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 .
Claim Interpretation
Claim limitation “locking member” (e.g. claim 1) is no longer interpreted under 112(f) in view of amendments to recite structural detail thereof.
Claim Objections
Claims 21 and 23 are objected to because of the following informalities:
Claims 21 and 23 recite “as a function of central angle of said second end”, which is grammatically incorrect. It appears as if this should recite, for example, --as a function of a central angle of said second end--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 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.
The term “low-profile” in claims 1 and 22 is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree (the term is not recited in the disclosure), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For example, it is unclear what would be considered a “low” profile, or how low it would need to be to be considered as such.
The term “gradually” in claims 21 and 23 is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree (the term is not recited in the disclosure), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For example, it is unclear what would be considered “gradual”, or how gradual it would need to be to be considered as such.
Claims 21 and 23 each recite “an asymmetric outer lateral surface that gradually extends outwardly as a function of central angle of said second end of said cylindrical alignment shaft”. The limitation is generally unclear. What does the lateral surface extend outwardly relative to? How is the “central angle” defined, noting that angles are defined between two lines/edges or surfaces? By what function does it extend relative to this angle? The limitation will be interpreted as best understood.
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.
Claims 1 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over You et al. (KR2011116830, with reference to translation) in view of Bookheimer et al. (2016/0195119 previously cited but not relied upon).
Claim 1: You et al. discloses an insulated panel lateral connector for connecting two side-by-side insulated panels (intended use, see below), said insulated panels comprising foam sandwiched between sheeting material (this pertains to the article worked upon by the claimed apparatus, see below), said connector (100) comprising: a body having a low-profile (e.g. relatively flat and thin) flange (140) and a cylindrical aligning shaft (120 - paragraph 15) extending at a first end (left end of the shaft in Fig. 1) from a first plane surface of said flange (Fig. 1), wherein a second plane surface (left side in Fig. 1) of said flange opposed to the side plane surface defines a flat outer most surface of the connector (at least the portion of flange surrounding 110), and said cylindrical aligning shaft being insertable into a hole in said sheeting material of one of said insulated panels until said flange engages said sheeting material of said one of said insulated panels (intended use, though the fastener is capable of this function - see Fig. 10); and a rotatable locking member (130) extending from a second (right) end of said cylindrical alignment shaft and having a cam surface (130/132) for engaging with said sheeting material and with an aperture in said sheeting material of another one of said two side-by-side insulated panels (intended use).
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. While the fastener 100 is not necessarily used as claimed, it is nevertheless structured as claimed and presumed capable of performing the claimed functions. It is also noted that a claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115.
The drive (110) of You is not a recessed drive extending through said upper surface of said flange and inside the cylindrical alignment shaft, but rather is a protrusion extending from the flange. However, Bookheimer et al. teaches a similar cam-type fastener wherein the drive (112) may be recessed into the shaft of the fastener as an alternative to a protrusion (paragraph 33). Because both drive types are known in the art and recognized as equivalents, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one for the other to achieve the predictable result of providing a tool-engageable drive for the fastener (MPEP 2143 I. B.).
Claim 21: Referring to You et al., said rotatable locking member is an asymmetric extension (e.g. rotationally asymmetric), wherein the cam surface comprises an asymmetric outer lateral surface (angled surfaces thereof) that gradually extends outwardly as a function of central angle of said second end of said cylindrical alignment shaft (the angled surface slopes away from and toward the outer radial side of the fastener, where the limitation “as a function of central angle of said second end of said cylindrical alignment shaft” is not particularly limiting in view of its indefiniteness for lack of definition of the function and central angle as discussed in the 112(b) rejection above).
Allowable Subject Matter
Claims 22-23 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
You et al. is considered the closest art of record regarding the fastener per se, and while it is presumably capable of being used with the claimed insulated panel structure, the art of record provides not teaching or motivation for actually providing it in combination therewith. The remaining art of record does not disclose or teach the claimed combination of fastener and panel structure.
Response to Arguments
Applicant's arguments filed 5/14/2026 have been fully considered. Applicant essentially relies on amendments to the claims to overcome the prior art of record. However, the claims have been addressed in the new grounds of rejection above.
In the arguments, it is unclear to what “D2” refers.
Applicant also argues the following (italicized) regarding D1 (You et al.):
The person skilled in the art presented with D1 (see paragraph 4: "The purpose of the present invention is to provide a fastener alignment pin that can quickly and easily align the central axes of fasteners of a plurality of fastening members to be screw connected.") will understand that the fastener alignment pin presented therein is mainly used for aligning flanges (e.g., flanges of heavy-duty metallic pipe/shafts) that are normally screwed together using bolts and nuts. In this context, it will be appreciated by the person skilled in the art that a significant torque must be exerted on the head 110 of the fastener alignment pin of D1 in order to properly rotate it and align the flanges of heavy-duty pipes. Such a significant torque is normally applied using heavy-duty tools like a wrench. It will be appreciated that the head of D1 (see Figures 4, 5a and 5b) must therefore be large and robust enough to handle such a significant torque without damage (e.g., to prevent the driving tool from stripping the drive or from getting stuck inside the drive). The person skilled in the art will appreciate that the structural strength of the fastener alignment pin would be significantly weakened if the heads shown in Figures 4, 5a and 5b were to be recessed inside the body 120, thereby making it unsuitable for use in the context of D1.
Applicant’s arguments are speculatory and lack supporting evidence. It is unclear exactly how much torque would be required to use the device of D1 and there is no established reason to believe a recessed drive would be insufficient. Furthermore, one of ordinary skill would generally recognize that plenty of fasteners exist in the prior art, including those requiring substantial torque, which use recessed drive (e.g. hex, Torx, square, star, etc.).
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
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