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 .
Claims 1-7, 19-27, 34-48, 52-53 and 56-69 have been cancelled.
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.
Claim(s) 8-18, 28-33, 49-51 and 54-55 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Wang (US 2012/0263555), which discloses:
8. A captive fastener attachable to a panel along a fastener axis, the captive fastener comprising:
a fastener (3) having a head portion (31) at a proximal end (top) of the fastener and a shaft (321, 322) extending from the head portion and along the fastener axis to a distal end portion (bottom) of the fastener;
a knob (1) formed separately from the fastener and assembled to the fastener, the
knob having a proximal end portion (top) engaged to the head portion of the fastener and an annular portion (the wall thereof) extending radially around the fastener axis and the shaft of the fastener and distally from the head portion of the fastener to a distal end portion (bottom) of the knob;
a ferrule (2) associated with the knob, the ferrule defining an opening extending
along the fastener axis and receiving the shaft of the fastener (e.g., see FIG 4), the ferrule having a proximal end portion (top) configured to prevent separation of the knob from the ferrule along the fastener axis (via 24) and a distal end portion (the bottom) configured for engagement to the panel (at 22); and
a spring (4) positioned to bias the knob or the fastener proximally relative to the
ferrule and to inhibit tilting of the knob or the fastener relative to the fastener axis (same as Applicant’s);
the proximal end portion of the ferrule having been positioned to be associated
with the knob in an insertion direction along the fastener axis (in the position of FIG 4):
the head portion of the fastener having been inserted within the knob for
engagement to the knob in the insertion direction (as shown in FIG 4);
the engagement between the proximal portion of the knob and the head portion
of the fastener being configured to resist axial movement of the knob relative to the fastener along the fastener axis, rotational movement of the knob relative to the fastener about the fastener axis, and pivotal movement of the knob relative to the fastener axis (via snap portions 16): and
the proximal end portion of the knob being mechanically engaged to the head
portion of the fastener (via 16), wherein:
the head portion of the fastener has a proximally facing surface (311) facing toward the
proximal end of the fastener, a distally facing surface (312) facing toward the distal end portion of the fastener, and a transverse surface (31, 33, 313) extending transverse to the proximally facing surface and the distally facing surface of the head portion of the fastener;
the knob has a proximally facing surface (15) facing toward a proximal end of the
knob, a distally facing surface (the downward-facing lip of 16, visible at least in FIG 4, which abuts the top surface 311 of the fastener head) facing toward a distal end of the knob, and a transverse surface (14) extending transverse to the proximally facing surface and the distally facing surface of the knob;
at least one of the proximally facing surface of the knob and the distally facing
surface of the knob being movable radially relative to the fastener axis (16 flexes outward when the fastener is pushed into 1, and then snaps back radially to hold the fastener in 1) between an engaging position (shown in FIG 4), in which the proximally facing surface of the knob engages the distally facing surface of the head portion of the fastener and the distally facing surface of the knob engages the proximally facing surface of the head portion of the fastener (shown in FIG 4), thereby restricting movement of the head portion of the fastener relative to the knob along the fastener axis (considered clearly met), and
an extended position, in which at least one of the proximally facing surface of the
knob or the distally facing surface of the knob is disengaged from the head portion of the fastener, thereby permitting movement of the head portion of the fastener relative to the knob along the fastener axis (e.g., para. 0039, “ the snap portion 16 has elasticity for an expansion to facilitate passing the head portion 31 of the locking element 3 through the snap portion 16”); and
the transverse surface of the head portion of the fastener abuts the transverse
surface of the knob, thereby restricting rotational movement of the knob relative to the fastener about the fastener axis (flat wall 33 abuts “anti-rotating” wall 14, see FIG 6); and
wherein the knob comprises a surface (the top surface of the fastener shown in FIG 6) defining one or more of the distally facing surface of the knob and the proximally facing surface of the knob (it defines 311), the surface configured to permit resistance to withdrawal of the head portion of the fastener from the knob (at least via the engagement between 311 and 16).
