Detailed Action1
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 8, 2026 has been entered.
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.
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.
Claims 1-5, 7-10, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2022/0196045 (“Starbuck”) in view of USPGPub No. 2021/0054864 (“Simpson”) and USPGPub No. 2015/0337885(“Whitlock”).
Regarding claim 1, Starbuck discloses a multi-piece fastener comprising: a fastening collar (12) comprising an inner collar surface defining a collar cavity (34) (fig. 1, para. [0054]), an outer collar surface (36), a coating (20) on the outer collar surface (fig. 1, paras. [0048], [0050] & [0056]), the coating comprising a film-forming resin (paras. [0074]-[0077] & [0088], i.e. non-polar resin that cures into a coating/film), and a lubrication layer intermediate the coating and the outer collar surface (para. [0100]); and a pin (14) configured to be at least partially received by the collar cavity (figs. 1-2, paras. [0048]-[0054]), the pin comprising a first pin end, a second pin end, and a shank extending intermediate the first pin end and the second pin end (fig. 1A); wherein the fastening collar is configured to be deformed onto the shank by forcibly contacting the outer collar surface of the fastening collar (paras. [0064]-[0065]), and wherein forcibly contacting the outer collar surface at least partially removes the coating on the outer collar surface and indicates installation of the multi-piece fastener (figs. 2A-2B, paras. [0050] & [0066]-[0068]).
Starbuck fails to explicitly teach the coating comprising a metal pigment. However, this would have been obvious in view of Simpson.
Simpson is also directed to a multi-piece fastener having different colored parts (paras. [0006]-[0007]). Simpson teaches at least a portion of collar being red by painting the collar with an aluminum pigment phenolic resin, or another method (para. [0051]).
In this case, Starbuck is directed to forming a red color on the outer surface of a fastener by using dyes or pigments such as iron oxide. One of skill in the art appreciates that various additives/pigments can be used to form a red color. Simpson teaches a known substitute that also uses a resin, i.e. comprising an aluminum pigment. Thus, it would be obvious to substitute one known additive for producing a red color (i.e. a dye or iron oxide) for another (i.e. aluminum pigment).
Starbuck et al. fail to explicitly teach the coating does not increase a coefficient of friction of the outer collar surface of the fastening collar. However, this would have been obvious in view of Whitlock.
Whitlock is also directed to providing a dry coating on a fastener. Whitlock teaches that it is known for coatings comprising phenolic resin and aluminum pigments to be lubricious (para. [0024]). Whitlock teaches that lubricant additives can be added to the coating to make it lubricious, such as PTFE (¶ [0024]-[0025]).Whitlock also teaches to roughen the outer surface of the fastener that the coating is applied to (para. [0024]).
In this case, each of Starbuck et al. and Whitlock teach applying a coating to the outer surface of a fastener, wherein the coating comprises resin and aluminum pigment. While Starbuck teaches applying an anticorrosion zinc plating and a lubricating layer on the outer surface of the fastener, Starbuck is silent as to whether the red coating is lubricious. Since the purpose of a lubricating layer is to reduce friction, this suggests that Starbuck intends for the coating to reduce friction of the outer surface of the collar (which one of skill in the art appreciates can allow the swage tool of Starbuck to move along the collar with less force). While Starbuck fails to explicitly teach what the coefficient of friction is for the indicator material, Whitlock teaches that it is known for coatings comprising resins and aluminum pigment to be lubricious. Whitlock also teaches to roughen the outer surface of the fastener—wherein one of skill in the art appreciates that this allows coatings to better adhere to the outer surface due to the roughened surface creating peaks and valleys that increase surface area and allow for mechanical interlocking. Thus, in order to keep the outer layers of the coating lubricious (which can make it easier to install the fastener of Starbuck), and to better adhere the anti-corrosion zinc plating to the collar, it would be obvious and predictable to roughen the outer surface of the collar, and form the red coating of Starbuck et al. so that it is relatively lubricious compared to the outer surface of the collar (e.g. the resin comprising PTFE, PTFE additives, etc.).
Given the above modification, one of skill in the art will reasonably infer that the relatively lubricious red coating does not increase the coefficient of friction of the roughened outer surface.
Claim 2 recites the metal pigment comprises aluminum, an aluminum alloy, or a combination thereof. See the rejection to claim 1, above, wherein an aluminum pigment is used.
Claim 3 recites the coating comprises no greater than 0.01% by weight titanium dioxide based on total weight of the coating. Starbuck et al. does not teach using titanium dioxide when forming the coating. Thus, one of skill in the art would reasonably infer that the coating comprises less than 0.01% by weight titanium dioxide (this range includes 0%).
