DETAILED ACTION
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 were received on 2/17/2026. These drawings are accepted.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Setting device (e.g. claims 1, 15) - e.g. a driven setting die (page 9)
Conditioning device (e.g. claims 3, 6, 15) - a heating or cooling device, e.g. electrical and/or fluid operated.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 23 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 23 recites “such that attachment strength of the functional element is thereby enhanced”. The original disclosure makes no mention of enhancing the attachment strength of the functional element by shaping of the workpiece. For example, terms such as “strength”, “attachment”, “enhanced”, and variations thereon do not appear in 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.
Claims 1-14 and 21-23 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.
Claim 1 recites “an elevated portion of the workpiece formed by reshaping the workpiece at the setting point where the functional element is pressed against the workpiece”. This limitation pertains to the workpiece, i.e. the article worked upon by the claimed apparatus. The positively recited limitation raises questions as to the scope of the claimed invention, i.e. is it to an apparatus or a product made thereby? For examination purposes, it is noted that the inclusion of the article formed within the body of a claim does not, without more, make the claim patentable (see In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and MPEP 2115). Thus, a limitation in an apparatus claim, as in claim 1, pertaining to the article worked, is treated as not having patentable weight therein.
Claim 10 recites the limitation "the conditioning device" in line 1. There is insufficient antecedent basis for this limitation in the claim. It appears that claim 10 should be amended such that it depends from claim 3 as with other claims reciting the conditioning device.
Claim 23 recites “such that attachment strength of the functional element is thereby enhanced”. It is unclear how the strength is enhanced or to what it is enhanced with respect to.
The remaining claims are rejected by virtue of their dependency on claim 1.
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.
Claims 1-5, 8-11, 14, and 21-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liebrecht et al. (U.S. Patent 6,417,490).
Claim 1: Liebrecht et al. discloses an apparatus (Figs. 1a-2) for processing a workpiece (1a, 1b), said apparatus comprising at least one pressing device having a first tool half (5) and a second tool half (4) that can be moved towards one another in a pressing movement (Figs. 1a-1e), for reshaping and/or for press hardening the workpiece (e.g. column 2, lines 54-56), at least one setting device (punch 3) for fastening at least one functional element (self-piercing rivet 2) in a setting movement at a setting point to the workpiece (Figs. 1a-1e), wherein the setting device is arranged at the first tool half or the second tool half (in tool half 5).
Regarding “an elevated portion of the workpiece formed by reshaping the workpiece at the setting point where the functional element is pressed against the workpiece”, it is noted that the inclusion of an article formed within the body of a claim to a machine for making that article does not, without more, make the claim patentable. See In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and MPEP 2115. In this case, the limitation pertaining to an elevated portion of the workpiece constitutes an analogous scenario of including the workpiece as the article produced by the claimed apparatus for forming it.
Claim 2: The first and/or the second tool half can be selectively thermally influenced (the heating and/or cooling can be controlled - column 1, lines 35-43; column 2, lines 1-2 and 66-67).
Claim 3: The first tool half and the second tool half can be moved towards one another for reshaping and/or for press hardening the workpiece (as cited above) wherein 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 (heating the tool halves by current and/or cooling by cooling device 6 - column 2, lines 53-56; column 3, lines 5-17). It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the ability of the first tool half and the second tool half to reshape and/or for press hardening the workpiece is also dependent on the nature of the workpiece. The tools are already capable of compressing a workpiece, where reshaping would depend in part on how the workpiece engages these tools during compression.
Claim 4: 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 (column 3, lines 9-13).
Claim 5: 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 (i.e. heat is localized to the desired areas of the tools - column 1, line 61 - column 2 line 4; column 3, lines 9-13).
Claim 8: The conditioning device comprises a heating device (heating by electric current as cited above) and/or a cooling device (6).
Claim 9: The conditioning device can be operated electrically (electric current) and/or with a fluid (water - column 3, lines 15-17).
Claim 10: The conditioning device is configured and set up such that the thermal influence is variable in time and/or in space (the temperature would increase and decrease over a period of time, and the heat would also spread in that timeframe, e.g. column 3, lines 2-3).
Claim 11: The conditioning device can be selectively controlled (column 2, lines 66-67).
Claim 14: The apparatus is configured and set up such that a self-punching functional element (self-piercing rivet) can be fastened to the workpiece (column 2, lines 47-49).
Claims 21-22: The limitations pertain to the functional element (e.g. fastener) which is worked upon by the apparatus. For similar reasons as discussed with respect to the elevated portion, claim 21 does not substantially limit the claimed apparatus. The Liebrecht et al. could theoretically function with a functional element having a central through hole opening, such as a self-punching nut.
