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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/22/26 has been entered.
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.
Claim(s) 1-2, 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sartisson (EP 4513045) in view of Meyerovich (DE 102014101693; English translation relied upon for reference herein, submitted 8/26/25) and Dexter Magnetic Technologies (Pages 1-5).
Claim 1: Sartisson provides a self-piercing rivet (12, Fig. 2) for connecting at least two elements (Fig. 3a), wherein the self-piercing rivet has a coating ([0040]), and wherein: one of the components is nickel ([0040]), and an outer surface of the self-piercing rivet is provided with the coating ([0040]); but fails to explicitly disclose the coating has a melting temperature of at least 750 °C; and the coating comprises two different components, wherein one of the components is nickel.
However, Meyerovich teaches coating a rivet with a NiP coating ([0013-0019]).
Dexter Magnetic Technologies teaches NiP has a melting point range from 880°C - 1455°C depending on phosphorous level (Page 4, third paragraph).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute the coating as taught by Meyerovich/Dexter for the coating provided by Sartisson in order to provide a rivet with excellent corrosion protection while exhibiting high abrasion resistance (Meyerovich [0017]).
Claim 2: Sartisson provides the self-piercing rivet is a solid self-piercing rivet, a semi-hollow self-piercing rivet or a hollow self-piercing rivet (Fig. 2, [0041]).
Claim 4: Dexter Magnetic Technologies teaches the melting temperature of the coating is at least 850° C (Page 4, third paragraph).
Claim 5: Meyerovich teaches the coating contains nickel to an extent of at least 80% by weight ([0019]).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sartisson (EP 4513045) in view of Meyerovich (DE 102014101693; English translation relied upon for reference herein submitted by examiner as NPL 8/26/25) and Dexter Magnetic Technologies (Pages 1-5), and HOLZAPFEL GROUP (submitted as NPL by examiner 3/10/26).
Claim 6: Sartisson as modified by Meyerovich/Dexter provides a coating containing nickel and at least 7 wt% of phosphorous by weight [Meyerovich [0019]) but fails to explicitly disclose the coating containing phosphorus to an extent of at least 12% by weight.
However, HOLZAPFEL GROUP teaches a coating that contains nickel, and phosphorous to an extent of at least 12% by weight (Page 2; 'phosphorus concentrations of approximately 10% provide a high level of corrosion protection; 'phosphorus rate 9-13%').
Therefore, it would have been obvious to one of ordinary skill in the art to modify the coating provided by Sartisson/Meyerovich/Dexter to include the at least 12% phosphorus by weight as taught by HOLZAPFEL GROUP in order to provide a rivet with a coating that contained nickel and phosphorous to an extent of at least 12% by weight because it is prima facie obvious to combine prior art elements by known methods to achieve predictable results (MPEP 2143 (A)).
Claim 7: HOLZAPFEL GROUP teaches the coating is applied by a chemical coating method (Page 1).
Claim(s) 8 -11, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sartisson (EP 4513045) in view of HOLZAPFEL GROUP (submitted as NPL by examiner 3/10/26), and Feldstein (US 2007/0184271).
Claim 8: Sartisson provides a method for producing a self-piercing rivet (12, Fig. 2), the method comprising: providing a self-piercing rivet blank; applying a coating to the self-piercing rivet blank by a chemical coating method ([0013]; and obtaining the self- piercing rivet (Fig. 2-3a); wherein an outer surface of the self-piercing rivet is provided with the coating ([0040], a one layer system of PURE Ni coating would make the coating on the outermost layer of the rivet); but fails to explicitly disclose comprising a redox reaction and the self-piercing rivet blank is thermally treated after the application of the the coating at a temperature of at most 300° C and for a duration of at least 6 hours.
However, HOLZAPFEL GROUP teaches a coating that contains nickel and a chemical coating method comprises electroless nickel plating (Page 1).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute the coating method provided by Sartisson for the coating method as taught by HOLZAPFEL GROUP in order to provide a coating with a high degree of durability and corrosion protection as well as withstanding dimensional stability because it is prima facie obvious to substitute one known prior art element for another to achieve predictable results (MPEP 2143(B)).
Sartisson/HOLZAPFEL GROUP fails to disclose the self-piercing rivet blank is thermally treated after the application of the coating at a temperature of at most 300° C and for a duration of at least 6 hours.
However, Feldstein teaches wear resistant composite plated coatings, receive a post plating heat treatment of at least 200° C. Also, electroless nickel phosphorous coatings are heat treated to a temperature of about 350°C to 400° C for one or more hours to achieve maximum hardness of the metal matrix [0035;0038]).
Therefore, it would have been obvious to one of ordinary skill in the art to modify the method provided by Sartisson/HOLZAPFEL GROUP to include the heat treatment step as taught by Feldstein in order to achieve maximum hardness of the coating.
Further, based on the teachings of Feldstien one of ordinary skill in the art could arrive at the conclusion to provide the self-piercing rivet blank to be thermally treated after the application of the coating at a temperature of at most 300° C. and for a duration of at least 6 hours, because when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR Int'l. Co. v. Teleflex lnc., 127 S.Ct. 1742 (2007).
