Detailed Action1
Election/Restriction
Claims 5 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups and species, there being no allowable generic or linking claim.
Applicant timely traversed the restriction requirement in the reply filed on July 10, 2026.
The traversal between the groups is on the ground that claims 5 and 18-20 depend from claim 1. This argument lacks merit because claims 1, 5, and 18 are treated as independent claims for purposes of restriction since they are directed to different statutory classes or different products. The restriction requirement between Groups I-III is still deemed proper and is therefore made FINAL.
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Drawings
Figures 3a-3f and 4 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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 1-4 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 applicant regards as the invention.
Regarding claim 1, it is unclear what the distinction is between the die cavity and the central bore. Claim 1 recites the die cavity includes the central bore, suggesting that the die cavity is the larger element wherein the central bore is one part of the die cavity. However, claim 1 also requires the central bore to extend through the entire die (e.g. “a central bore which extends along the central axis all the way through the mounting stem; and wherein the diameter of the central bore at the upper surface”). Since the claim requires the central bore to extend through the entire die it is unclear if die cavity is one part of the central bore or vice versa.
Claims 2-4 are rejected for requiring the limitations of claim 1.
Rejections under 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP-3424611-A1 (“Newfrey”).
Regarding claim 1, Newfrey teaches a rivet die (20) for a rivet setting tool configured to set a fully tubular or semi tubular self-piercing rivet into a workpiece, said rivet having an outer shank diameter D (figs. 1-10, ¶ [0031], wherein the Newfrey specification was submitted with the IDS filed on May 13, 2024), the rivet die comprising a main body (24/35) and a mounting stem (26/36) depending from the main body, wherein the main body is generally cylindrical about a central axis (figs. 1 & 3-4, ¶ [0033]); wherein the main body has an upper surface (31), wherein a die cavity is formed in the upper surface (fig. 3, ¶ [0041], wherein the cavity is the recess delimited by surface 33); wherein the die cavity includes a central bore (34) which extends along the central axis all the way through the mounting stem (fig. 3, ¶ [0040]).
Claim 1 also recites the diameter of the central bore at the upper surface is less than the outer shank diameter. Since the claim is only directed to a die, the die merely has to be capable of being used with a rivet having an outer shank diameter greater than the diameter of the central bore at the upper surface. Since the die is attached to the rivet tool (see fig. 3, ¶ [0037]), either before attaching the die to the rivet tool (or when removing the die from the rivet tool), the die is capable of being attached to another rivet tool that can set rivets having an outer shank diameter greater than the diameter of the central bore at the upper surface.
Regarding claim 2, Newfrey further teaches the upper surface of the main body includes an outer annular wall which surrounds the die cavity (fig. 3-4).
Claims 1-2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 5,361,473 (“Landes”).
Regarding claim 1, Landes teaches a rivet die (54/55/56) for a rivet setting tool configured to set a fully tubular or semi tubular self-piercing rivet into a workpiece, said rivet having an outer shank diameter D (figs. 5-8), the rivet die comprising a main body (54/55) and a mounting stem (56) depending from the main body, wherein the main body is generally cylindrical about a central axis (figs. 5, col. 1 lines 13-17, cols. 4-5 lines 66-14, col. 5 lines 35-61); wherein the main body has an upper surface (fig. 3, i.e. top of portion 54), wherein a die cavity is formed in the upper surface (fig. 5); wherein the die cavity includes a central bore which extends along the central axis all the way through the mounting stem (fig. 5).
Claim 1 also recites the diameter of the central bore at the upper surface is less than the outer shank diameter. Since the claim is only directed to a die, the die merely has to be capable of being used with a rivet having an outer shank diameter greater than the diameter of the central bore at the upper surface. Since the punch 80 is capable of being used with rivets that are bigger than the die cavity (see fig. 8 of Landes), the rivet machine and die of Landes is capable of setting rivets having an outer shank diameter greater than the diameter of the central bore at the upper surface.
Regarding claim 2, Landes further teaches the upper surface of the main body includes an outer annular wall which surrounds the die cavity (see fig. 5 of Landes).
Claim 4 recites a rivet setting tool configured to insert a fully tubular or semi tubular self-piercing rivet, having an outer shank diameter D, into a workpiece, the rivet setting tool including a rivet die according to claim 1 (see rejection to claim 1 above) located beneath a punch (80) reciprocally movable by an actuator (fig. 8, col. 1 lines 36-39, cols. 5-6 lines 48-11, wherein since the machine moves punch toward and away from the die, one of skill in the art will appreciate that an actuator of the machine causes this motion). Wherein “actuator” is interpreted as a device that causes a machine or component to operate.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Newfrey.
Claim 3 recites the die cavity includes a tapered region which adjoins the bore and which is radially outboard of the bore, the tapered region being defined by a surface which faces the axis. As illustrated in figures 3-5 of Newfrey, there is curved fillet between the cylindrical bore 34 and radially extending surface 32. The examiner is taking Official Notice that both fillets and tapers are well known transitions between orthogonal surfaces that can both reduce stress and better distribute loads with respect to a ninety-degree corner between the orthogonal surfaces.
In this case, Newfrey teaches orthogonal surfacess 32 & 34 connected via a rounded transition (i.e. fillet). Since tapers are a well-known substitute for fillets, and provide the same benefit(s) as a fillet, it would be obvious to substitute the round transistion for a conical/tapered transition. Given this modification, the tapered surface adjoins the bore 34 and faces the central axis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
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