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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 31 August 2026 has been entered.
Drawings
The amendment filed 31 August 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the specifically illustrated configuration of the screw and substrate(s).
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 102/103
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 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.
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 1-12 and 15-17 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Falger et al. (US 2018/02182217) or Falger et al. (US 2018/02182217) in view of WO2021/069437.
With regard to claim 1, Falger discloses a fastening arrangement (as disclosed in para. [0074], etc.), comprising: a thread-forming screw (as disclosed in para. [0074], and as all such screw threads, especially metal threads as disclosed in para. [0074], etc., are considered thread-forming at least that when disposed in a hole having a smaller diameter than the diameter of the threads and the hole is made of a material softer/more easily deformed than the thread material such will result in a thread being formed in the wall of the hole. Additionally Examiner notes that the Applicant provided “Handbook of Plastics Joining” NPL defines a thread-forming screw essentially as a screw that has threads capable of deforming plastic to form threads therein, which the threads of Falger certainly are) which has a shank (i.e. as all such elements do, additionally see the rod (i.e. shank) shaped element described in para. [0074], etc.) and at least one thread helix (as disclosed in para. [0074], [0083], etc.), the thread helix being arranged on the shank (as disclosed in para. [0074], [0083], etc.), and an aluminate-containing inorganic cured compound (as disclosed in para. [0023], etc.), the thread-forming screw being arranged in a hole in a substrate (as disclosed in para. [0074], [0083], etc.) and a gap being provided between the shank and a wall of the hole (as disclosed in para. [0074], [0083], etc.), which gap is filled with the cured compound (as disclosed in para. [0071], [0082], etc.), wherein the aluminate-containing inorganic cured compound is obtained by curing a multi-component cementitious system (as disclosed in para. [0001], [0022], etc.), which contains, in one component, at least one aluminate-containing cement constituent (as disclosed in para. [0022], [0023], etc.) and at least one blocking agent selected from the group consisting of phosphoric acid, metaphosphoric acid, phosphorous acid, phosphinic acid and boric acid, in aqueous phase, (as disclosed in para. [0022], [0027], etc.) and, in a further component, an initiator for the aluminate-containing cement constituent (as disclosed in para. [0022], [0037], etc.).
As Applicant appears to be arguing a much more specific definition of “thread-forming screw” than Examiner has interpreted to be the BRI of the term “thread-forming screw”, if Applicant’s narrower interpretation is ever found persuasive the following rejection would apply: Falger discloses that the threaded screw (which as disclosed as metal in para. [0074], etc., is at least capable of forming threads in a softer/more easily deformable material when screwed into an appropriately sized hole). Falger fails to explicitly use the term “thread-forming screw”. However WO ’437 discloses a similar fastening arrangement (as disclosed in the abstract, in the English language equivalent US 2023/151221 paras. [0001], etc.) comprising: a thread forming-screw (as disclosed in the abstract, in the English language equivalent US 2023/151221 paras. [0001], etc.), a substrate with a hole therein that received the screw (as disclosed in the English language equivalent US 2023/151221 paras. [0128], [0129] etc.), and a cured compound (as disclosed in the English language equivalent US 2023/151221 paras. [0022], [0070] etc.) in a gap between the screw and hole (as disclosed in the English language equivalent US 2023/151221 paras. [0008], [0221] etc.). 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 screw of Falger such that it is explicitly a thread-forming screw as disclosed in WO ‘437. Such a modification would provide the expected result of good retention of the screw in the hole due to the explicitly disclosed threads formed in the hole engaging with the threads of the screw.
With regard to claim 2, Falger discloses that the initiator comprises a mixture of alkali and/or alkaline earth metal salts (as disclosed in para. [0037], etc.).
With regard to claim 3, Falger discloses that the initiator consists of an activator component and an accelerator component (as disclosed in para. [0037], etc.).
With regard to claim 4, Falger discloses that the activator component comprises alkali hydroxide and the accelerator component comprises a lithium salt (as disclosed in para. [0038], etc.).
With regard to claim 5, Falger discloses that the activator component is sodium hydroxide and the accelerator component is lithium sulfate (as disclosed in para. [0038], etc.).
With regard to claim 6, Falger discloses that the further component contains at least one retarder selected from the group consisting of citric acid, tartaric acid, lactic acid, salicylic acid, gluconic acid and mixtures thereof (as disclosed in para. [0022], etc.).
With regard to claim 7, Falger discloses that the further component contains at least one mineral filler selected from the group consisting of limestone fillers, sand, corundum, dolomite, alkali-resistant glass, crushed stones, gravel, pebbles and mixtures thereof (as disclosed in para. [0022], etc.).
With regard to claim 8, Falger discloses that the aluminate-containing cement constituent is based on a calcium aluminate cement (CA) in aqueous phase or on a calcium sulfoaluminate cement (CAS) in aqueous phase (as disclosed in para. [0023], etc.).
With regard to claim 9, Falger discloses that the pH of the further component is over 10 (as disclosed in para. [0052], etc.).
With regard to claim 10, Falger discloses that the aluminate-containing cement constituent also comprises a plasticizer (as disclosed in para. [0022], etc.).
With regard to claim 11, Falger discloses that the aluminate-containing cement constituent and the further component are in the form of an aqueous suspension (as disclosed in para. [0021], etc.).
With regard to claim 12, Falger discloses that the substrate is a mineral building material (as disclosed in para. [0001], [0074], etc.).
