Detailed Action1
Rejections under 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.
(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.
Claims 1-4, 6-9, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 93/24258 (“Edwards”).
Regarding claim 1, Edwards discloses an apparatus for processing a workpiece (fig. 2, page 2 lines 27-32), said apparatus comprising: at least one pressing device having a first tool half (11) and a second tool half (16) that can be moved towards one another in a pressing movement (fig. 2, page 4 lines 4-13), and at least one setting device (17) for fastening at least one functional element in a setting movement at a setting point to the workpiece (fig. 2, page 4 lines 20-25), wherein the setting device is arranged at the first tool half or the second tool half (fig. 2, i.e. arranged at first tool 11 which can include the housing of cylinder 18), and wherein the setting device can be operated independently of the pressing device (fig. 2, page 4 line 4 – page 5 line 13).
Claim 2 recites the first tool half and the second tool half can be moved towards one another for reshaping and/or for press hardening the workpiece. Edwards teaches moving the tool halves 11/16 towards one another to clamp a workpiece therebetween with a predetermined force (page 4 lines 8-13), wherein hydraulic drives are capable of generating relatively high forces. Thus, these tool halves are capable of reshaping a portion of a workpiece that does not extend completely horizontally depending on the material of the workpiece, temperature of workpiece, and chosen predetermined clamp force.
Claim 3 recites the pressing device has a drive device by which the first and the second tool half can be moved towards one another in a linear pressing movement. Edwards teaches the pressing device having a hydraulic or pneumatic drive device (fig. 2, page 2 line 36, page 4 lines 4-11, page 5 lines 14-15).
Claim 4 recites the setting device has a setting drive by which the functional element can be pressed against the workpiece in a linear setting movement. Edwards teaches the setting device having a hydraulic drive device (figs. 1-2, page 3 lines 13-17).
Claim 6 recites the pressing device and/or the setting device can be operated electrically, hydraulically or pneumatically. Edwards teaches the setting device is operated hydraulically (page 3 lines 13-17) and the pressing device is operated hydraulically or pneumatically (page 2 line 36, page 4 lines 4-11, page 5 lines 14-15).
Claim 7 recites the pressing device and the setting device have different types of drives. Edwards teaches the setting device is operated hydraulically (page 3 lines 13-17) and the pressing device can be operated pneumatically (page 2 line 36, page 5 lines 14-15).
Claim 8 recites the tool half at which the setting device is arranged has an opening into which the setting device projects. Edwards teaches the setting device 17 projecting/extending into the tool half 11 in order to drive a fastener into the workpiece (fig. 2, page 4 lines 20-25).
Claim 9 recites the apparatus is configured and set up such that a self-punching functional element can be fastened to the workpiece. Since Edwards teaches the hydraulic setting device can punch self-piercing rivets in the workpieces (page 3 lines 13-17), one of skill in the art will appreciate that the setting device of Edwards is at least capable of fastening a self-punching function element to a workpiece.
Claim 21 recites the first and/or the second tool half comprises/comprise at least one sensor device with which a pressing force acting between the tool halves and/or a characteristic parameter of the pressing movement and/or a characteristic parameter of the first and/or the second tool half can be detected. Edwards teaches using a pressure sensor 15 and linear transducer 19 to determine when the nose is in contact with the workpiece and how far the nose travelled to the workpiece (page 3 lines 18-27, page 4 lines 14-19). Thus, the tool halves have sensors to determine at least a characteristic parameter of the first and/or the second tool half, i.e. when the top tool half is in contact with the workpiece and how far the top tool half travelled to the workpiece.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Edwards as applied to claim 1 above, and further in view of US Patent No. 6,062,458 (“the ‘458 reference”).
Regarding claim 5, Edwards fails to explicitly teach the pressing device and/or the setting device is/are designed such that the pressing movement and the setting movement are not parallel. However, this would have been obvious in view of the ‘458 reference.
The ‘458 reference is also directed to a rivet setting machine including a pressing device and setting device (fig. 3, col. 3 lines 20-32). The machine is supported so that it is free to move along and rotate about each of the three axes (figs. 2 & 3A-3B, col. 3 lines 33-54). This movement allows the machine to be more accurately positioned with respect to rigid machines—thereby preventing damage (col. 1 lines 53-64).
In this case, each of Edwards and the ‘458 reference teach a rivet setting machine including a pressing device and setting device. The ‘458 reference teaches that it is known and predictable for the machine to be able to move along and rotate about each of the three axes. Thus, in order to position the apparatus of Edwards more accurately with respect to a workpiece/setting area, it would be obvious to allow the apparatus to move along and rotate about each of the three axes. Given this modification, since the pressing device and setting device of Edwards operate independently, the apparatus of Edwards et al. is capable of performing a pressing movement along a first axis, and then rotating the apparatus so that the setting movement is along a non-parallel axis.
