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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/26/26 has been entered.
Claims 1,3-4,7-8,9,11, and 14-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The phrase “the first pore formation step…at a temperature of 40C to 90C” (cl 1:8-9) lacks support in the instant disclosure. There is support for 20C to 80C ([0037,0050 and 0051] of the instant specification), but there is no support for the claimed end points of 40C and 90C.
The phrase “the second pore formation step…at a temperature of 20C to 40C” (cl 1:17-18) lacks support in the instant disclosure. There is support for 20C to 80C ([0037,0050 and 0051] of the instant specification), but there is no support for the claimed end points of 20C and 40C.
The phrase “wherein the surface treatment layer…500nm” (cl 1:29-31) lacks support in the instant specification. There is no mention in the instant disclosure of uniformly dispersed protrusions having an average width of 500nm. In fact, the only mention of a protrusion in the instant disclosure describes the protrusion as being “fine.” There is no mention of an average width.
The phrase “a tensile bonding strength of 30MPa or more” (cl 1:32-33) lacks support in the instant specification. There is no mention in the instant disclosure of a tensile bonding strength of 30MPa or more.
The phrase “micro-protruded structure” (cl 1:21-22) lacks support in the instant disclosure. The instant specification does not mention “micro-protrusion.” The instant specification does recite protrusions formed by the electrolysis step, but describes the protrusions as being merely “fine.” See [0024], [0054], [0061], and [0062] of the instant specification.
The phrase “the first pore formation step…at a temperature of 40C to 90C” (cl 9:9-10) lacks support in the instant disclosure. There is support for 20C to 80C ([0037,0050 and 0051] of the instant specification), but there is no support for the claimed end points of 40C and 90C.
The phrase “the second pore formation step…at a temperature of 20C to 40C” (cl 9:17-18) lacks support in the instant disclosure. There is support for 20C to 80C ([0037,0050 and 0051] of the instant specification), but there is no support for the claimed end points of 20C and 40C.
The phrase “micro-protruded structure” (cl 9:25-26) lacks support in the instant disclosure. The instant specification does not mention “micro-protrusion.” The instant specification does recite protrusions formed by the electrolysis step, but describes the protrusions as being merely “fine.” See [0024], [0054], [0061], and [0062] of the instant specification.
The phrase “wherein the surface treatment layer…500nm” (cl 9:30-32) lacks support in the instant specification. There is no mention in the instant disclosure of uniformly dispersed protrusions having an average width of 500nm. In fact, the only mention of a protrusion in the instant disclosure describes the protrusion as being “fine.” There is no mention of an average width.
The phrase “a tensile bonding strength of 30MPa or more” (cl 9:33-34) lacks support in the instant specification. There is no mention in the instant disclosure of a tensile bonding strength of 30MPa or more.
Corrections are required.
Claims 1,3-4,7-8,9,11, and 14-15 are 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.
The phrase “micro-protruded structure” (cl 1:22) is indefinite because it is unclear what is meant by “micro-protruded” since the instant disclosure does not provide a definition of what is meant by “micro”. In fact, the instant specification does not even mention “micro-protrusion.” The instant specification does recite protrusions formed by the electrolysis step, but describes the protrusions as being merely “fine.” See [0024], [0054], [0061], and [0062] of the instant specification.
The phrase “wherein the surface treatment layer…500nm to 500nm” (cl 1:29-31; emphasis added) is indefinite because the metes and bounds of the phrase are unclear.
The phrase “micro-protruded structure” (cl 9:26) is indefinite because it is unclear what is meant by “micro-protruded” since the instant disclosure does not provide a definition of what is meant by “micro”. In fact, the instant specification does not even mention “micro-protrusion.” The instant specification does recite protrusions formed by the electrolysis step, but describes the protrusions as being merely “fine.” See [0024], [0054], [0061], and [0062] of the instant specification.
The phrase “wherein the surface treatment layer…500nm to 500nm” (cl 9:30-32; emphasis added) is indefinite because the metes and bounds of the phrase are unclear.
Corrections are required.
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.
Claim(s) 1, 3-4, and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (WO 2019/039831, U.S. PGPub 2020/0171722 used as English translation for citation) in view of Okumura et al. (US 2016/0221301, hereinafter Okumura), Sun et al. (CN 105522783, hereinafter Sun), and JP2005074629.
Regarding claim 1, Kim teaches:
1. A method of manufacturing a metal-polymer resin bonded assembly, comprising:
a first pore formation step of immersing a substrate comprising a metal in a first solution and forming pores in the substrate by etching the same (see Fig. 1, [0037]);
a second pore formation step of immersing the substrate having pores formed in the first pore formation step in a second solution and forming another pores by etching the same (see Fig. 1, [0043]);
an electrolysis step of immersing the substrate that has undergone the second pore formation step in an electrolytic solution and conducting electrolysis to form a surface treatment layer having a micro-protruded structure (see Fig. 1, [0048] and [0055]; absent a clear and supported definition of “micro,” the fine protrusions of Kim meet the micro-protruded structure); and
a molding step of joining the substrate that has undergone the electrolysis step with a polymer resin and conducting injection molding (see Fig. 1, [0059]),
wherein the sequential combination of the alkaline and acidic etching improves surface-roughness uniformity and enhances bonding strength between the titanium and the resin (see Fig.1, [0001] and [0016]),
wherein the titanium-resin assembly exhibits a tensile bonding strength of 30MPa or more (see [0099-0100]; Table 1).
