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 .
Election/Restrictions
Applicant’s election without traverse of Invention I in the reply filed on 12/12/2025 is acknowledged.
As noted by applicant, the restriction requirement contained an error in not recognizing claims 21-25 to be included with Invention II. Accordingly claims 15-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b).
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 1-4, 6-7, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Colman (US 2,367929). In considering the embodiment shown in Figs. 1 and 3, Colman discloses a locknut for engaging an externally threaded member comprising: a nut body (a) defining a thread with a second end defining a pocket (at c) and an elastic spring member (b) received in the pocket. As seen in Fig. 3, the spring member comprises: a generally rectangular shaped cross-section; first and second leg members with respective first and second end members; joined by an apex member; and the first and second leg members including arcuate sections (e) for engaging the thread crests of the externally threaded member and where the bulged shape of arcuate section also forms a beveled radius in the lead in direction of the externally threaded member.
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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.
Claims 1-2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Clayson (US 2,381,206) in view of Campau (US 8,425,168). In considering the embodiment shown in Figs. 1-4, Clayson discloses a locknut for engaging an externally threaded member comprising: a nut body (1) defining a thread (2) with a second end defining a pocket (at 3) and an elastic spring member (b) received in the pocket. The spring member comprises: first and second leg members (9 and 10) with respective first and second end members (12 and 13) joined by an apex member (11). The pocket includes first and second projections (between the slots 16-17 formed in the ring 19; Fig. 6) which hold the spring member oriented within the pocket (Figs. 4 and 5). Clayson does not disclose the spring member with a rectangular shaped cross-section but instead discloses a circular cross-section. Campau also discloses a locknut with an elastic spring member but having a rectangular shaped cross-section (44; Figs 1-3) where Campau teaches the rectangular shaped cross-section as an alternative to a spring member with a circular cross-section (344; Figs. 7-9). Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to replace the circular cross-section of the elastic spring member of Clayson with a rectangular cross-section because Campau teaches them as alternatives in the same field of endeavor for yielding the same results.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Colman or Clayson in view of Campau as applied to claim 1 above, and further in view of Sundh (US 1,830,919). Neither Colman nor modified Clayson discloses a shield. Sundh discloses a locknut with a shield (b or f) between a pocket and an end of the locknut as an alternative to no shield (Fig. 8). Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to provide the locknut of both Colman and modified Clayson with a shield as disclosed in Sundh because Sundh teaches it as alternative for providing a water tight enclosure.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Clayson in view of Campau as applied to claim 1 above, and further in view of Sundh (US 1,830,919). Modified Clayson does not disclose the elastic spring member having a beveled lead in portion with a radiused edge. Sundh discloses a locknut with an elastic spring member similar to modified Clayson but where the spring member includes a beveled lead in formed as a radiused edge (C4) for providing a lead in for the externally threaded member (the paragraph bridging the columns on page 2). Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to provide the locknut of modified Clayson with a radiused edge as disclosed in Sundh for the same purpose of providing a lead in for the externally threaded member facilitating its installation onto the locknut.
Double Patenting
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,025,172 in view of Campau. The prior patent’s claims are broader than the instant application’s where every element included in the prior patent has been included in the claims of the instant application except for the spring member having a generally rectangular shaped cross-section. Campau also discloses a locknut with an elastic spring member but having a rectangular shaped cross-section (44; Figs 1-3). Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to make the spring member of the prior claimed patent with a rectangular shaped cross-section as disclosed in Campau because Campau teaches the rectangular shape as one of many alternatives in the same field of endeavor for yielding the same results.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Allowable Subject Matter
Claims 8-10 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims along with a Terminal Disclaimer to obviate the double patenting.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ortlieb (US 3,572,197), Gallusser (US 4,478,474) and Reyburn (US 2,445,125) teach other examples of spring members with a generally rectangular shaped cross-sections. The other references cited are of general interest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FLEMMING SAETHER whose telephone number is (571)272-7071. The examiner can normally be reached M-F 8:30 - 7:00 eastern.
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/FLEMMING SAETHER/Primary Examiner, Art Unit 3675