DETAILED ACTION
This is a first action on the merits addressing the disclosure provided 20 December 2024. The following is a status of the claims at present:
Claims 1-14 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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings dated 20 December 2024, are 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 6-13 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.
Claims 6-11: each of the claims depends from claim 3, which claims, “a number of first segments and/or…a number of second segments”. This provides three options: first segments, second segments, or both first and second segments. Each of claims 6-13 have language provided as though both the first and second segments are required, which is indefinite, as they have not been positively provided. Applicant is encouraged to amend the claims to clarify this issue. For examination purposes, the examiner interprets as though the application of art to claim 3 governs with interpreting the presence of first and/or second segments in claims 6-11.
Claims 12 and 13: each of the claims provides positive limitations directed to the “component”. “Component” has not been positively claimed. “Components” is provided in claim 1, however, the language directed to it is “for connecting components”; this is considered functional language and does not positively recite the components. Applicant is encouraged to amend the preamble to positively claim the combination of the device and connection components or amend the claims to ensure language directed to components is functional only.
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) 1-11 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Limatoc (U.S. Publication 2016/0040708 A1)..
Below is a reproduction of the claims with the examiner’s comments in bold italics.
Claim 1:Limatoc discloses A device for connecting components, comprising at least one base element (10) and a compensation element (bolt 22, 24) which is in threaded engagement (as shown), wherein the base element comprises a cavity (portion receiving bolt) having at least one thread turn (as shown) and at least one clamping element (lips 4 and relief cut 6).
Claim 2: Limatoc discloses The device according to claim 1, wherein the at least one clamping element is designed as an insulation displacement element (functional language fully capable of being met by the prior art as claimed..
Claim 3: Limatoc discloses The device according to claim 1, wherein the at least one thread turn comprises a number of first segments and/or the at least one clamping element comprises a number of second segments (as shown each of the lips is a segment resulting in a number of second segments; the “and/or” is interpreted as “or” and the first segments are not required).
Claim 4: Limatoc discloses The device according to claim 1, wherein the compensation element can be moved by a first assembly movement, comprising a rotary movement, relative to the base element from a starting position into a compensating position (it is a nut-and-bolt connection which meets the claimed relationship) and in the compensating position is in threaded engagement with the thread turn and/or in a frictional engagement and/or a clamping engagement with the clamping element of the base element in order to receive a second assembly movement, comprising a rotary movement, of a screw element in an associated cavity of the compensation element (as best understood, lips provide threaded, frictional and clamping engagement).
Claim 5: Limatoc discloses The device according to claim 4, wherein an external thread of the compensation element is in threaded engagement with the thread turn and in frictional engagement and/or in clamping engagement with the clamping element (as explained in claim 4), wherein the external thread forms and/or cuts into the clamping element (the examiner takes the position that due to the relationship between the lips and compensation element as disclosed in Limatoc, the thread would form in to the element under the rules governing mechanics of materials; see paragraph [0037]).
Claim 6: Limatoc discloses The device according to claim 3, wherein the first segments and the second segments are arranged distributed over an inner circumference of the base element (as only the second segments are required due to claim dependency, as shown the second segments are distributed over an inner circumference as shown in Figs. 4B and 4C).
Claim 7: Limatoc discloses The device according to claim 3, wherein a plurality of first segments are arranged spaced apart from one another around the inner circumference (as this claim depends from claim 3, the language with respect to the first segments is considered optional and the first segments are not required) and the second segments are arranged spaced apart from one another around the inner circumference (as shown the second segments are arranged as claimed).
Claim 8: Limatoc discloses The device according to claim 3, wherein at least the first segments are arranged axially offset from one another (as this claim depends from claim 3, the language with respect to the first segments is considered optional and the first segments are not required).
Claim 9: Limatoc discloses The device according to claim 3, wherein a plurality of second segments are arranged in the axial direction below or above the first segments and/or in the circumferential direction laterally to the first segments (the second segments are in the circumferential direction as shown; as this claim depends from claim 3, the language with respect to the first segments is considered optional and the first segments are not required).
Claim 10: Limatoc discloses The device according to claim 3, wherein at least a first segment and a second segment are integrally formed (the second segments are integrally formed as best understood; as this claim depends from claim 3, the language with respect to the first segments is considered optional and the first segments are not required).
Claim 11: Limatoc discloses The device according to claim 3, wherein the second segment differs at least in its shape and/or dimensions from the first segment (as this claim depends from claim 3, the language with respect to the first segments is considered optional and the first segments are not required).
Claim 13: Limatoc discloses The device according to claim 1, wherein the compensation element has at least one drive contour (head 24) by means of which the compensation element can be moved from the base element into the compensating position before a screw element is introduced and before the components to be connected are fixed (only the device is claimed, and the language directed to “before a screw element…” and “before the components…” is considered functional and not a required feature, as the prior art is capable of meeting the claimed limitation).
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) 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Limatoc.
Below is a substantial reproduction of the claims addressing all limitations with the examiner’s comments in bold italics.
Claim 12: Limatoc discloses The device according to claim 1, except wherein the base element and one of the components are integrally formed. Limatoc discloses a list of uses for the device that is virtually non-limiting (see e.g., paragraphs [0040] – [0068]). As a result, the examiner takes Official Notice that having components, such as plates, be integrally formed with the device, such as having the nut welded on or to a plate. Such features are well known in the art for providing a stationary connection for the attachment of devices.
Claim 14: Limatoc discloses An arrangement for compensating tolerances between two components to be interconnected, comprising at least one device according to claim 1 (as disclosed). Limatoc does not specifically disclose two components, however, Limatoc discloses a list of uses for the device that is virtually non-limiting (see e.g., paragraphs [0040] – [0068]); the examiner takes the position that any of these uses would necessarily incorporate components. It would have been obvious at the time of filing to a person having ordinary skill in the art as a matter of duplication of parts to have this limitation because duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669 (CCPA 1960). See MPEP §2144.04. One having ordinary skill in the art would have as many components as necessary based on the use and configuration of the system used with the device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For similar systems, see the following:
Ohashi et al. (U.S. Publication 2024/0218893 A1)
Mosch et al. (U.S. Patent 11,668,337 B2)
Metten et al. (U.S. Publication 2015/0139749 A1)
Werner (U.S. Publication 2006/0193714 A1)
Ball (U.S. Publication 2006/0093459 A1)
Ballantyne (U.S. Patent 6,357,953 B1)
Harding (U.S. Patent 2,569,989)
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.
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, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
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