Claim 9: HOLZAPFEL GROUP teaches a coating that contains nickel and a chemical coating method comprises electroless nickel plating (Page 1).
Claim 10: Sartisson/HOLZAPFEL GROUP/Feldstein teaches electroless nickel phosphorous coatings are heat treated to a temperature of about 350° C for one or more hours to achieve maximum hardness of the metal matrix (Feldstein: [0035]); but fails to disclose the self-piercing rivet blank is thermally treated for a duration of at most 48 hours.
However, based on the teachings of Feldstein one of ordinary skill in the art could arrive at the conclusion to provide the self-piercing rivet blank to be thermally treated after the application of the coating for a duration of at most 48 hours, because when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR Int'l. Co. v. Teleflex lnc., 127 S.Ct. 1742 (2007).
Claim 11: Feldstein teaches the thermal treatment begins at most 24 hours after the application of the coating to the self-piercing rivet blank ([0038]).
Claim 17: Sartisson provides a method for producing a self-piercing rivet (12, Fig. 2), the method comprising: providing a self-piercing rivet blank; applying a coating to the self-piercing rivet blank by a chemical coating method ([0013]; and obtaining the self- piercing rivet (Fig. 2-3a); wherein an outer surface of the self-piercing rivet is provided with the coating ([0040], a one layer system of PURE Ni coating would make the coating on the outermost layer of the rivet); but fails to explicitly disclose comprising a redox reaction and the self-piercing rivet blank is thermally treated within 24 hours after the application of the coating to the self piercing rivet blank.
However, HOLZAPFEL GROUP teaches a coating that contains nickel and a chemical coating method comprises electroless nickel plating (Page 1).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute the coating method provided by Sartisson for the coating method as taught by HOLZAPFEL GROUP in order to provide a coating with a high degree of durability and corrosion protection as well as withstanding dimensional stability because it is prima facie obvious to substitute one known prior art element for another to achieve predictable results (MPEP 2143(B)).
Sartisson as modified by HOLZAPFEL GROUP fails to disclose the self-piercing rivet blank is thermally treated within 24 hours after the application of the coating to the self-piercing rivet blank.
However, Feldstein teaches the thermal treatment begins at most 24 hours after the application of the coating to the self-piercing rivet blank ([0038]).
Therefore, it would have been obvious to one of ordinary skill in the art to modify the method provided by Sartisson/HOLZAPFEL GROUP to include the heat treatment step as taught by Feldstein in order to achieve maximum hardness of the coating.
Response to Arguments
Applicant's arguments filed 4/22/26 have been fully considered but they are not persuasive. The applicant’s arguments are provided below in italics followed by the examiner’s response.
“With respect to claims 10 and 11, Feldstein was cited for teaching a post-plating heat treatment of electroless nickel phosphorous coatings. Specifically, Feldstein discloses at paragraph [0035] that "a post-plating heat treatment of at least 200 degrees Celsius is included within the scope of this invention. Electroless nickel phosphorous coatings are heat treated to a temperature of about 350 to 400 degrees Celsius for one or more hours to achieve maximum hardness of the metal matrix" (see Feldstein, |[0035]). Feldstein's teaching is thus directed to heat treatment at a temperature of about 350 to 400° C for the purpose of achieving maximum hardness of the coating, not at a temperature of at most 300° C, as recited in amended claim 8. The purpose described in the present application is distinct: to allow hydrogen to escape from the self-piercing rivet before the coating cures, thereby reducing the risk of hydrogen embrittlement of elements connected by the self-piercing rivet (see the specification, T[0053]). Feldstein, therefore, does not disclose, teach, or suggest the feature of "wherein the self-piercing rivet blank is thermally treated after the application of the coating at a temperature of at most 300° C for a duration of at least 6 hours" recited in amended claim 8.” The examiner respectfully disagrees, Feldstein teaches wear resistant composite plated coatings, receive a post plating heat treatment of at least 200° C. Also, electroless nickel phosphorous coatings are heat treated to a temperature of about 350°C to 400° C for one or more hours to achieve maximum hardness of the metal matrix [0035;0038]).
In [0038], Feldstein teaches heat treating at a temperature above 200°C that includes temperatures between 200- 300°C which would be within the required limitations.
In [0035], Feldstein teaches heat treating at temperatures for one or more hours in order to achieve maximum hardness of the particular metal matrix. One of ordinary skill in the art could look to the teachings of Feldstein and could arrive at the conclusion to provide the self-piercing rivet blank to be thermally treated after the application of the coating at a temperate of at most 300°C for a duration of at least 6 hours, because when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR Int'l. Co. v. Teleflex lnc., 127 S.Ct. 1742 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda J Kreiling whose telephone number is (571)272-6091. The examiner can normally be reached M-F 8-5 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Amanda Kreiling/Examiner, Art Unit 3726 4/28/2026
/JASON L VAUGHAN/Primary Examiner, Art Unit 3726
Prosecution Insights