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 .
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 - 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 10, 15, 16, 17, 18, 19 and 20 of U.S. Patent No. 12,228,160. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the claims of the present invention are included in the claims of the issued patent.
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 1-3, 5, 7, 10, 13, 14, 16, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Joon (JP 2016-121800 A).
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Regarding claim 1, Joon discloses a threaded fastener assembly for use with a nut (90), said threaded fastener assembly comprising, in combination a shaft head (70) including a head (72), and an internally-threaded portion (Figs. 3 and 10; paragraphs [0046] and [0049]); and a shaft (80) separate from the shaft head (70) and including a first externally-threaded portion (81a) for cooperation with the internally-threaded portion of the shaft head (70) to selectively secure the shaft (80) to the shaft head (70), and a second externally-threaded portion (81b) for cooperation with the nut (90) (Figs. 3 and 10; paragraph [0045]).
Regarding claim 2, Joon further discloses the threaded fastener assembly according to claim 1, wherein the shaft (80) also includes an integrated nut portion (82) for tightening the first externally-threaded portion (81a) of the shaft (80) with the internally-threaded portion of the shaft head (70) (Fig. 3; paragraph [0044]).
Regarding claim 3, Joon further discloses the threaded fastener assembly according to claim 2, wherein the nut portion (82) is located at an end of the shaft (80) opposite the first externally-threaded portion (81a) of the shaft (80) (Fig. 3).
Regarding claim 5, Joon further discloses the threaded fastener assembly according to claim 1, wherein the shaft head (70) further includes a fixing segment (71) extending from the head (72), and a spline (71b) on an external surface of the fixing segment (71), and wherein the internally-threaded portion is at least partially within the fixing segment (71) (Figs. 3 and 10; paragraphs [0049] and [0059]).
Regarding claim 7, Joon further discloses the threaded fastener assembly according to claim 1, wherein the shaft head (70) and the shaft (80) are configured as a lug bolt (Fig. 3).
Regarding claim 10, Joon further discloses the threaded fastener assembly according to claim 1, wherein the second externally-threaded portion (81b) of the shaft (80) has a diameter the same size as the first externally-threaded portion (81a) of the shaft (80) (Fig. 3).
Regarding claim 13, Joon further discloses the threaded fastener assembly according to claim 10, wherein the first externally-threaded portion (81a) and the second externally-threaded portion (81b) are continuous (Fig. 3; paragraph [0045]).
Regarding claim 14, Joon discloses a threaded fastener assembly for use with a nut (90), said threaded fastener assembly (fig. 3) comprising, in combination a shaft head (70) including a head (72), and a fixing segment (71) extending from the head (72), wherein at least a portion of the fixing segment (71) includes an internally-threaded portion (fig. 10) (Figs. 3 and 10; paragraphs [0046] and [0049]);
wherein the shaft head (70) includes a spline on an external surface of the fixing segment (71) (Figs. 3 and 10; paragraphs [0049] and [0059]); and a shaft (80) separate from the shaft head (70) and including a first externally-threaded portion (81a) for cooperation with the internally-threaded portion (fig. 10) of the shaft head (70) to selectively secure the shaft (80) to the shaft head (70), a second externally-threaded portion (81b) for cooperation with the nut (90), and an integrated nut portion (82) for tightening the first externally-threaded portion (81a) of the shaft (80) with the internally-threaded portion of the shaft head (70) (Figs. 3 and 10; paragraph [0045]).
Regarding claim 16, Joon further discloses the threaded fastener assembly according to claim 14, wherein the second externally-threaded portion (81b) of the shaft (80) has a diameter the same size as the first externally-threaded portion (81a) of the shaft (80) (Fig. 3).
Regarding claim 18, Joon further discloses the threaded fastener assembly according to claim 14, wherein the first externally-threaded portion (81a) and the second externally-threaded portion (81b) are continuous (Fig. 3; paragraph [0045]).
Claim 1 – 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fasolino (U.S. Patent No. 4,681,496).
Regarding claim 1, Fasolino discloses a threaded fastener assembly for use with a nut (28), said threaded fastener assembly comprising, in combination a shaft head (18) including a head, and an internally-threaded portion (Fig. 1; column 2, lines 42 - 55); and a shaft (10, 14, 24) separate from the shaft head (18) and including a first externally-threaded portion (12) for cooperation with the internally-threaded portion of the shaft head (18) to selectively secure the shaft (10, 14, 24) to the shaft head (18), and a second externally-threaded portion (26) for cooperation with the nut (28) (Figs. 1 and 2; column 2, line 42 – column 3, line 13).
Regarding claim 2, Fasolino further discloses the threaded fastener assembly according to claim 1, wherein the shaft (10, 14, 24) also includes an integrated nut portion (30) for tightening the first externally-threaded portion (12) of the shaft (10, 14, 24) with the internally-threaded portion of the shaft head (18) (Figs. 1 and 2; column 2, lines 61 - 65).