With regard to claim 15, Falger discloses that the thread-forming screw is a concrete screw (as disclosed in para. [0074], [0083], etc. as it is disclosed as for/capable of use as such).
With regard to claim 16, Falger discloses that the further component contains at least one retarder selected from the group consisting of citric acid, tartaric acid and mixtures thereof (as disclosed in para. [0022], etc.).
With regard to claim 17, Falger discloses that the substrate is concrete (as disclosed in para. [0001], [0074], 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 13-14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Falger et al. (US 2018/02182217) alone.
With regard to claim 13, Falger is silent as to whether or not the thread helix engages in a mating thread in the substrate. However as Falger discloses a similar fastener it would have been considered obvious to one of ordinary skill in the art at the time of filing to have the thread helix engages in a mating thread in the substrate as Examiner hereby takes Official Notice that the art is replete with examples of concrete anchors, self-tapping screws, etc. having a thread helix engagds in a mating thread in the substrate. Such a modification would have provided the expected benefit of a stronger more secure connection between the fastener and the substrate.
As applicant has not traversed examiner’s assertion of official notice, the common knowledge or well-known in the art statement relied upon in examiner’s assertion of official notice is hereby taken to be admitted prior art in accordance with MPEP 2144.03.
With regard to claim 14, Falger discloses that the thread helix has a thread outer diameter and a thread pitch (i.e. as all such threaded fasteners as disclosed in para. [0074], [0083], etc. do. Additionally see the disclosure therein of an example metric standard thread, known in the art to have such), but is silent as to a ratio of the thread outer diameter to the thread pitch being in the range from 1.0 to 2.0. However it would have been considered obvious to one of ordinary skill in the art at the time of filing to have a ratio of the thread outer diameter to the thread pitch being in the range from 1.0 to 2.0 as Examiner hereby takes Official Notice that the art is replete with examples of concrete anchors, self-tapping screws, etc. having a ratio of the thread outer diameter to the thread pitch being in the range from 1.0 to 2.0. Such a modification would provide the expected benefit of using the disclose cement material in various different screw sizes scaled for the intended use and expected forces such would undergo.
As applicant has not traversed examiner’s assertion of official notice, the common knowledge or well-known in the art statement relied upon in examiner’s assertion of official notice is hereby taken to be admitted prior art in accordance with MPEP 2144.03.
Additionally and/or alternatively it would have been considered obvious to one of ordinary skill in the art at the time of filing to have t a ratio of the thread outer diameter to the thread pitch being in the range from 1.0 to 2.0 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 reKulling, 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 appropriately sizing the threaded fastener for the given application thereof (e.g. the expected size and forces expected thereon).
With regard to claim 18, Falger discloses that the thread helix has a thread outer diameter and a thread pitch (i.e. as all such threaded fasteners as disclosed in para. [0074], [0083], etc. do. Additionally see the disclosure therein of an example metric standard thread, known in the art to have such), but is silent as to a ratio of the thread outer diameter to the thread pitch being in the range from 1.2 to 1.6. However it would have been considered obvious to one of ordinary skill in the art at the time of filing to have a ratio of the thread outer diameter to the thread pitch being in the range from 1.2 to 1.6 as Examiner hereby takes Official Notice that the art is replete with examples of concrete anchors, self-tapping screws, etc. having a ratio of the thread outer diameter to the thread pitch being in the range from 1.2 to 1.6. Such a modification would provide the expected benefit of using the disclose cement material in various different screw sizes scaled for the intended use and expected forces such would undergo.
As applicant has not traversed examiner’s assertion of official notice, the common knowledge or well-known in the art statement relied upon in examiner’s assertion of official notice is hereby taken to be admitted prior art in accordance with MPEP 2144.03.
Additionally and/or alternatively it would have been considered obvious to one of ordinary skill in the art at the time of filing to have a ratio of the thread outer diameter to the thread pitch being in the range from 1.2 to 1.6 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 reKulling, 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 appropriately sizing the threaded fastener for the given application thereof (e.g. the expected size and forces expected thereon).
Response to Arguments
Applicant's arguments filed 31 August 2026, with respect to claims 1-18, have been fully considered but they are not persuasive.
Applicant’s first argument is that the Falger reference fails to disclose a thread-forming screw and that the threaded elements disclosed in Falger have a different technical effect from a thread-forming screw. This argument is not persuasive as Applicant’s arguments are not commiserate in scope with the rejected claims and rely on more specific interpretations of the claim limitations than the BRI of such (e.g. there is no claim recitation that the screw is not a bolt, there is no recitation that the thread of the screw is capable of cutting into concrete to firm the mating thread, there is no recitation that the screw is conical, there is no recitation that the screw can be installed and uninstalled easily, no specific load values are claimed, etc.). 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).
In so much as Applicant’s arguments regarding the function/technical effect of the instant invention are non-analogous art arguments, such are not persuasive as all of the relied on references share a classification and are concerned with the same problem of mounting of threaded members in concrete with a curable composition.
In the interest of advancing prosecution Examiner recommends incorporating claims 13 and 17 into claim 1 and claiming that it is the thread-forming screw that created the mating thread in the concrete. However Examiner notes such would not overcome the new-matter rejection of the new drawing.
Alternatively Examiner recommends claiming “An aluminate-containing inorganic curable compound for use in securing a screw in a hole of a substrate, the aluminate-containing inorganic curable compound comprising…” along with a narrower curable compound.
Conclusion
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
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