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 .
Election/Restrictions
Applicant's election with traverse of claims 13-26 in the reply filed on 02/10/2026 is acknowledged. The traversal is on the ground(s) that “[c]laim 13 and claim 27 . . . have unity via the hardened tip region.” Remarks (02/10/2026) at 1. This is not found persuasive.
The principles of unity of invention are used to determine the types and claimed subject matter and the combinations of claims to different categories of invention that are permitted to be included in a single national stage patent application. The basic principle is that an application should relate to only one invention or, if there is more than one invention, that Applicant would have a right to include in a single application only those inventions which are so linked as to form a single general inventive concept. See MPEP §1893.03(d).
Whether or not any particular technical feature makes a “contribution” over the prior art, and therefore constitutes a “special technical feature,” should be considered with respect to novelty and inventive step. For example, a document discovered in the international search shows that there is a presumption of lack of novelty or inventive step in a main claim, so that there may be no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, leaving two or more dependent claims without a single general inventive concept.
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Lack of unity of invention may be directly evident “a priori,” i.e., before considering the claims in relation to any prior art, or may only become apparent “a posteriori,” i.e., after taking the prior art into consideration. For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A + X and A + Y, unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art. This method for determining whether unity of invention exists is intended to be applied even before the commencement of the international search. Where a search of the prior art is made, an initial determination of unity of invention, based on the assumption that the claims avoid the prior art, may be reconsidered on the basis of the results of the search of the prior art. See MPEP §1850(II).
Here, because a screw having a hardened tip region is well known in the art (see, e.g., US 2001/0014262 A1; US 6,364,972 B1; US 2004/0235576 A1; and US 2007/0243043 A1), the common technical feature identified by Applicant does not define a contribution over the prior art and unity is lacking a posteriori.
The requirement is still deemed proper and is therefore made FINAL.
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.
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.
Claim(s) 13-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0271978 A1 in view of any one of US 2001/0014262 A1; US 6,364,972 B1; US 2004/0235576 A1; and/or US 2007/0243043 A1.
Claim 13
US 978 teaches a process for producing a hardened part [title], comprising:
(a) providing a part made of hardenable steel;
(b) applying a coating including zinc (this is a first coating, so it reads on the claimed “primary coating”); and
(e) heating the coated steel part, at least in part and with the admission of oxygen, to a temperature required to harden the steel part [abstract].
US 978 does not specify that the hardenable steel part is a screw body or that the portion of the steel body (i.e., “at least in part”) subjected to the heat treatment is the tip of the screw.
US 262, US 972, US 576, and US 043 all teach that it is known in the art to selectively heat treat the tip of a steel screw to harden it. Such a tip of increased hardness to permit, e.g., more effective penetration into a substrate [US 972 at abstract].
Since US 978 does not limit the hardened part treated according to its method, it is the Primary Examiner’s position that it would have been obvious to one of ordinary skill in the art to utilize the method of US 978 on any portion of a steel part which that person of ordinary skill desires to harden, including the tips of steel screws in order to facilitate better penetration of the screw.
Claim 14
US 978 requires no hardening step between providing the steel part and coating with Zn. The Primary Examiner interprets this silence as a fair teaching that none is performed.
Claim 15
US 972 and US 576 both teach that it is known in the art to case harden screws, thereby increasing the hardness and durability of the screw overall [US 576 at [0007] and US 972 at 5:20]. Consequently, it would have been obvious to one of ordinary skill in the art to case harden the screw in order to provide additional hardening of the shank, head, etc., to increase the durability of the screw overall.
Claim 16
US 576 teaches that it is known in the art to accomplish case hardening by carburization [0007]. Consequently, it would have been obvious to one of ordinary skill in the art to carry out case hardening in this known manner.
Claim 17
US 576 teaches suitable carbon content for a steel screw to bee 0.08-0.50 % by weight of the steel [4:29-35]. Consequently, it would have been obvious to one of ordinary skill in the art to provide a screw having such a composition as such is known in the art for the formation of a screw with a hardened tip.
Claims 18 & 19
None of the cited prior art teaches the claimed Zn coating thickness. Nevertheless, the thickness of a galvanizing layer on steel is a result-effective variable: it must be thick enough to provide the desired coverage and protection, but not so thick as to be wasteful of materials or deleteriously affect subsequent processing. Consequently, it would have been obvious to one of ordinary skill in the art to modify the thickness of the Zn coating by routine experimentation. See MPEP § 2144.05.
Claim 20
US 978 teaches application of the Zn coating by hot dip galvanizing [0031].
Claims 21 & 22
None of the cited prior art teaches spinning the screw to remove excess Zn coating material. Nevertheless, it would have been obvious to one of ordinary skill in the art to utilize any known or suitable means to remove excess coating and arrive at the desired Zn coating thickness, including spinning to remove the excess coating through centrifugal force from all portions of the coated screw body.
Claim 23
US 043 teaches induction heating of the tip to harden it [abstract]. Consequently, it would have been obvious to one of ordinary skill in the art to utilize this known means of hardening.
Claim 24
None of the cited prior art teaches an additional coating layer. It is the Primary Examiner’s position that an additional protective coating layer, such as an oil layer or another protective, anti-oxidation layer would have been obvious to promote longevity of the screw.
Claims 25-26
None of the cited prior art teaches the specific ratio of a max outer thread diameter of a thread of the screw body to a pitch of the thread. Nevertheless, the prior art places no limitation on the types of screws that may be treated and it would have been obvious to one of ordinary skill in the art to utilize the process of the combined cited prior art to treat any screw where tip hardening is advantageous, there being no criticality ascribed to this ratio in the record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
21 August 2026
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