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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Independent claims 1 and 11 each recite that the cap includes “tool bearing surface”. However, other that the Summary section of the specification and the claims, the phrase “tool bearing surface” does not appear in the specification. Thus, the specification fails to provide proper antecedent basis for “tool bearing surface”. It appears that the “wrenching surface 22” mentioned in the specification is the claimed “tool bearing surface”.
Claim Objections
Claim 16 is objected to because of the following informalities: “wherein, wherein” at line 1 should be replaced with “wherein”. Appropriate correction is required.
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 1 – 18 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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claims 1 and 11 each recite in part “a standard tool bearing surface”. However, it is not clear, nor does the specification explain, what a “standard” tool bearing surface is.
Claim 5 recites the limitation "the cap and flange" at line 1. There is insufficient antecedent basis for the flange in the claim.
Claims 2 – 4, 6 - 10 and 12 – 18 are rejected by virtue of depending from rejected claims 1 and 11.
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.
Claim 5 is 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. As stated in 35 USC 112(d), “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”. Clam 5 depends from claim 7, which is not a previously set forth claim. Accordingly, claim 5 is an improper dependent claim. 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 § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 9 and 11 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over Southwood et al. (PCT Patent Application Publication No. WO 2021/127490 A1) in view of Bielecki et al. (U.S. Patent Application Publication No. US 2019/0219093 A1).
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Regarding claim 1, as best understood in view of the 112b issues noted above, Southwood discloses a security fastener assembly (400) comprising a cap (412) shaped with a standard tool bearing surface (424) (Figures 28 – 31; paragraphs [0107] and [0108]); a fastener body (414) having a threaded portion (448) for securing the security fastener assembly (400) to a corresponding threaded segment on a vehicle (Figures 28 and 29; Abstract; paragraph [0109]); a stem (432) opposite the threaded portion (448) and defining a distal end (434), wherein the cap (412) conceals the stem (432) (Figure 29; paragraph [0108]), and a keyed security drive feature (450) formed between the threaded portion (448) and the stem (432) and not concealed by the cap (412) for engagement by a corresponding security tool (Figures 28 – 30; paragraphs [0112] – [0115]), wherein rotating the cap (412) does not rotate the threaded portion (448) of the fastener body (414), wherein the fastener body (414) is removable from the corresponding threaded segment with the keyed security drive feature (450) (paragraph [0115]).
Southwood discloses the claimed invention except for the cap having a lower retention portion, the stem being sloped, and an undercut formed below the sloped stem and having a radius less than a base of the sloped stem, wherein the lower retention portion of the cap is deformed inward into the undercut with a cold-working process to maintain the cap on the fastener body.
Bielecki is directed to a security fastener. Bielecki specifically discloses a cap (1120) having a lower retention portion (1145), and an undercut (1140) formed below the stem (1119) and having a radius less than a base of the stem (1119), wherein the lower retention portion (1145) of the cap (1120) is deformed inward into the undercut (1140) with a cold-working process to maintain the cap (1120) on the fastener body (1116) (Figures 72 – 76; paragraphs [0165] – [0168]).
A person having ordinary skill in the art before the effective filing date would have been motivated to modify Southwood to include the cap having a lower retention portion and an undercut formed below the stem and having a radius less than a base of the stem, wherein the lower retention portion of the cap is deformed inward into the undercut with a cold-working process to maintain the cap on the fastener body as taught by Bielecki, as the references and the claimed invention are directed to security fasteners. As disclosed by Bielecki, it is well known for a security fastener to include the cap having a lower retention portion and an undercut formed below the stem and having a radius less than a base of the stem, wherein the lower retention portion of the cap is deformed inward into the undercut with a cold-working process to maintain the cap on the fastener body. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Southwood to include the cap having a lower retention portion and an undercut formed below the stem and having a radius less than a base of the stem, wherein the lower retention portion of the cap is deformed inward into the undercut with a cold-working process to maintain the cap on the fastener body as taught by Bielecki, as such a modification would more securely attach the cap to the fastener body.
Additionally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the stem to be sloped, as such a modification is merely a change in shape of the stem. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant). Modifying the stem of Southwood such that it is sloped would have no effect on the security fastener, and it would function just as well for its intended purpose. Additionally, the subject specification does not disclose any criticality or significance to the stem being sloped.
