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 .
Response to Amendment
The Amendment filed 18 December 2025 has been entered. Claims 1 – 5 and 7 – 11 remain pending in the application. Claims 7 – 11 were previously withdrawn from consideration.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 5,166,007 A) in view of Sato (JP 2014-224201 A, referencing the machine translation thereof provided with the Office Action mailed 23 November 2022).
Regarding claim 1, Smith discloses a UV-cured exothermic self-adhesive repair sheet (“patch” with “high exothermicity” for repairing vehicles, installations, or parts via UV curing, e.g. “patch” 19: e.g. Fig. 1, 2; Col. 1, l. 53, to Col. 8, l. 63) comprising:
a first component (“resin impregnated stack of fiberglass fabrics, e.g. “prepreg fabric layers” 24: e.g. Fig. 1, 2; Col. 2, l. 27, to Col. 8, l. 11) comprising:
525-70% polyester resin (e.g. Col. 4, ll. 17 – 21; Col. 5, l. 60, to Col. 6, l. 1; Col. 6, ll. 12 – 59; Col. 7, ll. 17 – 21);
20-60% glass fiber (as balance to impregnating composition: e.g. Col. 5, ll. 49 – 52; Col. 6, ll. 1 – 5; Col. 8, ll. 18 – 20);
styrene monomer, wherein said styrene monomer is 2% to 55%, e.g. 10% to 15% of the first component (e.g. Col. 4, ll. 22 – 23; Col. 6, ll. 60 – 63; Col. 7, ll. 1 – 2, 4 – 6, 47 – 54); and
10a second component (bottom of “patch” 19 which is partially cured to become “tacky”, e.g. “bottom layer” 25: e.g. Fig. 1, 2; Col. 2, ll. 30 – 33; Col. 3, ll. 27 – 30; Col. 4, ll. 17 – 21; Col. 7, ll. 22 – 36, 47 – 67) comprising:
more than 25-85% acrylic adhesive (e.g. Col. 2, ll. 30 – 33; Col. 4, ll. 17 – 21; Col. 7, ll. 22 – 32, 47 – 64); and
less than 15-75% non-woven fabric (“mat” of the “bottom layer”: e.g. Col. 1, ll. 58 – 61; Col. 7, ll. 32 – 36, 65 – 67);
wherein said second component is a pressure sensitive self-adhesive tape (e.g. Col. 3, ll. 60 – 68); and
wherein the first and second components are equal in size (e.g. Fig. 1, 2).
With respect to the first and second component comprising their respective compositions, Smith discloses different layers of the repair sheet may contain different resins in order to provide different functions, e.g. to provide adhesion (e.g. Col. 3, ll. 51 – 59). Considering Smith states the repair sheet is used to repair vehicles, installations, or parts (e.g. Col. 1, ll. 5 – 11; Col. 1, l. 66, to Col. 2, l. 2; Col. 2, ll. 8 – 13), it follows the polyester resin for the first component serves, at a minimum, the function of a structural resin in the repair sheet. Accordingly, Smith’s second component, which serves the function of providing adhesion of the repair sheet to an adherend (e.g. Col. 2, ll. 36 – 39; Col. 3, ll. 28 – 30, 60 – 68) would have been understood to include a resin suitable for adhesion. To this end, Smith discloses acrylic adhesives are useful resins and provided faster adhesion relative to polyesters (e.g. Col. 2, ll. 30 – 33; Col. 4, ll. 17 – 21; Col. 7, ll. 22 – 32, 47 – 64) and thus suggesting use for the same would have been useful in the second component. Since Smith’s “bottom layer” includes an additional “bottom layer” 26 (e.g. Fig. 1, 2; Col. 3, ll. 60 – 68), it would have followed the amount of acrylic adhesive is higher than the 25% to 85% Smith generally states is used as a ratio of resin to fabric (e.g. Col. 5, l. 60, to Col. 6, l. 10). Given the amount of acrylic adhesive can be determined based on the needs of a particular application (Smith: e.g. Col. 7, ll. 65 – 67), one of ordinary skill in the art would have been able to determine a suitable amount therefor.
From the above discussion, one of ordinary skill in the art will appreciate Smith discloses a UV-cured exothermic self-adhesive repair sheet comprising a polyester resin layer and an acrylic adhesive layer.
With respect to the claim limitation wherein “the second component is pressed onto an exposed side of the first component to adhere the first and second components to one another”, the recitation is a product-by-process limitation.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113, I.
