DETAILED ACTION
This is a first action on the merits addressing the disclosure provided 22 November 2024. The following is a status of the claims at present:
Claims 1-21 are pending and examined.
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 .
Drawings
The drawings dated 22 November 2024 and replacement sheets 24 January 2025 are entered.
Information Disclosure Statement
The Information Disclosure Statement dated 01 April 2026, is entered.
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 6, 7 and 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.
Below is a reproduction of the claim(s) with the examiner’s comments in bold italics.
Claim 6: The stud of claim 1, wherein the upper portion has an outer diameter, and the distance that the plurality of connecting projections extend in the longitudinal direction is substantially the same as the outer diameter. The language of this claim is indefinite as written because as stated the limitation reads as though the connecting projections extend in a longitudinal direction in a distance substantially the same to the outer diameter; the outer diameter would be perpendicular to the longitudinal direction. As a result, it is unclear how the limitation can be met as written.
Claim 7: The stud of claim 1, wherein the upper portion has an outer diameter, and the distance that the plurality of connecting projections extend in the longitudinal direction is less than the outer diameter. The language of this claim is indefinite as written because as stated the relationship between the longitudinal direction and outer diameter are unclear. As a result, the metes and bounds of this relationship cannot be determined.
Claim 18: “a penetration distance” is indefinite as the metes and bounds of what constitutes this limitation cannot be determined.
Relevant Art
The following art is cited against the claims in this action:
Maloney (U.S. Patent 8,366,364 B2)
Park et al. (U.S. Patent 9,581,186 B2) – hereafter “Park”
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.
Claim(s) 1-10, 16, 18-19 and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maloney.
Below is a reproduction of the claims with the examiner’s comments in bold italics.
Claim 1: Maloney discloses A stud for a top mount assembly, comprising:
an upper portion (threaded portion 15; see also Col. 1, lines 20-24 where the external surface can be threaded in an alternate embodiment); and
a lower connecting portion (head portion as shown in Fig. 1a), the lower connecting portion including a plurality of connecting projections (flared teeth 25) that extend a distance in a longitudinal direction (as shown).
Claim 2: Maloney discloses The stud of claim 1, wherein the lower connecting portion includes an undercut (28).
Claim 3: Maloney discloses The stud of claim 2, wherein the undercut extends around a circumference of the lower connecting portion (as shown generally in the Figs.).
Claim 4: Maloney discloses The stud of claim 1, wherein the lower connecting portion is devoid of threads (as shown).
Claim 5: Maloney discloses The stud of claim 1, wherein the upper portion includes at least a partial thread (as shown).
Claim 6: Maloney discloses The stud of claim 1, wherein the upper portion has an outer diameter (outer surface 13), and the distance that the plurality of connecting projections extend in the longitudinal direction is substantially the same as the outer diameter (as shown and as best understood).
Claim 7: Maloney discloses The stud of claim 1, wherein the upper portion has an outer diameter (13, as shown), and the distance that the plurality of connecting projections extend in the longitudinal direction is less than the outer diameter (as best understood, the limitation appears to be met).
Claim 8: Maloney discloses The stud of claim 1, wherein the plurality of connecting projections comprise a plurality of knurled formations (as shown and disclosed).
Claim 9: Maloney discloses The stud of claim 1, wherein the plurality of connecting projections are provided in series in a ring-like configuration (as shown in Fig. 1a).
Claim 10: Maloney discloses The stud of claim 1, wherein the plurality of connecting projections include a sharpened or puncture-facilitating edge or end portion (see Col. 2, lines 25-33 which discloses this limitation).
Claim 13: Maloney discloses An assembly for a top mount, comprising:
a stud (11); and
a flange or component connection portion (33);
wherein the stud includes a lower connecting portion (portion as shown in Fig. 1a); the lower connecting portion includes a plurality of connecting projections (25) that extend a distance in a longitudinal direction (as shown); and a portion of the plurality of connecting projections extend into the flange or component connection portion and connect the stud to the flange or component connection portion (as shown in Fig. 3d).