Claim 4 recites the coating comprises no greater than 0.01% by weight metal oxide based on total weight of the coating. Starbuck et al. does not teach using metal oxide when forming the coating (it teaches using a resin, aluminum pigment, and diluent such as alcohol). Thus, one of skill in the art would reasonably infer that the coating comprises less than 0.01% by weight metal oxide (this range includes 0%).
Regarding claim 5, Starbuck et al. fail to explicitly teach the coating further comprises at least one of a fluorescent dye and a fluorescent pigment. However, this would be obvious in view of Starbuck. Starbuck teaches that the red color can be formed from eosin (para. [0076]). Merely combining equivalents known for the same purpose is prima facie obvious (see MPEP 2144.06). In this case, Starbuck et al. teaches that the red color can be formed from multiple elements (including eosin and aluminum pigment). Thus, it is prima facie obvious to form the red color on the fastener of Starbuck by using a composition including both eosin and the aluminum pigment.
Regarding claim 7, Starbuck further teaches a corrosion resistant layer intermediate the coating and the outer collar surface (para. [0100]).
Regarding claim 8, Starbuck further teaches the fastening collar further comprises a flange (32) and the coating is not present on the flange (fig. 1C, para. [0062]).
Regarding claim 9, Starbuck further teaches the coating is in the shape of a strip (fig. 1C, para. [0062]).
Claim 10 recites the coating has an opacity of at least 25%. While Starbuck et al. fail to explicitly teach the claimed opacity, this is prima facie obvious. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (see MPEP 2144.05(II)(A)). In this case, Starbuck et al. teach a red coating comprising a resin and aluminum pigment. It would be routine for one of skill in the art to create coating with different opacities by using different resins and/or using different percentages of the resin and aluminum pigment. In addition, there would be a reasonable expectation of success of formulating a coating with an opacity of at least 25% because it is known for resins to be transparent or opaque. Thus, it is prima facie obvious to create a red coating with resin and aluminum pigment so that the opacity is at least 25%.
Regarding claim 12, Starbuck further teaches the shank comprises at least one of a generally smooth region, an annular shoulder, a groove, and a threaded region (fig. 1A, para. [0053]).
Claim 13 recites the multi-piece fastener is configured to be installed in a bore in a structure and wherein the structure is at least one of an aerospace part or component, an automotive part or component, a transportation part or component, and a building and construction part or component. Starbuck teaches the fastener being formed out of carbon steel and configured to secure metal plates (paras. [0061] & [0064]). Thus, the fastener is at least capable of being installed within a bore of aerospace components, automotive components, transportation components, or building components.
Regarding claim 14, Starbuck fails to explicitly teach a diameter of the shank is in a range of 0.06 inch to 4 inches. However, merely scaling up/down a prior art device or changing the size of a prior art device is not patentable. See MPEP 2144.04(IV)(A). In this case, the fastener of Starbuck is capable of being a variety of different sizes without performing differently. Further, it is common for fastener shanks to be within .06 inches to 4 inches. Thus, this claim does not patentably distinguish over the prior art.
Regarding claim 15, Starbuck further teaches the multi-piece fastener comprises at least one of a metal and a metal alloy (para. [0061]).
Claims 1-5, 7-10, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Starbuck in view of Simpson, Whitlock, and FacFox Docs, Black Coating Comparison: E-Coating vs. Powder Coating vs. Black oxide vs. Anodic oxidation vs. Black Zinc Plating, Last Modified December 19, 2019, available at https://facfox.com/docs/kb/black-coating-comparison-e-coating-vs-powder-coating-vs-black-oxide-vs-anodic-oxidation-vs-black-zinc-plating (“FacFox”).
Regarding claim 1, Starbuck in view of Simpson teach the same limitations as detailed in the previous rejection of claim 1, above. Starbuck et al. fail to explicitly teach the coating does not increase a coefficient of friction of the outer collar surface of the fastening collar. However, this would have been obvious in view of Whitlock.
Whitlock is also directed to providing a dry coating on a fastener. Whitlock teaches that it is known for coatings comprising phenolic resin and aluminum pigments to be lubricious (para. [0024]). Whitlock teaches that lubricant additives can be added to the coating to make it lubricious, such as PTFE (¶ [0024]-[0025]).