Claims 12-14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Edwards as applied to claim 1 above, and further in view of USPGPub No. 2010/0083481 (“Luo”).
Regarding claim 12, Edwards fails to explicitly teach the first and/or the second tool half has/have a conditioning device with which the first tool half and/or the second tool half can be thermally influenced. However, this would have been obvious in view of Luo.
Luo is also directed to installing fasteners in workpieces via an apparatus having a pressing device and a setting device. Luo teaches that it is known for the bottom tool half to have an induction coil embedded therein in order to heat the workpiece in contact therewith (fig. 2, para. [0012]). Heating the workpiece 14 to a predetermined temperature improves ductility of the workpiece and prevents undue strain (para. [0012]).
In this case, each of Edwards and Luo are directed to installing fasteners in workpieces via an apparatus having a pressing device and a setting device. Luo teaches one of skill in the art that it is known to add induction coils in at least one of the tool halves for heating a workpiece, and that it is predictable that this can allow the fastener to be set easier by improving ductility of the workpiece and preventing undue strain. Thus, it would be obvious to embed an inducting coil within the second/bottom tool half of Edwards in order to heat the workpiece to a predetermined temperature prior fastening the functional element. Given this modification, the induction coil will also thermally influence at least the second tool half.
Regarding claim 13, Edwards et al. further teach the conditioning device is configured and set up such that the first and/or the second tool half can be selectively thermally influenced at and/or in a region adjacent to the setting point (see Luo, fig. 2, paras. [0004] & [0012]).
Claim 14 recites the conditioning device is configured and set up such that a desired temperature profile can be produced in the first and/or the second tool half. The examiner notes that this is an intended use limitation. Thus, the conditioning device merely has to be capable of producing a desired temperature profile. As detailed in the rejection to claim 12 above, Edwards is modified in view of Luo so that the conditioning device heats the second tool half and workpiece to a desired or elevated temperature. Thus, the induction coil/conditioning device is at least capable of providing a desired temperature profile in the bottom tool half.
Claim 16 recites the conditioning device comprises a heating device and/or a cooling device. As detailed in the rejection to claim 12 above, Edwards is modified in view of Luo so that the conditioning device heats the tool half and workpiece to a desired temperature.
Claim 17 recites the conditioning device can be operated electrically and/or with a fluid. As detailed in the rejection to claim 12 above, Edwards is modified in view of Luo so that the conditioning device is an induction coil, which is operated electrically via electrical conductors 44 & 46 and power source 42 (see Luo, fig. 2, para. [0014]).
Claim 18 recites the conditioning device is configured and set up such that the thermal influence is variable in time and/or in space. The induction heater is energized to heat the bottom tool half and workpiece at a specific time (see para. [0012]), i.e. variable in time. In addition, the thermal influence from the energized induction coil will decrease with increasing distance from the coil, i.e. variable in space.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Edwards et al. as applied to claim 12 above, and further in view of USPGPub No. 2018/0185903 (“Furusako”).
Regarding claim 15, Edwards et al. fail to explicitly teach the setting device has a second conditioning device with which the setting device and/or the workpiece and/or the functional element can be thermally influenced. However, this would have been obvious in view of Furusako.
Furusako is directed to a mechanical joining method of a rivet (para. [0046]). Furusako also teaches heating the sheets prior to the setting operation, and subsequently the rivet (fig. 1a, paras. [0072]-[0077] & [0082]). Furusako also teaches that it is beneficial to cool the rivet after riveting and heating (paras. [0055], [0068] & [0083]-[0084]). To cool the rivet, the punch 5 has a cooling channel/pipe 9 therein that carries coolant (fig. 1b, paras. [0087]-[0089]).
In this case, each of Edwards et al. and Furusako are directed to setting a rivet in sheets of material with a punch, wherein the sheets of material are heated prior to the setting operation. Furusako teaches that it is also beneficial to heat the rivet after the setting operation and then to cool it via a cooling channel in the punch. It would be predictable that providing a cooling channel in the setting device of Edwards can allow a heated rivet to be cooled, thereby providing better mechanical properties of the rivet. Thus, it would be obvious to modify the setting device of Edwards to have a cooling channel therein that can cool the rivet after it is set in a workpiece.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Edwards et al. as applied to claim 1 above, and further in view of USPGPub No. 2018/0272419 (“Draht”).