Claim 23: The pressing device and the setting device operate separately as is evident from Figs. 1a-1e. The limitation “whereby the workpiece is shaped prior to setting the functional element such that attachment strength of the functional element is thereby enhanced” pertains to the functionality and intended use of the apparatus. In this case, the ability of the apparatus to shape the workpiece as claimed is also dependent on the nature of the workpiece. The tools are already capable of compressing a workpiece, where reshaping would depend in part on how the workpiece engages these tools during compression.
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.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Liebrecht et al. in view of Zhuang et al. (CN104607557).
Claim 6: Liebrecht et al. discloses an apparatus substantially as claimed except for wherein the setting device has a conditioning device with which the setting device and/or the workpiece and/or the functional element can be thermally influenced. However, Zhuang teaches a similar device wherein the setting device (punch 1) has a conditioning device (cooling gas pipe 2) with which the setting device and/or the workpiece and/or the functional element can be thermally influenced (e.g. paragraphs 43 and 53). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the setting device with a conditioning device in order to have quenched the riveted sheets while effectively preventing oxidation of the heated sheets.
Claim 7: The setting device and/or the workpiece and/or the functional element can be selectively influenced (i.e. by turning the cooling device on and off at the desired times).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Liebrecht et al. in view of Michalewski et al. (U.S. Patent 5,222,289).
Claims 12-13: Liebrecht et al. discloses an apparatus substantially as claimed except for wherein 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, or wherein 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. However, Michalewski teaches a riveting apparatus wherein the setting device (30, 32) comprises at least one sensor device (74, 104, 112) with which a setting force acting on the functional element and/or at least one characteristic parameter of the setting movement can be detected, or wherein the first and/or the second tool half (34, 36) comprises/comprise at least one sensor device (78, 108) 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 (column 5, line 23 - column 6, line 20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided sensor devices as claimed in order to have better monitored and controlled the riveting process.
Claims 15-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Liebrecht et al. in view of Speller (U.S. Patent 5,042,137) or Rechton et al. (U.S. Patent 2,413,518)
Claim 15: Liebrecht et al. discloses a method of processing a workpiece (1a, 1b), wherein a first tool half (5) and a second tool half (4) of a pressing device are moved towards one another in a pressing movement (Figs. 1a-1e), and wherein a functional element (self-piercing rivet 2) is pressed against the workpiece at a setting point by means of a setting device (punch 3) in a setting movement in order to fasten said functional element to said workpiece (Figs. 1a-1e), wherein the first and/or the second tool half is/are thermally influenced by means of a conditioning device (heating the tool halves by current and/or cooling by cooling device 6 - column 2, lines 53-56; column 3, lines 5-17).
Liebrecht et al. does not disclose moving the pressing device such that the workpiece is shaped to form an elevated portion and pressing the functional element against the workpiece elevated portion. However, Speller teaches a method of moving a pressing device (22, 122) such that a workpiece (14) is shaped to form an elevated portion (dimple 238 raised beyond the lower surface of the workpiece, noting that “elevated” is relative and no directionality for up/down is defined in the claim) and pressing a functional element (rivet 70) against the workpiece elevated portion (see Figs. 5-12). Alternatively, Rechton similarly teaches a method of moving a pressing device (24, 28) such that a workpiece (54) is shaped to form an elevated portion (Figs. 3-6) and pressing a functional element against the workpiece elevated portion (implied at column 1, lines 7-10). In either case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have moved the pressing device such that the workpiece is shaped to form an elevated portion and pressing the functional element against the workpiece elevated portion in order to have formed a space to receive the rivet head for flush mounting, for example.
Claim 16: An apparatus (Figs. 1a-2) as claimed for processing the workpiece is used, see rejection of claims 1 and 15 above.
Claim 18: The thermal influence is varied in space and/or in time (the temperature would increase and decrease over a period of time, and the heat would also spread in that timeframe, e.g. column 3, lines 2-3).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Liebrecht et al. and Speller/Rechton et al. as applied to claim 15 above, and further in view of Zhuang et al.
Liebrecht et al. and Speller/Rechton teach a method substantially as claimed except for wherein the setting device and/or the workpiece and/or the functional element is/are thermally influenced by means of a conditioning device associated with the setting device. However, Zhuang teaches a similar device wherein the setting device (punch 1) has a conditioning device (cooling gas pipe 2) with which the setting device and/or the workpiece and/or the functional element can be thermally influenced (e.g. paragraphs 43 and 53). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the setting device with a conditioning device in order to have quenched the riveted sheets while effectively preventing oxidation of the heated sheets.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Liebrecht et al. and Speller/Rechton et al. as applied to claim 15 above, and further in view of Michalewski et al.
Liebrecht et al. and Speller/Rechton teach a method substantially as claimed except for wherein a setting force acting on the functional element and/or at least one characteristic parameter of the setting movement is/are detected by means of a sensor device, or wherein 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 is/are detected by means of a sensor device. However, Michalewski teaches a riveting method wherein a setting force acting on the functional element and/or at least one characteristic parameter of the setting movement is/are detected by means of a sensor device (74, 104, 112), or wherein 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 is/are detected by means of a sensor device (78, 108; column 5, line 23 - column 6, line 20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have sensed the various parameters as claimed in order to have better monitored and controlled the riveting process.
