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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 20 June 2025 has been entered.
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 22, 23 and 26-28 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.
Each of claims 22, 23 and 26-28 recite the limitation "the final hole," at least once. There is insufficient antecedent basis for this limitation in the claims. Independent claim 21 has been amended to delete the “a final hole” limitation which previously gave proper antecedent basis for this limitation in claims 22, 23 and 26-28. The examiner recommends amending each of claims 22, 23 and 26-28 to recite “the hole” to overcome this rejection.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4-9 and 21-29 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. US 2020/0056368 (hereinafter “Adachi”), and further in view of United States Patent Number 4,115,178 (hereinafter “Cone”).Regarding claims 1, 4, 21, 23, 24 and 29 Adachi teaches a glued-in rod (GIR) 100 (glued-in-rod structure configured to receive a rod) for joining wooden building components (piece of wood comprising one or more voids that is open to a prepared hole, or the walls of the hole open to the one or more voids) together (paragraph [0023]). Adachi teaches the building component 200 includes a prepared hole 210 comprising a central axis and having a diameter configured to receive the GIR (rod) 100 and a layer of glue GAP between walls of the hole 210 and the GIR (rod) 100 (Figures 3A – 3D, and paragraphs [0025] and [0033]). Adachi teaches a flowable adhesive injected into and at least partially filling the (final) hole 210 (paragraph [0032] and Figures 3C – 3D), which corresponds to the final hole is configured to receive the flowable adhesive and the final hole being concentric with the central axis. Adachi does not explicitly teach a foam injected into the prepared hole, the foam at least partially filling at least one void of the one or more voids that is open to the prepared hole. Cone teaches glued, laminated assemblies of wooden material which are made by spreading a liquid foamed glue on a surface of a first lamina, where the foam glue is spread and wets the entire surface of the wooden material, which improves bonds in the final product (abstract and column 1, line 56 through column 2, line 7). Cone also teaches the foamed glue is permitted to flow into minute irregularities (foam at least partially filling at least one void of the one or more voids) of the wooden surface without the use of increased pressure, which would weaken bond strength (column 1, line 56 through column 2, line 7, and column 5, line 66 through column 6, line 5). Adachi and Cone are analogous inventions in the field of glued wooden composites. It would have been obvious to one skilled in the art at the time of the invention to modify the surface of the wooden building components (piece of wood comprising one or more voids that is open to a prepared hole, or the walls of the hole open to the one or more voids) of Adachi with the liquid foam of Cone to permit the foamed glue to flow into minute irregularities of the wooden material to spread and wet the entire surface of the wooden material; thereby, improving the bond formed in the final product. This modification, which requires the foam of Cone to spread and wet the entire surface of the wooden material to fill minute irregularities within the formed hole 210 of Adachi, corresponds to the final hole is sealed off against the at least one void (in the claimed piece of wood) by the foam to prevent the flowable adhesive from entering the at least one void.Regarding claims 2 and 22 In addition, Adachi teaches the sidewalls of the (final) hole 210 are portions of the wooden building component 200, and the foamed glue (from Cone) which penetrates into the voids therein (Adachi – Figure 2, and paragraphs [0023] and [0025]). Regarding claims 5 and 25 In addition, Cone teaches upon application, the foam loses fluidity (hardens into a solid) (column 5, lines 31-33), and (from the combination of Adachi and Cone) corresponds to the hardening of the foam occurs in the prepared hole and at least one void into which said foamed glue is present.Regarding claims 6 and 26 In addition, Adachi teaches the (final) hole 210 is a drilled hole (paragraph [0030]).Regarding claim 7 In addition, Adachi teaches the injection of the adhesive is continued until the adhesive flows out from the adhesive fill check hole 230, where the adhesive is subsequently cured until sufficiently hardened (paragraph [0033]), which corresponds to a pressure which is present within the gap GAP (see Figure 3C and paragraph [0032]) when injecting the adhesive corresponds to a structure of the final hole which enlarges a diameter of the prepared hole as compared to a diameter of the prepared hole when the foam was injected.Regarding claims 8 and 27 In addition, Adachi illustrates a collar 140 within the (final) hole 210 which is configured to center the rod 100 within the (final) hole 210 (Figure 2).Regarding claims 9 and 28 In addition, Adachi teaches the rod 100 includes a small diameter portion 120 having an external thread 120B extending in a spiral (helix) on an outer peripheral surface, where the external thread 120B may be an example of irregularities for enhancing the adhesive bonding strength of the small diameter portion 120 (paragraph [0025], and Figures 1-2), which corresponds to a helix within the (final) hole 210 configured to center the rod within the (final) hole 210.
Response to Arguments
Due to either its cancellation or amendments, the rejections of: claim 3 under 35 USC 112(a); and claims 3 and 21 under 35 USC 112(b) have been withdrawn.
Applicant's arguments filed 20 June 2025 have been fully considered but they are not persuasive. The applicant argued a person having ordinary skill in the art would not combine Adachi with Cone because the technical objectives of Adachi and Cone are unrelated. Adachi focuses on structural load transfer, where the core challenge is ensuring adhesive integrity. Cone addresses surface-area bonding for plywood lamination. The examiner respectfully disagrees and contends that a person having ordinary skill in the art would combine Adachi with Cone to arrive at the claimed invention because Cone recognizes the use of a foamed material applied onto a wooden substrate to fill minute irregularities in the topography of the surface of the wooden material improves a bond to the wooden material. A person having ordinary skill in the art would have recognized such an improvement to the bond would be present in Adachi’s glued-in rod article. The applicant argued a skilled artisan would not use the press or rollers from Cone in the teachings of Adachi because the equipment used by Cone is incompatible with the cylindrical hole of Adachi. This argument is not commensurate in scope with the rejection of record. The examiner does not contemplate using a press or rollers within the drilled hole of the glued-in rod article of Adachi. Cone provides teaching and motivation for why a person having ordinary skill in the art would use a foam material to fill irregularities in the surface of a wooden product. The applicant argued Adachi is silent as to the problem of voids open to the drilled hole, but the cylindrical hole in Adachi is open to voids nonetheless. The examiner respectfully submits that a prior art reference is not required to state the same problem highlighted by the applicants in the instant application. The applicant’s admission on the record that the cylindrical hole in Adachi is open to voids is appreciated. The applicant argued the prior art references do not teach or suggest preparing a hole or surface to receive an adhesive by sealing voids to which the hole or surface are open. The examiner respectfully disagrees and contends the foam from Cone which is disclosed as filling minute irregularities in the surface of the wooden material corresponds to sealing voids to which the surface is open, and the modification of using such in the cylindrical hole from Adachi, which is open to voids, corresponds to preparing a hole or surface to receive an adhesive. The combination of these two references corresponds to the feature highlighted by the applicant. Independent claims 21 and 29, and dependent claims 2, 4-9, 22-28 are also obvious over the prior art currently of record for substantially the same reasons discussed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783