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 .
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.
Claims 1 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 19 of U.S. Patent No. 11,738,384. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the limitations of claims 1 – 20 of the instant application are anticipated by claims 1- 19 of ‘384.
Regarding claim 1 of the instant application, claim 8 of ‘384 teaches a setting tool for setting by crimping a blind fastener including a head and a shank partially defining an axial bore including an internal thread (claim 1, preamble), and the setting tool comprising: a tool housing (claim 1, first paragraph of the body); a screw tool including an external thread that is rotationally and translationally movable within the tool housing along and around a tool axis between a retracted position and an extended position (claim 1, second paragraph of the body); a first electric motor including a first drive shaft (claim 1, third paragraph of the body); a second electric motor with a second drive shaft (claim 1, fourth paragraph of the body); and a clamp movable relative to the tool axis and operable for clamping the shank of the blind fastener for engaging with the screw tool (claim 8).
Regarding claim 13 of the instant application, claim 11 further teaches that the clamp includes a first jaw and a second jaw radially opposed to each other and radially movable from an open position to a closed position (claim 9), wherein the first jaw and the second jaw each comprise a catching surface including a first segment and a second segment, the first segment being angled relative to the second segment, wherein the first segment is flat and the second segment includes a bulge adapted to create a dissymmetrical profile operable for orienting the blind fastener within the clamp (claim 11), wherein the first jaw and the second jaw are configured such that as they move to the closed position, the blind fastener is aligned with the flat first segment of both the first jaw and the second jaw for clamping (claim 8).
Regarding claim 14 of the instant application, claim 10 further teaches a retaining lever operable for holding the blind fastener axially retained in the clamp before clamping (claim 10).
Claims 1 – 12 and 14 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 9 of U.S. Patent No. 12,121,954 in view of Young (U.S. Patent Number 5,031,489).
Regarding claim 1 of the instant application, claim 1 of ‘954 teaches a setting tool for setting by crimping a blind fastener including a head and a shank partially defining an axial bore including an internal thread (claim 1, preamble), and the setting tool comprising: a tool housing (claim 1, fourth paragraph of the body); a screw tool including an external thread that is rotationally and translationally movable within the tool housing along and around a tool axis between a retracted position and an extended position (claim 1, fifth paragraph of the body); a first electric motor including a first drive shaft (claim 1, sixth paragraph of the body); and a second electric motor with a second drive shaft (claim 1, seventh paragraph of the body). However, claim 1 of ‘954 does not teach the setting tool further comprising a clamp. Young teaches a setting tool for setting a fastener including a head and a shank (abstract), and the setting tool comprising: a tool housing (figures 1 and 2, element 32 being the ‘tool housing’; column 3, lines 24 – 28); and a screw tool that is rotationally and translationally movable within the tool housing along and around a tool axis between a retracted position and an extended position (figure 2, element 28 being the ‘screw tool’; column 3, lines 6 – 12). Young further teaches a clamp movable relative to the tool axis and operable for clamping the shank of the blind fastener for engaging with the screw tool (figures 2 and 3, elements 36 being the ‘clamp’; column 3, line 49 – column 4, line 11). It would have been obvious to one skilled in the art to provide the setting tool of claim 1 of ‘954 with the clamp of Young, because one skilled in the art would have appreciated that the clamp of Young provides the benefit of further securing the fastener to the setting tool of claim 1 of ‘954.
Regarding claim 14 of the instant application, claim 3 of ‘954 further teaches a retaining lever operable for holding the blind fastener axially retained in the clamp before clamping (claim 3).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 – 3 and 8 - 12 are rejected under 35 U.S.C. 103 as being unpatentable over Honsel (U.S. Patent Application Publication Number 2016/0114383, cited in IDS) in view of Young (U.S. Patent Number 5,031,489).
As to claim 1, Honsel teaches a setting tool for setting by crimping a blind fastener including a head and a shank partially defining an axial bore including an internal thread (abstract), and the setting tool comprises: a tool housing (figure 1, elements 31 and 27 being the ‘tool housing’; paragraphs 31 and 33); a screw tool including an external thread that is rotationally and translationally movable within the tool housing along and around a tool axis between a retracted position and an extended position (figure 1, elements 10 and 15 being the ‘screw tool’ and element 37 being the ‘external thread’; paragraphs 31 – 37); a first electric motor including a first drive shaft (figure 1, element 12 being the ‘first electric motor’; paragraph 35); a second electric motor with a second drive shaft (figure 1, element 11 being the ‘second electric motor’; paragraph 32).
However, Honsel does not teach the setting tool further comprising a clamp. Young teaches a setting tool for setting a fastener including a head and a shank (abstract), and the setting tool comprising: a tool housing (figures 1 and 2, element 32 being the ‘tool housing’; column 3, lines 24 – 28); and a screw tool that is rotationally and translationally movable within the tool housing along and around a tool axis between a retracted position and an extended position (figure 2, element 28 being the ‘screw tool’; column 3, lines 6 – 12). Young further teaches a clamp movable relative to the tool axis and operable for clamping the shank of the blind fastener for engaging with the screw tool (figures 2 and 3, elements 36 being the ‘clamp,’ see below; column 3, line 49 – column 4, line 11).