Regarding claim 3, Fasolino further discloses the threaded fastener assembly according to claim 2, wherein the nut portion (30) is located at an end of the shaft (the end of shaft portion 14) opposite the first externally-threaded portion (12) of the shaft (10, 14, 24) (Figs. 1 and 2).
Regarding claim 4, Fasolino discloses wherein the nut portion (30) is located between the first externally-threaded portion (12) of the shaft (10, 14, 24) and the second externally-threaded portion (24) of the shaft (10, 14, 24) (Figs. 1 and 2; column 2, lines 61 - 65).
Claims 1, 5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walker (U.S. Patent No. US 3,611,862).
Regarding claim 1, Walker discloses a threaded fastener assembly for use with a nut, said threaded fastener assembly comprising, in combination a shaft head (20) including a head (22), and an internally-threaded portion (26) (Figs. 1 and 2; column 2, lines 16 - 19); and a shaft (10) separate from the shaft head (22) and including a first externally-threaded portion (12) for cooperation with the internally-threaded portion of the shaft head (22) to selectively secure the shaft (10) to the shaft head (22), and a second externally-threaded portion (14) for cooperation with the nut (Figs. 1 and 2; column 2, lines 7 – 19).
Regarding claim 5, Walker further discloses the threaded fastener assembly according to claim 1, wherein the shaft head (22) further includes a fixing segment (24) extending from the head (22), and a spline on an external surface of the fixing segment (24), and wherein the internally-threaded portion (26) is at least partially within the fixing segment (24) (Figs. 1 and 2; column 2, lines 16 - 19).
Regarding claim 7, Walker further discloses the threaded fastener assembly according to claim 1, wherein the shaft head (22) and the shaft (10) are configured as a lug bolt (Fig. 2).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4, 6, 8, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Joon (JP 2016-121800 A).
Regarding claim 4, Joon discloses the threaded fastener assembly according to claim 2, except for wherein the nut portion (82) is located between the first externally-threaded portion (81a) of the shaft (80) and the second externally-threaded portion (81b) of the shaft (80).
However, it would have been an obvious matter of design choice before the effective filing date of the claimed invention to rearrange the parts of Joon such that the nut portion is located between the first externally-threaded portion of the shaft and the second externally-threaded portion of the shaft, as Applicant has not disclosed that it solves any stated problem of the prior art or is for any particular purpose. It appears that such a rearranged configuration would perform equally well as the invention disclosed by Joon.
Regarding claim 6, Joon further discloses wherein the shaft (80) further includes a fixing segment (Fig.3 – where 81 is pointing to) located between the first externally-threaded portion (81a) and the second externally-threaded portion (81b). Joon discloses the claimed invention except for a spline on an external surface of the fixing segment (81), and wherein the internally-threaded portion is entirely within the head (72).
However, it would have been an obvious matter of design choice before the effective filing date of the claimed invention to rearrange the parts of Joon such that the shaft further includes a spline on an external surface of the fixing segment, and wherein the internally-threaded portion is entirely within the head, as Applicant has not disclosed that it solves any stated problem of the prior art or is for any particular purpose. It appears that such a rearranged configuration would perform equally well as the invention disclosed by Joon.
Regarding claim 8, Joon discloses the threaded fastener assembly according to claim 1, except for wherein the second externally-threaded portion (81b) of the shaft (80) has a diameter larger than the first externally-threaded portion (81a) of the shaft (80).
However, it would have been an obvious matter of design choice before the effective filing date of the claimed invention to modify Joon such that the second externally-threaded portion of the shaft has a diameter larger than the first externally-threaded portion of the shaft, as Applicant has not disclosed that it solves any stated problem of the prior art or is for any particular purpose. It appears that such a modification would perform equally well as the invention disclosed by Joon.
Regarding claim 15, Joon discloses the threaded fastener assembly according to claim 15, except for wherein the second externally-threaded portion (81b) of the shaft (80) has a diameter larger than the first externally- threaded portion of the shaft (80), and an inward facing abutment is formed between the second externally-threaded portion (81b) and the first externally-threaded portion (81a) and configured to engage an outer end of the shaft head (70) opposite the head (72).
However, it would have been an obvious matter of design choice before the effective filing date of the claimed invention to modify Joon such that the second externally-threaded portion of the shaft has a diameter larger than the first externally- threaded portion of the shaft, and an inward facing abutment is formed between the second externally-threaded portion and the first externally-threaded portion (81a) and configured to engage an outer end of the shaft head opposite the head, as Applicant has not disclosed that it solves any stated problem of the prior art or is for any particular purpose. It appears that such a modification would perform equally well as the invention disclosed by Joon.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON D SHANSKE whose telephone number is (571)270-5985. The examiner can normally be reached Mon - Fri 9:30 - 5:30.
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/JASON D SHANSKE/Supervisory Patent Examiner, Art Unit 3614
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