Regarding claim 2, Bielecki further discloses wherein the lower retention portion (1145) is swagged to deform the lower retention portion (1145) into the undercut (1140) continuously along at least a portion of a circumference of the undercut (1140) (Figure 74; paragraph [0167]).
Regarding claim 3, Bielecki further discloses wherein the cold-working processes forms a plurality of retention locations that deform the lower retention portion (1145) into the undercut (1140) at each of the plurality of retention locations (the plurality of retention locations are locations along the circumference of notch 1136).
Regarding claim 4, Bielecki further discloses wherein the cold-working process applies an inward radial force to deform the lower retention portion (1145) into the undercut (1140) such that an inner surface of the cap (1120) faces an outer surface of the undercut (1140) (Figure 76; paragraph [0168]).
Regarding claim 5, Southwood in view of Bielecki discloses the claimed invention except for wherein the undercut comprises an angled groove having an asymmetric cross-section. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the undercut to comprise an angled groove having an asymmetric cross-section, as such a modification is merely a change in shape of the stem. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant). Modifying the undercut of Bielecki such that the undercut comprises an angled groove having an asymmetric cross-section would have no effect on the security fastener, and it would function just as well for its intended purpose. Additionally, the subject specification does not disclose any criticality or significance to the undercut comprising an angled groove having an asymmetric cross-section.
Regarding claim 6, as best understood in view of the 112b issues noted above, Southwood further discloses the corresponding security tool having a cavity to receive the cap (412) and flange (454) of the fastener body (414) and having a corresponding keyed security element to engage the keyed security drive feature (450) on the fastener body (414) (Figures 28 – 30; paragraph [0115]).
Regarding claim 7, Southwood further discloses wherein the fastener body (414) comprises a bolt having an external threaded portion (448) (Figure 28; paragraph [0109]).
Regarding claim 8, Southwood further discloses wherein the fastener body (414) comprises a nut with an opening having an internal threaded portion (paragraph [0109]).
Regarding claim 9, upon modifying the stem of Southwood such that it is sloped (see the above rejection of claim 1), the sloped surface stem would comprise at least a portion of a conical surface.
Regarding claim 11, as best understood in view of the 112b issues noted above, Southwood discloses a method of forming a fastener comprising providing a fastener body (414) having a threaded portion (448) (Figures 28 and 29; Abstract; paragraph [0109]) and a security protrusion (432) defining a distal end (434) opposite the threaded portion (448) (Figure 29; paragraph [0108]), and wherein a keyed security drive feature (450) is formed between the threaded portion (448) and the security protrusion (432) for engagement by a corresponding security drive tool (Figures 28 – 30; paragraphs [0112] – [0115]); providing a cap (412) having a standard tool bearing surface (424); placing the cap (412) on the fastener body (414) to cover the security protrusion (432) (Figures 28 – 31; paragraphs [0107] and [0108]).
Southwood discloses the claimed invention except for the cap having a lower retention portion, wherein an undercut is formed below the security protrusion, and cold-working the cap to deform the lower retention portion into the undercut thereby retaining the cap on the fastener body.
Bielecki is directed to a security fastener. Bielecki specifically discloses a cap (1120) having a lower retention portion (1145), an undercut (1140) formed below the security protrusion (1119), and cold-working the cap (1120) to deform the lower retention portion (1145) into the undercut (1140) thereby retaining the cap (1120) on the fastener body (1116) (Figures 72 – 76; paragraphs [0165] – [0168]).
A person having ordinary skill in the art before the effective filing date would have been motivated to modify Southwood to include the cap having a lower retention portion, wherein an undercut is formed below the security protrusion, and cold-working the cap to deform the lower retention portion into the undercut thereby retaining the cap on the fastener body as taught by Bielecki, as the references and the claimed invention are directed to security fasteners. As disclosed by Bielecki, it is well known for a security fastener to include the cap having a lower retention portion, wherein an undercut is formed below the security protrusion, and cold-working the cap to deform the lower retention portion into the undercut thereby retaining the cap on the fastener body. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Southwood to include the cap having a lower retention portion, wherein an undercut is formed below the security protrusion, and cold-working the cap to deform the lower retention portion into the undercut thereby retaining the cap on the fastener body as taught by Bielecki, as such a modification would more securely attach the cap to the fastener body.