Regarding claim 20, Draht fails to explicitly teach the setting device comprises at least one sensor device with which a setting force acting on the functional element and/or at least one characteristic parameter of the setting movement can be detected. However, this would have been obvious in view of Draht.
Draht is also directed to a rivet setting process using a pressing device and a setting device having a plunger/punch (paras. [0002] & [0067]-[0068]). Draht teaches monitoring parameters of the setting device to determine, evaluate, and control a setting operation (paras. [0016], [0027] & [0097]-[0098]). The paramaters monitored include the force applied by the punch, by using a force sensor or by sensing the hydraulic pressure used to move the punch, and the punch position/path, by e.g. Hall sensors (paras. [0014], [0019], [0068]-[0069] & [0077]).
In this case, each of Edwards and Draht teach directed to a rivet setting process using a pressing device and a setting device having a plunger/punch. Draht teaches that it is known and predictable to monitor and control a setting process by monitioring parameters of the setting device such as path/position of the plunger/punch and force applied by punch. One of skill in the art also appreciates that data from a setting process can be compared to reference data to determine if the setting process was satisfactory. Thus, in order to better control a setting process, or determine if a setting process is satisfactory, it would be obvious to modify the setting device of Edwards to comprise a force sensor or hydraulic pressure sensor to determine the force applied by the punch, and to comprise another sensor to determine a position/path of the punch.
Claims 1 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 5,560,094 (“Ladouceur”) in view of Edwards.
Regarding claim 1, Ladouceur teaches an apparatus for processing a workpiece (fig. 6, col. 1 lines 35-45), said apparatus comprising: at least one pressing device having a first tool half (70) and a second tool half (68) that can be moved towards one another in a pressing movement (fig. 6, col. 4 line 63 – col. 5 line 20, wherein one of skill in the art appreciates that the halves 68 & 70 are moved to clamp workpiece 44 therebetween), and at least one setting device (74) for fastening at least one functional element (20) in a setting movement at a setting point to the workpiece (figs. 6-10, col. 5 lines 6-54), wherein the setting device is arranged at the first tool half or the second tool half (fig. 6, i.e. at upper/first tool half).
Ladouceur fails to explicitly teach the setting device can be operated independently of the pressing device. However, this would have been obvious in view of Edwards.
As detailed in the previous rejection to claim 1 above, Edwards is also directed to installing functional elements in workpieces via an apparatus having a pressing device and a setting device. Edwards teaches the pressing device to have its own drive that is independent from the setting device, and that this design has numerous advantages (see fig. 2, page 1 line 10 – page 2 line 41, page 4 line 4 – page 5 line 13).
Further, since the setting device 74 of Ladouceur moves relative to the nose/tool half 70, there would be a reasonable expectation of success of providing separate drives for the pressing device and the setting device. Thus, for all the advantages discussed in Edwards, it would be obvious to modify Ladouceur so that the nose/first tool half is connected to a first drive that is independent of a second drive connected to the setting device 74.
Claim 8 recites the tool half at which the setting device is arranged has an opening into which the setting device projects. Ladouceur teaches the setting device 74/52 projecting/extending into an opening in the tool half 70 and capable of projecting out of the tool half 70 in order to drive a fastener into the workpiece (figs. 6-10).
Claim 9 recites the apparatus is configured and set up such that a self-punching functional element can be fastened to the workpiece. Ladouceur is at least capable of fastening a self-punching functional element to the workpiece (see e.g. col. 5 lines 6-54 describing operation of the apparatus).
Regarding claim 10, Ladouceur further teaches the tool half disposed opposite the setting device has an opening (80) through which a punched slug can be discharged (figs. 6-8, col. 5 lines 34-35).
Regarding claim 11, Ladouceur further teaches the setting device has an ejection apparatus (52) for ejecting a slug from the functional element (figs. 6-8, col. 5 lines 21-35).
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 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 23 of copending Application No. 19/053,515 (“the ‘515 application). In the alternative, claim 1 is rejected over claim 23 of the ‘515 application in view of Edwards. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of claim 1 of the instant application is required by claim 23 of the ‘515 application. Assuming arguendo that “separately” as used in claim 23 does not read on “independently” as recited in claim 1 of the instant application, this would be obvious in view of Edwards. As detailed in the rejection to claim 1 above, Edwards is also directed to installing functional elements in workpieces via an apparatus having a pressing device and a setting device. Edwards teaches the pressing device to have its own drive that is independent from the setting device, and that this design has numerous advantages (see fig. 2, page 1 line 10 – page 2 line 41, page 4 line 4 – page 5 line 13). Thus, for all the advantages discussed in Edwards, it would be obvious to modify the separately operating pressing and setting devices so that they are also independent.
