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 § 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.
Claim 11 is 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.
Claim 11 recites the limitation “the polymeric sealant”. This limitation is indefinite as it is unclear if it refers to the prior claimed “super-tough elastic sealant” that is polymeric, or if it refers to a polymeric component of such. Appropriate clarification and correction is required. Examiner recommends canceling this limitation so that the claim would read “the super-tough elastic sealant is polymeric and also covers a region…”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 4-5, 7, 10-14, 16-17, and 23, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Toback et al. (US 5,304,023).
With regard to claim 1, Toback discloses a screw (10), comprising: a screw head (20) and a screw shaft (30) which protrudes from an underside of the screw head (as seen in Figs. 1, etc.) and has a self-forming or self-tapping thread (40 and/or 46), wherein the underside of the screw head has a bearing area (the underside of 20 as seen in Fig. 1 not including 26) and at least one annular recess (26) extending around the shaft between the bearing area and the shaft (as seen in Fig. 1, etc.), wherein a coating (50) made of a super-tough elastic sealant (see col. 3 lines 41-51 disclosing elastic materials (e.g. silicone, urethane, neoprene or butyl rubber composition, etc.) that are considered super tough in comparison to other weaker materials ) is attached to the underside of the screw head (as seen in Fig. 1); and wherein the super-tough elastic sealant is both elastically and plastically deformable under pressure (i.e. as the material disclosed in col. 3 lines 41-51 are all elastically and plastically deformable depending what forces they are subjected to, and thus are deformable in the claimed manner at some applied pressure).
With regard to claim 2, Toback discloses that the shaft is perpendicular or substantially perpendicular with respect to the bearing area (as seen in Fig. 1, etc.) and/or wherein the bearing area is shaped as a flat circular ring and has a radial width which is greater than or equal to the radial width of the recess (as seen in Figs. 1, etc.).
With regard to claim 4, Toback discloses that the shaft has a drilling portion (46) featuring at least one cutting edge (as seen in Fig. 1, etc.), wherein the thread is formed between the drilling portion and the screw head (as seen in Fig. 1, etc.).
With regard to claim 5, Toback discloses that the shaft has a portion which tapers towards the free end of the shaft (e.g. at 34 as seen in Fig. 1, 6, etc.), wherein the thread is at least partially formed between said portion and the screw head (as seen in Fig. 1, etc.), wherein the tapering portion is provided with no thread or with some of the thread (as seen in Fig. 1, etc.).
With regard to claim 7, Toback discloses that the super-tough elastic sealant is non-reactive (as interpreted in light of Applicant’s specification at least on page 11 first full paragraph Applicant at least considered silicone to be non-reactive).
With regard to claim 10, Toback discloses that the super-tough elastic sealant shows an elongation at break of 150% to 250%, in a high-speed tensile test below 200 mm/min according to ISO 18872 and EN ISO 527-1 (as such is a well-known material property of at least silicone, neoprene rubber, etc.).
With regard to claim 11, Toback discloses that the super-tough elastic is polymeric (i.e. as neoprene, polyurethanes, etc. are polymers) and the polymeric sealant also covers a region on the shaft (as seen in Fig. 1, etc.).
With regard to claim 12, Toback discloses that the screw is electrically conductive (i.e. as it is disclosed as metal (see col. 2 lines 57-66, etc. it is considered at least partially electrically conductive).
With regard to claim 13, Toback discloses a screw assemblage (as seen in Figs. 1, 6, etc.), comprising: a screw (10) according to claim 1 (as detailed in the rejection of claim 1 above), a first body (12), and a second body (14), wherein at least the second body has an internal thread produced by screwing in the screw (as seen in Fig. 6), wherein the first body is enclosed, between the screw head and the second body (as seen in fig. 6), the thread of the screw is in engagement with the internal thread of the second body (as seen in Fig. 6), and the sealant of the coating is situated between the bearing area and the first body (as seen in Fig. 6).
With regard to claim 14, Toback discloses that the first body has an internal thread produced by screwing in the screw (as seen in Fig. 6 showing the thread therein), wherein the thread of the screw is in engagement with the internal thread of the first body (as seen in Fig. 6).
With regard to claim 16, Toback discloses a bead (i.e. the portion of 50 radially outside of the head in Fig. 6) which encircles the screw head (as seen in Fig. 6).
With regard to claim 17, Toback discloses that the first body and the second body are electrically connected (as they are disclosed as metal and touching, see Fig. 6 they are considered at least electrically connected to some degree) and the screw is electrically conductive (i.e. as it is disclosed as metal (see col. 2 lines 57-66, etc. it is considered at least partially electrically conductive).
With regard to claim 23, Toback discloses that the super-tough elastic sealant has a Shore A hardness of 20 to 100 measured according to DIN EN ISO 868:203-10 (as such is a well-known material property of at least silicone (e.g. 10-90, commonly 40-80), neoprene rubber (e.g. 40-80, most commonly 60±5), etc.).