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See MPEP § 2113, I.
Here, the examiner observes no particular parameters outlined for the pressing. Therefore, the implied structure should be interpreted for a construction wherein the first and second components directly adhered to one another (a result of the “exposed side” recitation”).
To this end, Smith’s Fig. 2 illustrates the “prepreg fabric layers” 24 directly adhered to the “bottom layer” 25. Therefore, Smith is considered to meet the claim requirement wherein “the second component is pressed onto an exposed side of the first component to adhere the first and second components to one another”.
Although Smith allows the first component to include fillers (e.g. Col. 4, ll. 17 – 30), Smith is not explicit as to the amount of filler being 25-40%. However, Sato discloses components comprising polyester resin and inorganic filler impregnated into glass fiber fabrics, wherein the polyester resin and inorganic filler respectively have amounts of 10-70% and 30-90% relative to the total of polyester resin and inorganic filler, wherein the amount of inorganic filler sufficiently provides strength and durability while not compromising the ability of the polyester resin and inorganic filler to impregnate the glass fiber fabric (e.g. ¶¶ [0019], [0020]).
Given Smith’s repair sheet is used to repair damaged structures, one of ordinary skill in the art would have appreciated the value of providing as strong a repair as possible for the purpose of not having to repeat the repair process, thereby saving expenses. Smith expresses concern with costs when performing repairs (e.g. Col. 5, ll. 40 – 43; Col. 7, ll. 29 – 31), so providing additional means to prevent further repairs would have been understood as desirable.
Therefore, in order to provide additional strength and durability to the repair, it would have been obvious to modify the first component to comprise, e.g., 7.5-63% inorganic filler as Sato suggests. The range of inorganic filler is based on a comparison of Sato’s range for inorganic filler relative to the amount of polyester resin Smith discloses and the substitution of resin for inorganic filler suggested thereby.
Smith and Sato are not explicit as to said first component having a composition that produces heat of 140°F – 200°F for at least one minute when said first component is UV-cured, wherein said heat produced during curing of said first component results in said second component bonding to a substrate in sub-zero conditions, and the cured self-adhesive repair sheet having a hardness greater than 50 BARCOL.
However, as noted above, the amounts for the species Smith and Sato collectively disclose for the first component overlap the amounts specified in claim 1. Additionally, the amount for the species Smith discloses for the second component overlap the amounts specified in claim 1. Aside from the recited heat production limitation, claim 1 does not specify further limitations on the species or amounts of species forming the first component, the second component, or structures of the UV-cured exothermic self-adhesive repair sheet.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I.
Accordingly, at least for the embodiments where the ranges Smith and Sato disclose overlap claim 1, a prima facie case of obviousness is established with respect to said first component having a composition that produces heat of 140°F – 200°F for at least one minute when said first component is UV-cured, wherein said heat produced during curing of said first component results in said second component bonding to a substrate in sub-zero conditions, and the cured self-adhesive repair sheet having a hardness greater than 50 BARCOL.
In other words, because the composition(s) overlap and render obvious the amounts recited in claim 1, it would be expected that the first component and the second component, and thus also the cured self-adhesive repair sheet as a whole, would have exhibit the properties as claimed.
Moreover, as noted above, Smith relates to a self-adhesive repair sheet exhibiting “high exothermicity” (e.g. Col. 5, ll. 37 – 38). Furthermore, as a whole, Smith desires adhesion between the self-adhesive repair sheet and the repair target (e.g. Col. 3, ll. 28 – 30, 60 – 67). Accordingly, one of ordinary skill in the art would have understood the exothermic properties of the first component should not induce failure of the second component, namely as such failure would inhibit repair operations.
Regarding claim 2, in addition to the limitations of claim 1, Sato discloses said inorganic filler comprises, e.g. aluminum hydroxide (e.g. ¶ [0020]).
Regarding claim 3, in addition to the limitations of claim 1, Smith discloses the UV-cured self-adhesive repair sheet further comprises a releasable cover on said first component of said UV-cured exothermic self-adhesive repair sheet (“UV transparent release film” applied to “top” of “prepreg fabric”: e.g. Col. 2, ll. 8 – 13; Col. 4, ll. 67 – 68; Col. 7, ll. 40 – 42).
