below the component 20.
Applicant’s third argument against Maeda is found on page 11. Applicant argues Maeda’s device 40 applies pressure to only the rubber piece 30 along axis L. Applicant admits that the rubber piece 30 expands outward causing pipe 20 to expand. Applicant argues the main member itself is not axially compressed so that its wall is formed to deform outward with the counter element merely blocking inward deformation.
First, the claims do not require the step of the counter element “merely blocking inward deformation.” Second, Maeda teaches several embodiments, and in the cited embodiment as well as others, the pipe 20 is itself compressed axially in addition to the rubber 30. See Maeda Figs 12B and 22B which shows that the rubber 30 is compressed axially while the pipe 20 is also compressed axially.
In the first embodiment, Maeda explicitly teaches one variant where the rubber 30 protrudes above the top of the pipe 20. See [0111]: “the rubber piece 30 partially protrudes from the upper end of the aluminum pipe 20. Thus, when the pressing device 40 begins pressing such that the strike plate 42 and the indenter 43 relatively approach each other, the rubber piece 30 is pressed first.” However, Maeda then teaches, “However, the rubber piece 30 does not necessarily have to protrude from the upper end of the aluminum pipe 20, and may alternatively be flush with the upper end of the aluminum pipe 20 or be accommodated therein.” Thus the flat strike plate 42 and indenter 43 of Fig 2A would necessarily press the pipe 20 axially.
Examiner also reminds Applicant that claim 25 requires the counter element to protrude from both sides of the main member. Claim 25 depends ultimately from claim 12 and thus claim 12 must be broad enough to accommodate the limitations of claim 25.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726
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