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 3, 6, 8-9, 15, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Toback et al. (US 5,304,023) alone.
With regard to claim 3, Toback discloses that the bearing area has an area A (as seen in Fig. 1, 6, etc.), a total area TA under the screw head (as seen in Fig. 1, 6, etc.), and a cross-section C of the shaft (as seen in Figs. 1, 6, etc.) which lies in the plane of the bearing area (as seen in Figs. 1, 6, etc.), but is silent as to their exact sizes and thus fails to explicitly disclose that the bearing area has value A is at least 30% of the total area TA under the screw head less the cross-sectional area C of the shaft which lies in the plane of the bearing area. However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have modified the device of Toback such that the area A is at least 30% of the total area TA less the cross-sectional area C of the shaft as a change in the proportion of the prior art is generally recognized as an obvious matter of design choice/routine skill in the art. See MPEP §21440.05 and Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."), etc.. Such a modification would provide the expected result of modifying the contact force of the screw for a given application.
With regard to claim 6, Toback discloses that the layer has a thickness of the coating outside a region of the recess, but is silent as to its exact thickness and thus fails to explicitly disclose that t the layer thickness of the coating outside the region of the recess is between 0.1 mm and 0.9 mm. However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have modified the device of Toback such that the layer thickness of the coating outside the region of the recess is between 0.1 mm and 0.9 mm as a change in the proportion of the prior art is generally recognized as an obvious matter of design choice/routine skill in the art. See MPEP §21440.05 and Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."), etc.. Such a modification would provide the expected result of modifying the amount of sealant used and/or the amount of sealing desired.
With regard to claim 8, Toback fails to disclose that the sealant contains 40% to 90% by weight of a resin component consisting of a polymeric resin or a mixture of two or more polymeric resins, wherein the resin or resins preferably comprise or consist of elastic resin or resins. However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have selected a material that contains 40% to 90% by weight of a resin component consisting of a polymeric resin or a mixture of two or more polymeric resins for the sealant as it has been held to be within the general skill in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Such a modification would have provided the expected benefits of providing good seal with good chemical, temperature, wear, etc. resistance.
With regard to claim 9, Toback fails to disclose that the resin component of the sealant comprises one or more acrylate polymers and/or one or more acrylate copolymers and in particular consists of acrylate polymers and acrylate copolymers. However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have the resin component of the sealant comprises one or more acrylate polymers and/or one or more acrylate copolymers and in particular consists of acrylate polymers and acrylate copolymers as it has been held to be within the general skill in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Such a modification would have provided the expected benefits of providing good seal with good film forming capabilities, good uv resistance, high adhesion, and/or good water/weather resistance, etc.
Allowable Subject Matter
Claims 18-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 29 July 2026 have been fully considered but they are not persuasive.
Applicant’s first main argument is that the material of the coating of Toback cannot be considered super-tough. These argument are not persuasive. First Examiner notes that the term super-tough is not a recognized specific term of art and as Applicant has not specifically defined such Examiner’s above and prior broadest reasonable interpretation that such requires an elastic material that is tougher in some way than other materials is reasonable. It appears Applicant is attempting to argue a much narrower interpretation than what is recited in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus this argument is not persuasive. Accordingly it is recommended Applicant claim the exact material that it believes is “super-tough” .
Applicant’s second main argument is that the materials of the prior art reference are not both elastically and plastically deformable under pressure. This new limitation is not persuasive as all elastic material have a point where they can be plastically deformed and thus there are pressures where they have elastic deformation behavior and pressures where they have plastic deformation behavior. Additionally if pressure are applied long enough they can also experience plastic deformation.
Regarding the 1.132 declaration/affidavit filed 30 July 2026, Examiner has fully considered such but it is not sufficient to overcome the above grounds of rejection for several reasons. Primarily the declarations arguments and alleged statements of fact are not commiserate in scope with the claimed invention such that though the specific materials the inventor may have tested show certain features and/or benefits as the claims are not limited to just those specific materials there is little value to such. Furthermore the comparative examples tested by the inventor (e.g. polyethylene and polyamide) are not commiserate in scope with the materials of Toback (e.g. neoprene, urethane, silicone, etc.) and are likewise of little value. Finally as the declaration is by one of the listed inventors it is of less value than were it by an uninterested party.
In the interest of advancing prosecution, if Applicant does not wish to rewrite claim 18 in independent form, Examiner recommends claiming the exact material of the coating and exactly what properties it must have to be considered a super-tough elastic material, such that they are different and non-obvious over the prior art of record.
Conclusion
Applicant's amendment necessitated any 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at (571) 272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS L FOSTER/ Primary Examiner, Art Unit 3675