Claims 3 and 4 of the instant application are rejected over claim 23 of the ‘515 application, and/or claim 23 of the ‘515 application in view of Edwards. While claim 23 fails to recite the limitations of instant claims 3 and 4, the examiner is taking Official Notice that it is well known for first and second tool halves to press against workpieces in a linear pressing movement, and for fastener setting devices to move linearly. Edwards also teaches this (figs. 1-2, page 4 lines 8-11). Thus, it would be obvious and predictably for the drives to move the tool halves and setting device linearly.
Claims 6-8 of the instant application are rejected over claim 23 of the ‘515 application in view of Edwards. Edwards teaches the setting device is operated hydraulically (page 3 lines 13-17) and the pressing device can be operated pneumatically (page 2 line 36, page 5 lines 14-15). Edwards teaches the setting device 17 projecting/extending into the tool half 11 in order to drive a fastener into the workpiece (fig. 2, page 4 lines 20-25). Thus, it would be obvious and predictable to modify claim 23 of the ‘515 application in view of Edwards to teach the limitations of claim 6-8.
Claim 9 of the instant application is rejected over either rejection to claim 1, above, and further in view of claim 14 of the ‘515 application. Wherein, since claims 23 and 14 of the ‘515 application don’t recite mutually exclusive limitations and each require all the structure of claim 1 of the ‘515 application, it would be predictable and obvious to modify the apparatus of claim 23 of the ‘515 application to include the structural limitations of claim 14.
Claims 12-14, 16-18, and 20-21 of the instant application are rejected over either rejection to claim 1, above, and further in view of claims 3-5, 8-10, and 12-13 of the ‘515 application, respectively. Wherein, since claim 23, and claims 3-5, 8-10, and 12-13 of the ‘515 application, don’t recite mutually exclusive limitations and each require all the structure of claim 1 of the ‘515 application, it would be predictable and obvious to modify the apparatus of claim 23 of the ‘515 application to include the structural limitations of claims 3-5, 8-10, and 12-13 of the ‘515 application, respectively.
Claim 15 of the instant application is rejected over either rejection to claim 1, above, and further in view of claims 3 and 6 of the ‘515 application, respectively. Wherein, since claim 23, and claims 3 and 6 of the ‘515 application, don’t recite mutually exclusive limitations and each require all the structure of claim 1 of the ‘515 application, it would be predictable and obvious to modify the apparatus of claim 23 of the ‘515 application to include the structural limitations of claims 3 and 6 of the ‘515 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed March 11, 2026 (“the remarks”) have been fully considered. Each of applicant’s remarks is set forth, followed by examiner’s response.
On pages 9-10 of the remarks, Applicant argues that Edwards fails to teach the setting device operating independently of the press device because the pressing device and setting device of Edwards share the same cylinder 18, thus the system of Edwards can’t insert rivets without pressing on the workpiece.
The pressing device and setting device of Edwards do not share the same cylinder 18—cylinder 18 is only for the pressing device. Edwards explicitly teaches the pressing device and setting device to have separate, independent drives (see page 2 lines 27-32 & page 4 lines 4-7, e.g. “The present invention provides a fastener applicator comprising a nose movable by nose drive means to contact a workpiece to which fasteners are to be applied, a plunger movable independently of the nose drive means by plunger drive means”, and, “movement of the nose assembly 11 is totally independent of the movement of the fastener drive plunger assembly”; see also the Edwards specification in general which teaches the motivation and advantages of the independent drives over the device mentioned in the background section).
Edwards’ drawings also illustrate independent drive means and cylinders. As illustrated below, the nose drive means comprises double action cylinder 18, and plunger drive means comprises the illustrated double action cylinder above cylinder 18.
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As illustrated above, figure 2 illustrates a separate and independent plunger drive cylinder (wherein all the fluid is below the top of plunger 17, but the figure illustrates the fluid path that allows pressurized fluid to be applied above plunger 17 to initiate a setting operation).
While Edwards doesn’t teach a method of setting a rivet without pressing on the workpieces with the pressing device, clamping/pressing workpieces prior to riveting is how riveting machines generally operate, including Applicant’s (see last two paragraphs on page 7 of Applicant’s originally filed specification, i.e. wherein the setting device operates after the pressing device has started). However, since the setting drive of Edwards is “totally independent” from the pressing drive, the setting drive is structurally capable of operating without operating the pressing drive.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”