9. The captive fastener of claim 8, the surface of the knob comprises a leg (16) defining the distally facing surface of the knob or the proximally facing surface of the knob, the leg of the knob being moveable radially outwardly to move the distally facing surface of the knob or the proximally facing surface of the knob from the engaging position to the extended position, thereby permitting insertion of the head portion of the fastener into the knob, and from the extended position to the engaging position, thereby resisting withdrawal of the head portion of the fastener from the knob (e.g., para. 0039, “ the snap portion 16 has elasticity for an expansion to facilitate passing the head portion 31 of the locking element 3 through the snap portion 16”).
10. The captive fastener of claim 9, the knob comprising an inner wall (generally the inner wall of 1) defining the proximally facing surface of the knob or the distally facing surface of the knob, thereby restricting movement of the head of the fastener relative to the knob along the fastener axis (by virtue of 15, 16).
11. The captive fastener of claim 10, the leg of the knob defining the distally facing surface of the knob (see FIG 4), the inner wall of the knob defining the proximally facing surface of the knob (see FIG 4), the distally facing surface of the leg of the knob abutting the proximally facing surface of the head portion of the fastener, and the proximally facing surface of the inner wall of the knob abutting the distally facing surface of the head of the fastener (see FIG 4).
12. The captive fastener of claim 9, the knob comprising two or more legs (as shown in FIG 6), at least one of the legs defining the transverse surface of the knob.
13. The captive fastener of claim 12, the legs being separated by a gap (17).
14. The captive fastener of claim 13, the transverse surface of the head portion of the fastener extending into the gap and the transverse surface of the head
portion of the fastener abuts the transverse surface of the leg of the knob (as can be appreciated from FIGS 4, 6), thereby restricting rotational movement of the knob relative to the fastener about the fastener axis (via anti-rotation surfaces 14).
15. The captive fastener of claim 9, the knob being configured for snap-in engagement of the head portion of the fastener by the leg of the knob in the engaging position, thereby resisting withdrawal of the head portion of the fastener from the knob (e.g., para. 0039, “ the snap portion 16 has elasticity for an expansion to facilitate passing the head portion 31 of the locking element 3 through the snap portion 16”).
16. The captive fastener of claim 15, the leg of the knob further defining a ramped surface tapering from a radially outward portion of the leg to a radially inward
portion of the leg, the ramped surface of the leg of the knob being positioned to facilitate the movement of the leg of the knob radially outwardly during the insertion of the head portion of the fastener into the knob (see the ramped surface at the lead line of 16, FIG 4).
17. The captive fastener of claim 16, the ramped surface of the leg of the knob facing a proximal end of the knob (i.e., it is facing upward), the proximal end portion of the ferrule and the head portion of the fastener having been inserted within the knob in the insertion direction (in the configuration of FIG 4), the insertion direction being a distal direction from the proximal end portion of the knob along the fastener axis (i.e., a downward direction).
18. The captive fastener of claim 9, the knob further comprising an annular wall positioned radially outwardly from the leg of the knob and at least partially
enclosing the leg of the knob, the annular wall defining a radially outwardly facing surface positioned for gripping the knob (see the outer circumferential surface of knob 1, e.g., at FIG 3).
28. The captive fastener of claim 8, the knob comprising wherein the surface of the knob comprises an inner wall defining an annular groove sized to accommodate the head portion of the fastener and defining the distally facing surface of the knob and the proximally facing surface of the knob (see FIG 4, the groove into which the fastener head snaps is seen as an inner wall), thereby resisting withdrawal of the head portion of the fastener from the knob upon insertion of the head portion of the fastener into the
annular groove defined in the inner wall of the knob (considered clearly met).
29. The captive fastener of claim 28, the annular groove defined in the inner wall of the knob being a continuous groove such that at least one of the distally facing surface of the knob and the proximally facing surface of the knob is a continuous surface (e.g., the continuous nature of the groove can be seen at least in FIG 3).
