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 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
Applicant’s arguments, see page 5, filed 16 April 2026, with respect to the rejection of claims 22, 23 and 26-28 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of claims 22, 23 and 26-28 under 35 U.S.C. 112(b) has been withdrawn.
Applicant's arguments filed 16 April 2026 have been fully considered but they are not persuasive.
The applicant argued even if the wood from Adachi does have voids open to the hole, Adachi does not acknowledge any problems related to adhesive flowing into those voids so that there is not enough adhesive afterwards. Nor is there any disclosure of modifying the wood structure to address such a problem. The examiner respectfully submits there is no requirement that the prior art must suggest the combination achieves the same advantage or result discovered by the applicant. See MPEP §2144(IV).
The applicant argued Adachi does not disclose the claimed prepared hole and final hole architecture. The examiner respectfully submits it is the combination of Adachi and Cone which renders obvious the claims.
The applicant argued the disclosed minute irregularities from Cone are fundamentally different in kind, scale, and function from the claimed voids. The irregularities in Cone are surface level undulations and contact imperfections that exist at the interface between two separate laminae. A person having ordinary skill in the art would not equate such surface irregularities with the claimed voids because: (i) the claimed voids are structural features within the body of the wood itself, typically formed by knots, cracks, checks, or natural porosity, and are not limited to surface topography; (ii) the claimed voids are defined functionally by their ability to receive and undesirably draw adhesive away from a hole, thereby degrading bonding performance, where Cone does not recognize or address any such phenomenon; (iii) the claimed invention requires that foam enter the voids and remain therein after formation of a final hole, thereby creating a barrier that prevents subsequent adhesive from entering the voids, where Cone does not recognize or address any material remaining in separate cavities to perform a sealing function; (iv) the claimed voids are specifically “open to the prepared hole” establishing a defined fluid communication pathway between the hole and the internal cavities in the wood, where Cone contains no analogous structure and the spaces between veneers are not open to a hole in the sense required by the claims, but are instead planar interfacial regions between two layers that are being bonded together. The examiner respectfully submits this argument is not commensurate in scope with the claims. The claims do not provide any limitations requiring the claimed voids to be of any particular kind, scale, and function not addressed in the rejection of record. Regarding argument (i), the applicant’s argument is flawed in that the claimed voids not being limited by surface topography does not preclude a finding from the prior art where surface irregularities are considered to correspond to the claimed voids. In other words, a void not being limited as being a void on the surface of the wood material, does not require the void to not be on the surface of the wood material. Moreover, this argument is not commensurate in scope with the claims because the claims do not require the voids to be exclusively within the body of the claimed piece of wood. On the contrary, the applicant has presented a limitation requiring the void to be open to the hole; that is, a void which corresponds to a surface topography of the piece of wood within the hole. Regarding argument (ii), the presence of surface irregularities on a wooden material would most certainly provide a volume into which a flowable adhesive would migrate. Moreover, filling of these irregularities with foamed glue is recognized by Cone as preventing an undesired weakening of bond strength. Again, there is no requirement that the prior art must suggest the combination achieves the same advantage or result discovered by the applicant. Regarding argument (iii), the combination of Adachi and Cone results in Cone’s foamed glue being permitted to flow into minute irregularities of the surface of the wooden material of Adachi in order to prevent a weakening of a bond strength of Adachi’s glued-in rod structure. Regarding argument (iv), this argument is not commensurate in scope with the claims. The language of the claims does not limit the claimed voids to be cavities only located within the claimed piece of wood. In other words, surface irregularities located on the piece of wood within the prepared hole may correspond to the claimed voids. It is the position of the examiner that one skilled in the art would look to the teachings of Adachi and Cone and arrive at the claims, as proposed in the rejection of record.
The applicant argued: equating Cone’s surface irregularities with Applicant’s voids would require one skilled in the art to ignore the clear structural and functional distinctions between interfacial surface roughness and internal wood voids; and the examiner’s position requires redefining Cone’s surface irregularities as applicant’s voids, which is not supported by the disclosures of the references or by the understanding of one skilled in the art. The examiner respectfully submits these arguments are not commensurate in scope with the claims. The claimed voids are not required to be in a location beneath the surface of the claimed piece of wood, and not present in the surface of said piece of wood.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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