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 1-6, 8-14, and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-18, and 20-21 of copending Application No. 19/053,510 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant claim 1 is essentially “anticipated” by claim 1 of ‘510, noting that with regard to “an elevated portion of the workpiece formed by reshaping the workpiece at the setting point where the functional element is pressed against the workpiece”, the inclusion of an article formed within the body of a claim to a machine for making that article does not, without more, make the claim patentable. See In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and MPEP 2115. In this case, the limitation pertaining to an elevated portion of the workpiece constitutes an analogous scenario of including the workpiece as the article produced by the claimed apparatus for forming it.
Instant claim 11 is implied, for example, in claims 13, 14, and 18.
Instant claims 21-22 similarly pertain to material worked upon by the apparatus and are not particularly limiting.
Instant claim 23 is substantially anticipated by claim 1 of ‘510 and in view of the fact that the limitation “whereby the workpiece is shaped prior to setting the functional element such that attachment strength of the functional element is thereby enhanced” pertains to the functionality and intended use of the apparatus. In this case, the ability of the apparatus to shape the workpiece as claimed is also dependent on the nature of the workpiece. The tools are already capable of compressing a workpiece, where reshaping would depend in part on how the workpiece engages these tools during compression.
The remaining claims are otherwise substantially anticipated by the corresponding claims of ‘510.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 15 of ‘510 in view of Zhuang et al.
The claims of ‘510 recite an apparatus substantially as claimed except for wherein the setting device and/or the workpiece and/or the functional element can be selectively influenced. However, Zhuang et al. teaches that a setting device and/or the workpiece and/or the functional element can be selectively influenced (i.e. by turning the cooling device 2 on and off at the desired times). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided for selectively influencing the setting device in order to have better controlled the riveting process.
Claims 15 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 22 and 27-31 of ‘510 in view of Speller or Rechton et al.
Regarding instant claim 15, the claims of ‘510 do not disclose moving the pressing device such that the workpiece is shaped to form an elevated portion and pressing the functional element against the workpiece elevated portion. However, Speller teaches a method of moving a pressing device (22, 122) such that a workpiece (14) is shaped to form an elevated portion (dimple 238 raised beyond the lower surface of the workpiece, noting that “elevated” is relative and no directionality for up/down is defined in the claim) and pressing a functional element (rivet 70) against the workpiece elevated portion (see Figs. 5-12). Alternatively, Rechton similarly teaches a method of moving a pressing device (24, 28) such that a workpiece (54) is shaped to form an elevated portion (Figs. 3-6) and pressing a functional element against the workpiece elevated portion (implied at column 1, lines 7-10). In either case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have moved the pressing device such that the workpiece is shaped to form an elevated portion and pressing the functional element against the workpiece elevated portion in order to have formed a space to receive the rivet head for flush mounting, for example.
Instant claims 17-20 are otherwise anticipated by claims 28-31 of ‘510, respectively.
Claim 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 22-23 of ‘510 in view of Liebrecht et al. and Speller or Rechton et al.
The claims of ‘510 recite method substantially as claimed except for wherein the first and/or the second tool half is/are thermally influenced by means of a conditioning device, and moving the pressing device such that the workpiece is shaped to form an elevated portion and pressing the functional element against the workpiece elevated portion.
However, Liebrecht et al. teaches a first and/or second tool half having a conditioning device with which the first tool half and/or the second tool half can be thermally influenced (heating the tool halves by current and/or cooling by cooling device 6 - column 2, lines 53-56; column 3, lines 5-17). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a conditioning device in order to have prevented negative effects on the quality of the joint.
Speller teaches a method of moving a pressing device (22, 122) such that a workpiece (14) is shaped to form an elevated portion (dimple 238 raised beyond the lower surface of the workpiece, noting that “elevated” is relative and no directionality for up/down is defined in the claim) and pressing a functional element (rivet 70) against the workpiece elevated portion (see Figs. 5-12). Alternatively, Rechton similarly teaches a method of moving a pressing device (24, 28) such that a workpiece (54) is shaped to form an elevated portion (Figs. 3-6) and pressing a functional element against the workpiece elevated portion (implied at column 1, lines 7-10). In either case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have moved the pressing device such that the workpiece is shaped to form an elevated portion and pressing the functional element against the workpiece elevated portion in order to have formed a space to receive the rivet head for flush mounting, for example.
Response to Arguments
Applicant's arguments filed 2/17/2026 have been fully considered. Applicant’s arguments essentially rely on amendments to the claims to overcome the prior art of record. The claims have been addressed in the new grounds above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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/Matthew P Travers/Primary Examiner, Art Unit 3726