30. The captive fastener of claim 28, the inner wall of the knob further defining a tapered region adjacent the annular groove and tapering from a larger portion sized to accommodate the head portion of the fastener to a smaller portion sized to resist
passage of the head portion of the fastener, thereby permitting a pressed insertion of the head portion of the fastener into the annular groove defined in the inner wall of the knob (see FIG 4, the tapered portion at the lead line of 16).
31. The captive fastener of claim 30, the smaller portion of the tapered region of the inner wall of the knob defining gaps (17) extending into the annular groove, thereby facilitating the pressed insertion of the head portion of the fastener into the annular
groove defined in the inner wall of the knob.
32. The captive fastener of claim 30, the tapered region defined in the inner wall of the knob being positioned adjacent the proximally facing surface defined by the
annular groove of the knob (see FIG 4), thereby permitting the pressed insertion of the head portion of the fastener into the annular groove defined in the inner wall of the knob in the insertion direction, the insertion direction being a proximal direction from the distal end portion of the knob along the fastener axis (e.g., para. 0039, “ the snap portion 16 has elasticity for an expansion to facilitate passing the head portion 31 of the locking element 3 through the snap portion 16”).
33. The captive fastener of claim 28, a perimeter edge of the head portion of the fastener defining the transverse surface of the head portion of the fastener (FIG 6), the
transverse surface of the knob being formed within the annular groove defined in the inner wall of the knob upon the insertion of the head portion of the fastener into the annular groove (FIG 4).
The steps of claims 49-51 and 54-55 would necessarily be performed during the normal and usual provision and operation of Wang’s device, where the steps are considered to clearly correspond to provision and operation of the structure discussed above in the context of the apparatus claims.
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.
Pending claims 8-18, 28-33, 49-51 and 54-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over patented claims 8-18, 28-33, 37-39 and 42-43, respectively, of U.S. Patent No. 12,203,500.
Although the claims at issue are not identical, they are not patentably distinct from each other. The difference regarding pending claim 8 amounts to pending claim 8 containing the following limitation not found in patented claim 8: “wherein the knob comprises a surface defining one or more of the plurality of the distally facing surface of the knob and the proximally facing surface of the knob, the surface configured to permit resistance to withdrawal of the head portion of the fastener from the knob” (found at the last indent of pending claim 8). It is seen as an inherent that the distally and/or the proximally facing surface are part of a surface. Also, this surface being “configured to permit resistance to withdrawal of the head portion of the fastener from the knob” as added to pending claim 8, is seen as inherent to the already-present limitations of patented claim 8 which require “the engagement between the proximal portion of the knob and the head portion of the fastener being configured to resist axial movement of the knob relative to the fastener along the fastener axis” and “at least one of the proximally facing surface of the knob and the distally facing surface of the knob being movable radially relative to the fastener axis between an engaging position, in which the proximally facing surface of the knob engages the distally facing surface of the head portion of the fastener and the distally facing surface of the knob engages the proximally facing surface of the head portion of the fastener, thereby restricting movement of the head portion of the fastener relative to the knob along the fastener axis.”
The difference regarding pending method claim 49 with respect to patented method claim 37 is clearly analogous to the difference between pending apparatus claim 8 and patented apparatus claim 8 (the only difference being the additional limitation at the end of pending claim 49, which is analogous to the additional limitation at the end of pending claim 8).
The other enumerated (dependent) pending claims are substantively equivalent to the corresponding patented claims, as mapped in the rejection statement above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 6,033,168 discloses a similar arrangement with a fastener, knob, and ferrule.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM M MCCALISTER whose telephone number is (571)270-1869. The examiner can normally be reached M-F from 7am to 6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CRAIG SCHNEIDER, can be reached at telephone number 571-272-3607, or Kenneth Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM M MCCALISTER/ Primary Examiner, Art Unit 3753
8/20/26
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