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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 recites “the fastening portions (11) of the fastening member (1) are respectively on opposite horizontal positions and vertical positions” and Applicant has cited paragraph [0110] and figure 25 as support for the recited limitation (of claim 5). The corresponding disclosure states that “the fastening connection direction of the fastening portions 11 of the fastening member 1 are respectively on opposite vertical positions, and the fastening connection directions of the fastening portions 11 are respectively on opposite horizontal positions and vertical positions.” The disclosure thus describes the fastening connection directions as being on opposite horizontal positions and vertical positions; it does not describe the fastening portions (11) themselves as being so positioned. Therefore, the recited limitation has been considered new matter not originally supported by the disclosure.
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.
Claim 5 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.
Claim 5 recites “two or more fastening portions” (lines 1-2) and then “one of the fastening portions has material storage space” (lines 5-6) and then “the fastening portion is assembled with the first object or the second object” (lines 7-8). The recitation “the fastening portion” is unclear to whether the limitation refers to the one fastening portion having the material storage space, to another of the two or more fastening portions, or to all of them collectively. Clarification is required.
Claim Rejections - 35 USC § 102
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, 2, 4, and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Downes, US 6,773,269.
Regarding claim 1, Downes discloses a fastening member (46, 48) with a plurality of fastening portions, comprising two or more fastening portions (72-A/92-A; 72-B/92-B), [the fastening portions being configured to be fastening connected to a first object (22) or a second object (24)], the fastening portions of the fastening member are respectively on different horizonal positions and different vertical positions (the lower pins 48 are disposed substantially in the corners of the rectangle defined by frame 38 while the signal pins 46 are disposed substantially along the sides of that rectangle, such that their end portions occupy distinct X-Y locations about periphery 42; see frame holes 110 for the power pins and 112 for the signal pins in figures 2 and 5; the first ends 72A, 92A are at an upper vertical position while the second ends 72-B, 92-B are at a lower vertical position), wherein fastening connection directions of the fastening portions are respectively on opposite horizontal positions and vertical positions (the first ends 72A, 92-A simultaneously register into holes 54 of the first circuit board 22 in one axial direction along axes 82, 100 while the seconds ends 72-B, 92-B simultaneously register into holes 56 of the second circuit board 24 in the opposite axial direction, placing the connection directions on opposite vertical positions; and the pins occupying opposed corners and opposed sides of the rectangle defined by the frame 38 place those connection directions on opposite horizontal positions; figures 1, 2 and 5).
Claim language set in brackets [] set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of the fastening member, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the pin assembly disclosed by Downes (US 6,773,269), is indeed capable of the intended use statements. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Regarding claim 2, Downes discloses the fastening member with a plurality of fastening portions of claim 1, wherein each of the fastening portions (72-A/72-B) has a material storage space (grooves 74 at each end 72, three grooves evenly spaced around each end), and is configured to be pressed by an external force (via heat) on the fastening member [that then presses the first object or the second object such that a material (solder pre-form material 84, 102) of the first object or the second object enters the material storage space (melt and flow into the grooves 74), and to be assembled with the first object or the second object].
Regarding claim 4, Downes discloses the fastening member with a plurality of fastening portions of claim 1, wherein one of the fastening portions has a material storage space (74), and is configured to be pressed by an external force (via heat) on the fastening member [that then presses the first object or the second object such that a material (solder 84, 102) of the first object or the second object enters the material storage space (74), and to be assembled with the first object or the second object]; or another fastening portion is configured to be pressed by an external force, to be deformed and engaged with the first object or the second object, and to be assembled with the first object or the second object.
Regarding claim 5, as best understood, Downes discloses a fastening member with a plurality of fastening portions (26), comprising two or more fastening portions (72-A, 72-B; 92A, 92-B), [the fastening portions being configured to be fastening connected to a first object (22) or a second object (24)], the fastening portions of the fastening member are respectively on opposite horizontal positions and vertical positions (pins 48 in opposed corners and signal pins 46 along opposed sides of the rectangle defined by frame 38, with first ends at an upper vertical position and second ends at a lower vertical position; figures 2 and 5), and the fastening connection directions of the fastening portions are respectively on opposite vertical positions (first ends 720A, 920A register into holes 54 of board 22 in one axial direction; second ends 72B, 92-B register into holes 56 of board 24 in the opposite axial direction), one of the fastening portions has a material storage space (74), [a material of the first object or the second object enters the material storage space, the fastening portion is assembled with the first object or the second object].
Claim Rejections - 35 USC § 103
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(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Downes, US 6,773,269 in view of Butler, US 3,223,374.
Regarding claim 3, Downes discloses the fastening member with a plurality of fastening portions of claim 1, [wherein the fastening portions are configured to be pressed by an external force (heat) and to be assembled with the first object or the second object]. Downes does not explicitly disclose the fastening portions are configured to be deformed and engaged with the first object or the second object.
Butler teaches fastening portions (36) that are configured to be pressed by an external force (due to the first object 14 and the second object 18), to be deformed by external force (from the first and second objects) and engaged with the first object (14) or the second object (18), and to be assembled with the first object (14) or the second object (18). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the fastening portions of Downes to include deformable fastening portions taught by Butler to create a tool-less, reversible engagement that does not require soldering.
Response to Arguments
Applicant's arguments filed July 7, 2026 have been fully considered but they are not persuasive. Applicant argues that Downes discloses end portions 72-A and 72-B at the upper and lower ends of pin 48 (similarly 92-A, 92-B at the upper and lower ends of pin 46), and that Downes therefore does not disclose end portions located at different horizonal positions while also being located at different vertical positions. In response, it is agreed that the end portions of any single pin are coaxial along its axis and thus occupy a common horizontal position. That is not the reading applied above. Amended claim 1 requires the fastening member “with a plurality of fastening portions, comprising two or more fastening portions”. The claim does not recite that the fastening member is integrally formed, of one piece, or unitary in construction. Under the broadest reasonable interpretation, the claimed fastening member reads on Downe’s pin assembly 26 as a whole. Therefore, the fastening portions of Downe’s fastening member are the end portions of the several pins, which Downes expressly distributes at distinct horizontal positions (see frame holes 110 and 112 in figure 5), and at distinct vertical positions because the first ends registering into holes 54 of the first circuit board and the second ends registering into holes 56 of the second circuit board. The connection directions are correspondingly on opposite vertical positions (toward 22, and 24) and on opposite horizontal positions (pins occupying opposed corners and opposed sides of the frame).
Conclusion
THIS ACTION IS MADE FINAL. 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 ROWLAND DO whose telephone number is (571)270-5737. The examiner can normally be reached Monday-Thursday 8:30 - 7:00 PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.D./ Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677