PNG
media_image1.png
376
1118
media_image1.png
Greyscale
It would have been obvious to one skilled in the art to provide the setting tool of Honsel with the clamp of Young, because one skilled in the art would have appreciated that the clamp of Young would provide the benefit of further securing the fastener to the setting tool of Honsel.
As to claim 2, Young teaches that the clamp includes a plurality of jaws (figure 3, elements 37 being the ‘plurality of jaws’; column 3, lines 58 – 61).
As to claim 3, Young teaches that plurality of jaws includes a first jaw and a second jaw radially opposed to each other and radially movable from an open position to a closed position (figure 3, elements 37; column 3, line 49 – column 4, line 11).
As to claim 8, Honsel teaches that the setting tool includes an anvil sleeve coaxial with the screw tool and movable axially relative to the tool housing (figure 1, element 18 being the ‘anvil sleeve’; paragraph 36).
As to claim 9, Honsel teaches that the anvil sleeve is adapted to contact the clamp during crimping of the blind fastener (figure 1, element 18).
As to claim 10, Young teaches that the clamp is operable for holding the anvil sleeve against axial movement while the screw tool is moving axially toward the retracted position for crimping the blind fastener (figure 3, elements 37; column 3, line 49 – column 4, line 11).
As to claim 11, the setting tool of Honsel is configured such that spinning of the first drive shaft and the second drive shaft at different speeds drives an axial movement and a rotationally movement of the screw tool, such that the external thread on the screw tool can engage or disengage the internal thread of the blind fastener (figure 1, elements 12, 11, 15, and 10; paragraphs 31 – 37).
As to claim 12, the setting tool of Honsel is configured such that spinning of the first drive shaft while not spinning the second drive shaft drives an axial movement without rotation of the screw tool along the tool axis from the extended position and toward the retracted position for crimping the blind fastener (figure 1, elements 12, 11, 15, and 10; paragraphs 31 – 37).
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Honsel in view of Young as applied to claim 3 above, and further in view of Albright (U.S. Patent Number 5,733,089).
As to claim 4, Young does not teach the shape of the two jaws. Albright teaches a setting tool for setting by crimping a fastener (abstract), the setting tool comprising: a clamp movable relative to a tool axis and operatable for clamping the fastener for engaging with a screw tool (figure 15, element 216 being the clamp; column 8, lines 51 – 58), wherein the clamp includes a plurality of jaws (figure 15, elements 242a and 242b being the ‘plurality of jaws’; column 8, lines 51 – 58), wherein the plurality of jaws includes a pair of two jaws radially opposed to each and radially movable from an open position to a closed position (figure 15, elements 242a and 242b; column 5, lines 51 – 58). Albright further teaches that each of the two jaws comprises a catching surface including a first segment and a second segment, the first segment being angled relative to the second segment, and the first segment is flat, and the second segment includes a bulge adapted to create a dissymmetrical profile operable to orienting the blind fastener within the clamp (figure 15, inner surface of elements 242a and 242b being the ‘catching surface’ and element 266a being the ‘second segment’, see below).
PNG
media_image2.png
418
309
media_image2.png
Greyscale
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Honsel in view of Young and Albright.
As to claim 13, the discussion of claims 1, 3, and 4 are incorporated herein. Albright further teaches that the first jaw and the second jaw are configured such that as they move to the closed position, the blind fastener is aligned with the flat first segment of both the first jaw and the second jaw for clamping (figure 14, elements 242a and 242b). Examiner notes that this can be found because Albright teaches the, when the first and second jaws are in the closed position, the flat first segments of the first and second jaws are aligned with an axis or longitudinal centerline of the blind fastener (figure 14, elements 242a and 242b).
Response to Arguments
Applicant's arguments filed June 3, 2025 have been fully considered but they are not persuasive.
Applicant first argues, on page 10, that Applicant has filed a terminal disclaimer in response to the double patenting rejection set forth in the previous Office Action. Examiner notes that Applicant has not filed the terminal disclaimer.
Applicant further argues, on pages 11 – 12, that the clamp of Young is not configured for ‘clamping a shank of a blind fastener’ as recited in claim 1. Examiner disagrees. Young expressly illustrates the clamp clamping the shank of a blind fastener (figures 2 and 3, elements 36 being the ‘clamp,’ see below; column 3, line 49 – column 4, line 11).
PNG
media_image1.png
376
1118
media_image1.png
Greyscale
Applicant finally argues, on page 12, that the prior art does not teach the limitations of claim 13. Examiner disagrees and refer to the rejection of claim 13 over Honsel in view of Young and Albright above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726