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 .
Requirement for Unity of Invention
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-15, drawn to a breakstem blind rivet.
Group II, claim(s) 16-17, drawn to a method.
Group III, claim(s) 18, drawn to a method.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of the features of Claim 10 , this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Mauer (US4781500).
Claim 10
Mauer teaches a breakstem blind rivet (Figure 1) for electrically conductive riveting of a first component to a second component (Figure 2, Items 9 and 10), comprising: a sleeve (1) which is configured with a head (2) and a shank (1), and a tension mandrel (3) which is configured with a mandrel head (4), wherein the shank and/or the mandrel head has/have at least one scraping element (6, 7) which is arranged on an outer circumferential face thereof (Figure 1) and which is provided, when the sleeve is introduced into a rivet hole provided for this purpose, to scrape along the hole wall and to remove paint deposits and/or impurities. (Col. 3, Lines 57-68)
During a telephone conversation with Jeffrey D. Sanok (Reg 32169) on 07/09/2026 a provisional election was made to prosecute the invention of Group I (Claims 1-15). Affirmation of this election must be made by applicant in replying to this Office action. Claims 16-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Scaping element in Claim 10: (A) the claim uses the generic term “element”; (B) the element performs the function of scraping along the hole wall and to remove paint deposits and/or impurities.; (C) the claim does not include further structure to perform the claimed action. The limitation will be interpreted under 35 USC 112(f) as a rib, ring or curved member as claimed in Claims 11-13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 10-15 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.
Claim 10 recites “the hole wall”. There is insufficient antecedent basis for this limitation.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 10-12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mauer (US4781500A).
Claim 10
Mauer teaches a breakstem blind rivet (Figure 1) for electrically conductive riveting of a first component to a second component (Figure 2, Items 9 and 10), comprising: a sleeve (1) which is configured with a head (2) and a shank (1), and a tension mandrel (3) which is configured with a mandrel head (4), wherein the shank and/or the mandrel head has/have at least one scraping element (6, 7) which is arranged on an outer circumferential face thereof (Figure 1) and which is provided, when the sleeve is introduced into a rivet hole provided for this purpose, to scrape along the hole wall and to remove paint deposits and/or impurities. (Col. 3, Lines 57-68)
Claim 11
Mauer teaches the breakstem blind rivet according to claim 10, wherein the scraping element is a radially protruding rib. (7)
Claim 12
Mauer teaches the breakstem blind rivet according to claim 10, wherein the scraping element is a circumferential ring. (Figure 1 shows the scraping element portion (6, 7) is formed as a ring around the circumference of the shank (1).)
Claim 14
Mauer teaches the breakstem blind rivet according to claim 10, wherein the scraping element, which is in a form of a rib, a ring or a resilient curved member, is arranged in a front end region of the shank and extends in an axial direction over only a part-length of the shank. (Figure 1)
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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Mauer in view of Richards (US5908277A).
Claim 13
Mauer teaches the breakstem blind rivet according to claim 10.
Mauer does not disclose wherein the scraping element is a resilient curved member.
However, Richards (US5908277A) teaches the scraping element is a resilient curved member. (Figure 2A teaches a resilient curved member (22) that fits around the shank of the fastener and is used to remove excess material from within the bore (See Col. 3, Lines 37-44).)
One of ordinary skill would have been motivated to either combine (MPEP 2143(I)(A)) or substitute (MPEP 2143(I)(B)) the resilient curved member of Richards with the rivet of Mauer in order to significantly reduce the amount of material within the bore. (See Col. 3, Lines 43-44 and 47-48)
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Mauer in view of Smith (EP0825353A2).
Claim 15
Mauer teaches the breakstem blind rivet according to claim 10
Mauer does not disclose wherein a plurality of lower head ribs, which extend into the shank, are arranged in a lower side of the head.
However, Smith (EP0825353A2) teaches a plurality of lower head ribs, which extend into the shank, are arranged in a lower side of the head. (Figures 1-3 teach a rivet sleeve (1) having a head (6) and ribs (14,15) extending into the shank (2).)
One of ordinary skill would have been motivated to combine the tangs of Smith with the rivet of Mauer since the tangs (14, 15) remove paint from a region of the hole in a metal workpiece to ensure an electrical connection is made. (Smith Page 2, Col. 2, Lines 9-14)
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was effectively filed, to combine the known tangs of Smith with the rivet of Mauer because it has been held to be prima facie obvious to combine prior art structures according to known methods to yield predictable results. See MPEP 2143(I)(A).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found on the PTO-892 Form.
Document
Date
Description of Relevant Subject Matter
US5908277A
1998-05-08
Figures 2A-2F teaches a ring (22) on a fastener that is used to remove material from within the bore of the two workpieces to be joined.
US5560394
1996-10-01
“so that an outer periphery 49 of the disk 40 will engage against an interior wall or surface 51 of the tube 13 to scrape away any dirt, debris or other contamination 53 to provide a good clean sealing surface for engagement by the compressible member 24.”
US5207588A
1991-10-31
Figures 9-10 teach a grounding stud having barbed elements (44) that connects to the panel (48) to create an electrical connection. “In automotive applications, it is common for paints, rust preventative coatings, oils, and other non-electrically conductive (or poor electrically conductive) substances to be deposited (either intentionally or unintentionally) on surfaces of a panel 48 which is to have a grounding stud 30 affixed to it. Because of these materials which reside, or inevitably find their way between grounding stud 30 and panel 48”
EP0825353A2
1997-08-08
Figures 1-3 teach a rivet sleeve (1) having a head (6) and ribs (14,15) extending into the shank (2). The tangs (14, 15) remove paint from a region of the hole in a metal workpiece to ensure an electrical connection is made. (Page 2, Col. 2, Lines 9-14)
US20120210557A1
2010-08-20
Figure 2 teaches a blind rivet (200) having a sleeve (202); a mandrel (214); the sleeve having a scraping element (210).
US20050207862A1
2004-09-13
Figure 1 teaches a blind rivet (100); a sleeve (104); a pull mandrel (108); the mandrel having a scraping element (118/120) intended to remove material from the aperture (¶0039).
GB2557566A
2018-06-27
Figure 1 teaches a curved resilient member (25) that is positioned on the shank (Figure 3) and removes material from within the bore (¶0015)
US20050121189A1
2003-12-09
Figure 3 teaches a curved resilient wiper element (30) that is used to clean the interior bore (¶0014) where the wiper element is passing. The wiper element is made of sheet material (¶0013)
US20160221050A1
2016-01-28
Figure 1 teaches resilient elements (14b) that scrape the inside of a pipe to clean it.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael W Hotchkiss whose telephone number is (571)272-3854. The examiner can normally be reached Monday-Friday from 0800-1600.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL W HOTCHKISS/Primary Examiner, Art Unit 3726
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