Claim 15: Maloney discloses The assembly of claim 13, wherein the flange or component connection portion includes a deformation ring (Fig. 3d: formed by 21 and 25); the stud includes an axial undercut (28); and, in connection with the assembly of the stud and the flange or component connection portion, the deformation ring plastically deformed into the axial undercut (as shown the deformation ring portion of 33 is in undercut 28).
Claim 16: Maloney discloses The assembly of claim 13, wherein the flange or component connection portion is comprised of a first material (as disclosed), the stud is comprised of a second material that is different than the first material (as would be the case due to the relative hardness; see also Col. 3, lines 31-35 which notes of the “softer material of the sheet” which would be relative to the fastener), and the second material is harder than the first material (as disclosed in Maloney).
Claim 17: Maloney discloses The assembly of claim 13, wherein the plurality of connecting projections are provided in series in a ring-like configuration (as shown generally in the drawings).
Claim 18: Maloney discloses The assembly of claim 13, wherein the plurality of connecting projections extend a penetration distance into the flange or component connection portion (as shown and best understood).
Claim 19: Maloney discloses The assembly of claim 18, wherein the penetration distance is less than a diameter of the stud (as shown generally in the figures, the limitation appears to be met).
Claim 21: Maloney discloses A method of making an assembly for an air spring (as disclosed, only the assembly is claimed, not “an air spring”), comprising:
providing a stud (11) including a lower connecting portion (portion of Fig. 1a) having a plurality of connecting projections (25) that extend a distance in a longitudinal direction;
providing a flange or component connection portion (substrate 33); and
pressing or forcing the plurality of connecting projections of the lower connecting portion into a portion of the flange or component connection portion a penetrating distance to connect or secure the stud to the flange or component connection portion (as shown in Figs. 3a-3d).
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.
Claim(s) 11, 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maloney in view of Park.
Claims 11 and 12: Maloney discloses The stud of claim 1, except wherein the stud is comprised of metal (claim 11), or wherein the stud is comprised of steel (claim 12). Maloney discloses heat treating the fastener (Col. 1, lines 25-30) and discloses the substrate is metallic (Col. 1, lines 40-45). Park teaches a similar system embedded in a metallic substrate, where the fastener is made of steel (Col. 5, line 65 – Col. 6, line 4). It would have been obvious at the time of filing to a person having ordinary skill in the art to have the member in Maloney made of steel, as it is well known in the art that heat treatment of materials references steel, and steel fasteners such as the ones in Maloney are well-known in the art. A steel member would facilitate a properly functioning member when embedded in a metal substrate.
Claim 14: Maloney discloses The assembly of claim 13, except specifically wherein the flange or component connection portion is comprised of aluminum. Park teaches a similar system embedded in a metallic substrate, where the flange or component portion (1) is made of aluminum (Col. 5, line 65 – Col. 6, line 4). It would have been obvious at the time of filing to a person having ordinary skill in the art to have the portion aluminum, as it is well-known in the art that aluminum is used in such connections.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maloney.
Claim 20: The assembly of claim 18, except wherein the penetration distance is less than about 5 mm. It would have been obvious at the time the invention was made to a person having ordinary skill in the art as a matter of design choice to have the dimensions as claimed because applicant failed to state a criticality for the necessity of the limitation and the prior art of record is capable of being designed to meet the limitation as claimed. See MPEP 2144.04(IV)(A) citing Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. One having ordinary skill in the art would have the claimed penetration based on the size of the stud, the thickness of the flange and the desired penetration in order to secure the stud to the substrate.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
For similar systems, see the following:
Petrok et al. (U.S. Publication 2003/0059272 A1)
Hallock (U.S. Patent 4,004,483)
Barry (U.S. Patent 3,820,579)
Maloney (U.S. Publication 2017/0114814) - Figs. 6B and 6D
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
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/WILLIAM V GILBERT/Primary Examiner, Art Unit 3993
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