Regarding claim 4, in addition to the limitations of claim 3, Smith discloses said releasable cover on said first component of said UV-cured exothermic self-adhesive repair sheet is transparent (“UV transparent release film”: e.g. Col. 2, ll. 8 – 13; Col. 4, ll. 67 – 68; Col. 7, ll. 40 – 42).
Regarding claim 5, in addition to the limitations of claim 1, Smith discloses the UV-cured self-adhesive repair sheet further comprises a releasable external liner on said second component of said UV-cured exothermic self-adhesive repair sheet (“UV transparent release film” applied to “both sides of the fabric”: e.g. Col. 2, ll. 8 – 13; Col. 4, ll. 67 – 68; Col. 7, ll. 40 – 42).
Response to Arguments
Applicant’s arguments, see pp. 6 – 7, filed 5 May 2025, with respect to the rejections of claims 1 – 5 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. MPEP § 2112.01, I.
Applicant asserts Spada was directed to an anticipation rejection under 35 U.S.C. 102 and therefore cannot be applied to Smith in an obviousness rejection under 35 U.S.C. 103.
However, it is permissible to rely on inherency in an obviousness context. For example, MPEP § 2112, IV, states the following, in relevant part, regarding inherency in obviousness contexts:
"In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original). In PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 112 USPQ2d 1945 (Fed. Cir. 2014), the Federal Circuit remanded a decision to the district court because the record did not present sufficient evidence to prove inherency in the context of obviousness. The district court concluded the pharmacokinetic parameters of a claim are inherent properties of the obvious formulation. The Federal Circuit stated that while "inherency may support a missing claim limitation in an obviousness analysis", "the use of inherency, a doctrine originally rooted in anticipation, must be carefully circumscribed in the context of obviousness." Id. at 1194-95, 112 USPQ2d at 1952. "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original). The court found that pharmacokinetic limitations of the asserted claims were inherently met by combining prior art references because the limitations were necessarily present in the prior art combination. Id. See also Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329-32, 2020 USPQ2d 6227 (Fed. Cir. 2020).
Therefore, a combination of Smith and Sato can be used to show inherency. The appropriate analysis in light of Spada will therefore be understood that if two products are identical, then their properties are identical irrespective of whether one reference or a plurality of references teaches that product.
From MPEP § 2112, V:
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).
Applicant has not shown any evidence that Smith and Sato do not necessarily possess the claimed heat production which is implicated from the composition of the first component.
Applicant further asserts the rejections rely on Smiths “prepreg fabric layers” 24 corresponding to the claimed first component and therefore cannot be used to also correspond to the claimed second component. The examiner notes this is not the basis of the rejection, and Smith delineates different features corresponding to the claimed first and second components.
Notably, while Smith’s “prepreg fabric layers” 24 correspond to the claimed first component, it is stated in the rejections that a “bottom layer” 25 is considered separately from the “prepreg fabric layers” 24. Moreover, Smith considers these features in this manner, noting how they are “separately appl[ied]” in forming the “patch” 19 (e.g. Col. 3, l. 51, to Col. 4, l. 8).
Applicant further asserts Smith fails to teach 75-95% acrylic adhesive for the second component. While Smith does not explicitly teach the 25-85% range the examiner cites in the rejections above, this range is implicitly taught as follows:
Given 30-75% of Smith’s second component is the non-woven fabric relative to resin (e.g. Col. 7, ll. 65 – 67), the balance of the second component is 25-70% resin. However, the addition of the 10-15% styrene monomer which is considered a separate component from the resin (e.g. Col. 7, ll. 47 – 52) indicates the upper bound is 70+15 = 85%.
Applicant further asserts hindsight and conjecture is used to establish the claimed generation of heat ranging from 140°F – 200°F for at least one minute when said first component is cured.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The examiner’s reasoning above regarding the inherency of this feature in light of Smith and Sato demonstrates that the rejections are based on knowledge within ordinary skill rather than hindsight and conjecture.
Applicant further asserts Smith teaches a woven fabric for the second component rather than a non-woven fabric as claimed. However, Smith’s definition of “mat” includes non-wovens (e.g. Col. 1, ll. 58 – 61) and therefore Smith’s recitations to a “mat” (e.g. Col. 7, ll. 32 – 36, 65 – 67) mean the second component includes non-woven fabric.
Applicant presents no further arguments with respect to the remaining features of the claims. Therefore, the examiner maintains the rejections to the extent consistent with the present amendments.
Conclusion
Applicant's amendment necessitated the 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 ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783