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 § 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.
Claims 1-3 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsu US20060067803 (hereinafter, Hsu).
Regarding claim 1, Hsu discloses a fastening system (see Figs. 1-3) for mounting at a substrate, the fastening system comprising a sleeve (10, see Fig. 2) and an inner element (20, see Fig. 2), wherein the sleeve comprises a holding portion 11, a spreading zone 17 as well as a drill opening (see opening at the end 150) at one of the two ends of the sleeve and a tool opening 14 at the other end, wherein the spreading zone is arranged at least partially between the holding portion and the drill opening (see Fig. 2), and
wherein the inner element 20 is arranged at least partially within the sleeve and is movable relative to the sleeve (see Figs. 6-11), and wherein the inner element comprises a drilling portion 30 and a spreading portion (shank of the element 20),
wherein the drilling portion comprises at least one cutting element (see tip 30 showing cutting portion in Figs. 1-2) and the drilling portion projects at least partially out of the drill opening of the sleeve (see figures showing drilling portion is bigger than the drill opening of the sleeve) and the spreading portion of the inner element is adapted to spread the spreading zone of the sleeve upon a movement of the spreading portion in the sleeve and relative to the sleeve in the direction from the tool opening to the drill opening (see Figs. 6-10 showing the expansion of the spreading zone caused by the shank of the inner element due to driving of inner elements in downward direction).
Regarding claim 2, Hsu discloses the fastening system according to claim 1, wherein the spreading zone of the sleeve 10 comprises a first outer diameter in the unspread state (see outer diameter of the sleeve) and the drilling portion 30 of the inner element comprises a maximum second outer diameter (see diameter of the tip portion 30) and wherein the maximum second outer diameter and the first outer diameter are of equal size or the maximum second outer diameter is larger than the first outer diameter (see figures showing the drill tip having larger diameter than the diameter of the sleeve).
Regarding claim 3, Hsu discloses the fastening system according to claim 1, wherein the spreading portion of the inner element is conically shaped (see portion below the head of the insert 20 having the conically shaped shank, which is part of spreading portion during installation of the insert 20).
Regarding claim 7, Hsu discloses the fastening system according claim 1, wherein at least a portion of the holding portion of the sleeve is formed as one of:
a circumferential projection (see circumferentially shaped lip 11), a holding plate for holding insulating material, or a conical portion.
Regarding claim 8, Hsu discloses the fastening system according to claim 1, wherein the inner element comprises a receptacle 22 for a setting tool.
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.
Claims 4-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hsu.
Regarding claim 4, Hsu teaches the fastening system according to claim 1, but fails to expressly teach wherein the inner element is formed at least partially from a metal.
However, it is the examiner’s position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified insert of Hsu to be formed of a metal, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. It is also a common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, and potential aesthetics, etc., for the application, intended use, and design considerations for that material. MPEP 2144.07.
Regarding claim 5, Hsu teaches the fastening system according to claim 4, but fails to expressly teach wherein the drilling portion of the inner element is formed at least partially from a metal.
It the examiner’s position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified drilling portion of the inner element to be formed of a metal, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. It is also a common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, and potential aesthetics, etc., for the application, intended use, and design considerations for that material. MPEP 2144.07.
Regarding claim 6, Hsu teaches the fastening system according to claim 1, but fails to expressly teach wherein the sleeve is formed at least partially from a metal or a plastic.
It is the examiner’s position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the sleeve to be formed of at least partially from a metal or a plastic, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. It is also a common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, and potential aesthetics, etc., for the application, intended use, and design considerations for that material. MPEP 2144.07.
Regarding claim 9, A method for mounting a fastening system at a substrate, the fastening system being a fastening system according to claim 1,
wherein the method comprises the steps of: driving the inner element into the substrate and simultaneously carrying the sleeve along with the movement of the inner element until the holding portion of the sleeve opposes a force to further carry the sleeve along; and further driving the inner element into the substrate, whereby a relative movement is generated between the inner element and the sleeve, and simultaneously spreading the spreading zone of the sleeve with the spreading portion of the inner element by the relative movement.
Regarding method step claim 9¸ Examiner notes that the instant method step limitations are considered obvious over the prior art in view of rejections of the structural limitations previously set forth. Although the prior art does not explicitly set forth the method steps as claimed when the method steps essentially set forth the provision and use of an apparatus, as intended by its structure, then such method steps are considered obvious when the structure of the apparatus has been demonstrated as obvious or anticipated by the prior art (please refer to Figs. 8-11).
Response to Arguments
Applicant’s arguments, filed 12/18/2025, with respect to claims 1-9 have been fully considered and are persuasive. The rejection of previous Office Action has been withdrawn.
However, upon further consideration, rejection based on newly found prior art has been set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIL K MAGAR whose telephone number is (571)272-8180. The examiner can normally be reached M-F 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Mills can be reached at (571) 272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIL K. MAGAR/Examiner, Art Unit 3675
/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675