Regarding claim 12, Bielecki further discloses wherein the cold-working process comprises applying an inward radial force with a tool to deform the lower retention portion (1145) into the undercut (1140) such that an inner surface of the cap (1120) faces an outer surface of the undercut (1140) (Figure 76; paragraph [0168]).
Regarding claim 13, Bielecki further discloses wherein the cold-working comprises swagging the lower retention portion (1145) into the undercut (1140) continuously along at least a portion of a circumference of the undercut (1140) (Figure 74; paragraph [0167]).
Regarding claim 14, the limitation of wherein the cold-working comprises crimping the lower retention portion into the undercut at each of the to form a plurality of retention locations is a product by process claim. The determination of patentability of a product by process claim 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. The only difference between claim 14 and claim 11 is wherein the cold-working comprises crimping the lower retention portion into the undercut at each of the to form a plurality of retention locations. The cap is obvious over Southwood in view of Bielecki as noted above with regard to the rejection of claim 11. Thus, Claim 14 is rejected for the reasons set forth with regard to claim 11.
Regarding claim 15, Southwood in view of Bielecki discloses the claimed invention except for wherein the security protrusion comprises a sloped surface. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the security protrusion to comprise a sloped surface, as such a modification is merely a change in shape of the stem. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant). Modifying the security protrusion of Southwood such that it comprises a sloped surface would have no effect on the security fastener, and it would function just as well for its intended purpose. Additionally, the subject specification does not disclose any criticality or significance to the security protrusion comprising a sloped surface.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Southwood in view of Bielecki as applied to claim 7 above, and further in view of Liu et al. (U.S. Patent Application Publication No. US 2017/0363136 A1).
Regarding claim 10, Southwood in view of Bielecki discloses the claimed invention except for a washer secured to the fastener body.
Liu is directed to a cap and a fastener. Liu specifically discloses a washer (116) secured to the fastener body (118) (Figure 1; paragraphs [0020] – [0022]).
A person having ordinary skill in the art before the effective filing date would have been motivated to modify Southwood to include a washer secured to the fastener body as taught by Liu, as the references and the claimed invention are directed to fasteners. As disclosed by Liu, it is well known for a washer to be secured to the fastener body. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Southwood to include a washer secured to the fastener body as taught by Liu, as such a modification would distribute load evenly along the fastener body.
Claim 16 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Southwood in view of Bielecki as applied to claim 11 above, and further in view of Weis et al. (European Patent No. EP 3087280 B1).
Regarding claim 16, Southwood in view of Bielecki discloses the claimed invention except for wherein the security protrusion comprises a circular cylinder with a circular inner opening.
Weis is directed to a fastener. Weis specifically discloses wherein the security protrusion (818) comprises a circular cylinder with a circular inner opening (Figures 37 – 39).
A person having ordinary skill in the art before the effective filing date would have been motivated to modify Southwood wherein the security protrusion comprises a circular cylinder with a circular inner opening as taught by Weis, as the references and the claimed invention are directed to fasteners. As disclosed by Weis, it is well known for a security protrusion to comprise a circular cylinder with a circular inner opening. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Southwood wherein the security protrusion comprises a circular cylinder with a circular inner opening as taught by Weis, as such a modification is merely the substitution of one known security protrusion for another known security protrusion, and the results of a such a modification would have been predictable, namely, providing a head of the fastener which is to be covered by a cap.
Regarding claim 17, Weis further discloses wherein the circular cylinder has a plurality of flat portions (33a-33f) spaced apart along an outer circumference by circular cylinder portions (28a-28f), wherein an inner surface of the cap (20) contacts the security protrusion only along the circular cylinder portions (28a-28f) (Figures 11 - 14).
Regarding claim 18, Weis further discloses wherein the circular cylinder has a thin wall (24) having a thickness less than a radial depth of the undercut (Figures 11 – 14).
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/JASON D SHANSKE/Supervisory Patent Examiner, Art Unit 3614
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