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 .
This document is responsive to applicant’s claims filed 9/10/2024.
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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.
Claim 1 is 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. The claim requires one or more slots, wherein the slots are nonintersecting. As best understood, the limitation means that when there are multiple slots, the slots do not intersect, however, since the claim only requires one slot, it is not clear with respect to what the slot is nonintersecting.
In view of the rejections above under 35 USC § 112, the claims referred to in any and all rejections below are rejected as best understood. Any claims that depend upon claims rejected above are also considered rejected via dependency.
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 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 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 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over NPL Kwik-Nuts (captured July 2015) http://www.wclco.com/plastic-components/threaded-nylon-fasteners/nuts/kwik-nuts/.
Regarding claim 1, Kwik-Nuts discloses:
A universal hardware nut comprising: a nut body (see upper right figure), wherein the nut body comprises a pliable material (6.6 polyamide thermoplastic); one or more slots (see upper right figure), wherein the slots are nonintersecting (see upper right figure); wherein an end of each of the one or more slots intersects with a hole (see upper right figure); further wherein a dimension of the hole substantially corresponds to a diameter size of a fastener (see upper right figure); wherein the nut body elastically deforms to correspond to a type, diameter, or thread pitch of the fastener (“the Kwik-Nut nut is simply pushed on and then turned approximately 180 degrees to tighten”); wherein the nut body comprises a thickness which correlates to a predetermined strength of the fastener (the Kwik-Nut is designed to fit a corresponding fastener); and further wherein a first face of the nut body is hexagonal in shape (see upper right figure).
Kwik-Nut does not disclose a second hexagonal face. It would have been obvious to one of ordinary skill in the art at the time of filing to make both faces hexagonal yielding the predictable result of requiring less material for manufacturing in instances where a washer or other bearing surface is already present in the assembly. Furthermore, it would have been an obvious matter of design choice to select the shape of the second face to be hexagonal because there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23 (CCPA 1956).
Furthermore, it would have been an obvious matter of design choice to select the claimed shape, because applicant has not disclosed that having such a shape itself solves any stated problem, the claimed shape does not provide any unexpected result, and it appears that the invention would perform equally well where the second face is of another shape, such as a round. Overall, applicant has not established any criticality of the claimed shape, and thus selecting the claimed shape would be an obvious matter of design choice.
Double Patenting
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,085,106. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claim 1 are found within claims 1-19 of the parent patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is found in the Notice of Reference Cited (PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD G DAVIS whose telephone number is (571)270-5005. The examiner can normally be reached Mon-Thurs 8am-6:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Collins can be reached on 571-272-6886. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD G DAVIS/Primary Examiner, Art Unit 3644
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