In this case, each of the Starbuck et al. and Whitlock teach applying a coating to the outer surface of a fastener, wherein the coating comprises resin and aluminum pigment. While Starbuck teaches applying a lubricating coat on the outer surface of the fastener, Starbuck is silent as to whether the red coating is lubricious. Since the purpose of a lubricating layer is to reduce friction, this suggests that Starbuck intends for the coating to reduce friction of the outer surface of the collar (which one of skill in the art appreciates can allow the swage tool of Starbuck to move along the collar with less force). While Starbuck fails to explicitly teach what the coefficient of friction is for the indicator material, Whitlock teaches that it is known for coatings comprising resins and aluminum pigment to be lubricious. Thus, in order to keep a lubricous coat on the outer surface of the collar (which can make it easier to install the fastener of Starbuck), it would be obvious and predictable to form the red coating of Starbuck et al. so that it is relatively lubricious compared to the outer surface of the collar (e.g. the resin comprising PTFE, PTFE additives, etc.).
Claims 2-5, 7-10, and 12-15 are rejected for the same reasons detailed in the previous rejections to these claims, above.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Starbuck et al. as applied to the second rejection of claim 1 above, and further in view of FacFox Docs, Black Coating Comparison: E-Coating vs. Powder Coating vs. Black oxide vs. Anodic oxidation vs. Black Zinc Plating, Last Modified December 19, 2019, available at https://facfox.com/docs/kb/black-coating-comparison-e-coating-vs-powder-coating-vs-black-oxide-vs-anodic-oxidation-vs-black-zinc-plating (“FacFox”).
Regarding claim 6, Starbuck et al. fail to explicitly teach a CIELAB L* value of at least a region of the outer collar surface of the fastening collar is no greater than 10. However, this would have been obvious in view of FacFox.
FacFox is directed to anti-corrosion coatings (pages 4-5, wherein all references to FacFox refer to the document submitted herewith). FacFox teaches that there are a few main industrial coating technologies used to apply rust and corrosion proof coatings on metal parts (page 5). One of the main technologies is black zinc plating, which has a deep black appearance and offers numerous advantages such as superior corrosion protection, cosmetic purposes, and minimizing part visibility (pages 9-10 & 12).
In this case, Starbuck teaches a fastening collar that has an anticorrosion layer formed via zinc plating (see ¶ [0100] of Starbuck). FacFox teaches a well-known zinc plating method that provides superior anticorrosion properties along with other benefits, i.e. black zinc plating. One of skill in the art appreciates that the deep black appearance of black zinc plating can have a CIELAB L* value of less than 10. Thus, in order to provide a zinc plating that also can minimize fastener visibility or camouflage the fastener, it would be obvious to modify the zinc plating of Starbuck so that it is a deep black zinc plating.
Given the above modification, since the zinc plating has a deep black appearance, one of skill in the art will reasonably infer the CIELAB L* value is less than 10. In addition, the black zinc plating is interpreted as the outer surface of the fastening collar.
Response to Arguments
Applicant's arguments filed January 8, 2026 (“the remarks”) have been fully considered. Each of applicant’s remarks is set forth, followed by examiner’s response.
On page 7 of the remarks, Applicant argues that it would not be obvious to roughen the outer surface of the collar because (1) a swaging tool cannot predictably swage a roughened surface due to increased friction, and, (2) increasing adherence between the indicator material and the outer surface of the fastener would prevent removal of the indicator material when swaged—“Starbuck includes a lubricating layer between the indicator material and the collar surface to ensure removal of the indicator material during swaging.”
With respect to the above arguments, the examiner notes that two separate rejections are made to claim 1, wherein the first rejection roughens the outer surface of the collar and the second rejection does not. The below response will address the arguments with respect to the first rejection.
With respect to (1), as detailed in the first rejection, a zinc plating is provided on the roughened outer surface of the collar. Thus, the swaging tool moves over and contacts the zinc plating—not the outer surface of the collar. This zinc plating is not roughened in the rejection. Further, even if the zinc plating was roughened, a swaging tool can press and deform material whether it is relatively smooth or relatively rough. Since the swaging tool of Starbuck is applied with enough force to deform the carbon steel collar, one of skill in the art would reasonably expect the swaging process to also deform a relatively rough surface.
With respect to (2), as stated by Applicant, the indicator material is not applied directly to the outer surface of the collar—but applied to intermediary layers comprising a lubricating layer and a zinc plating (see ¶ [0100] of Starbuck). Thus, roughening the outer surface of the collar will not better adhere the indicator material. While the zinc plating will be better adhered, this layer is not meant to be removed since it provides anti-corrosion properties to the collar (see ¶ [0100] of Starbuck). Further, the lubricating layer (i.e. wax as taught by ¶ [0100] of Starbuck), is a relatively malleable material that can be relatively easily striped off the zinc plating. Even if some wax is leftover, this will not affect the performance of the invention since Starbuck teaches that the wax does not have to be completely removed (see ¶ [0100] of Starbuck).
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.
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/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.”