Kim fails to teach that the metal is titanium; and wherein the first etching solution is an alkaline solution from the claimed solution options with a pH>7 and is used in a pore formation step performed at the claimed temperature and duration; the second solution is an acidic solution from the claimed solution options with a pH <7 and is used in a pore formation step performed at the claimed temperature and duration; and the protrusions having an average width of 500nm to 500nm. However, Kim discloses that the metal may be, but is not limited thereto, one of aluminum, iron or copper ([0025]).
Okumura discloses a metal-resin injection molded composite structure (see abstract and [0127]) wherein the metal can be aluminum, iron, copper or titanium ([0031]). It would have been obvious to one of ordinary skill in the art at the time of filing to have substituted the metal of Kim with titanium as taught by Okumura to yield predictable results with a reasonable expectation of success. One would have been motivated to do so because this is substituting a known metal in an injection molded metal-resin structure with another known metal in an injection molded metal-resin structure (see MPEP 2143, KSR rationale, (B)). Further, as Okumura discloses titanium as another suitable metal as compared to aluminum, iron or copper, this is substitution of equivalents known for the same purpose which is prima facie obviousness (see MPEP 2144.06).
Kim/Okumura fail to teach wherein the first etching solution is an alkaline solution with a pH>7 and the second solution is an acidic solution with a pH <7. Instead, Kim discloses that the first etching solution is acidic and the second etching solution is basic/alkaline (claim 16). The purpose of the two etching processes is to maximize the bonding strength of the metal substrate to the polymer resin (see Kim, [0045]).
Sun discloses a method of forming a metal-resin compound wherein two etching solutions using alkaline including sodium hydroxide at 10-60C for 1-60 minutes and all kinds of acidic etching solutions at 20-30C for 1-60 mins are used to form pits (pores) in the metal in order to assist bonding between the resin of the metal base during injection molding (see abstract; Embodiment 1; claim 16). The first etching solutions uses an alkaline etching liquid including sodium hydroxide and the second etching solution uses an acidic etching liquid (see claim 1). It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the etching process of Kim/Okumura in the manner as taught by Sun such that the first etching solution is an alkaline like sodium hydroxide and the second etching solution is acidic like those commonly used for etching at the taught temperature and duration with predictable results and a reasonable expectation of success. One would have been motivated to do so because Sun recognizes that a first alkaline etching solution followed by a second acidic etching solution also forms pores that allow for a strong bond strength between the metal base and the resin during injection molding.
Kim/Okumura/Sun fail to teach the acidic solution being selected from the claimed solution options. Instead, Sun teaches using any common acidic etching solution capable of etching a metal like phosphoric acid at 20-30C for 1-60 mins. JP2005074629 discloses using an acidic etching solution like phosphoric acid, nitric acid, or sulfuric acid (para. 0056 of English machine translation). It would have been obvious to one of ordinary skill in the art at the time of filing to have substituted the phosphoric acid of Kim (modified) with nitric acid or sulfuric acid as taught by JP2005074629 to yield predictable results with a reasonable expectation of success. One would have been motivated to do so because this is substituting a known acidic etching solution with another known acidic etching solution (see MPEP 2143, KSR rationale, (B)). Further, as JP2005074629 discloses nitric acid or sulfuric acid as another suitable acidic etching solution as compared to phosphoric acid, this substitution of equivalents known for the same purpose is considered prima facie obviousness (see MPEP 2144.06).
Kim teaches forming fine protrusions on the surface treated layer of the substrate (Step S400; [0048] and [0055]), but does not teach the protrusions having an average width of 500nm to 500nm. Since the electrolysis step of Kim is the same as the claimed electrolysis step, the formation of protrusions having an average width of 500nm would be inherent to the electrolysis of Kim. However, if not inherent, protrusions having the claimed average width is a well-known result from electrolysis; thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to impart protrusions having an average width of 500nm on the surface treated layer of Kim in order to enhance bonding between the substrate and the resin.
Regarding claim 3, such is taught by Kim (para. 0050).
Regarding claim 4, such is taught by the above combination of Kim and Okumura et al since Okumura et al teach immersing/dissolving the metal substrate in nitric acid solution (paras. 0178 and 0181) to enhance bonding with the resin member.
Regarding claim 7, such is taught by Kim (para 0053).
Regarding claim 8, such is inherently taught by Kim since electrolysis inherently needs a minimum of 1.23 V to work.
Claim(s) 9, 11, and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (WO 2019/039831, U.S. PGPub 2020/0171722 used as English translation for citation) in view of Okumura et al. (US 2016/0221301, hereinafter Okumura).
Per claim 9, Kim discloses a method of manufacturing a metal-polymer resin bonded body, comprising:
a first pore formation step of immersing a substrate comprising a metal in a first solution and forming pores in the substrate by etching the same (see Fig. 1, [0037]);
a second pore formation step of immersing the substrate having pores formed in the first pore formation step in a second solution and forming another pores by etching the same (see Fig. 1, [0043]);
an activating step of immersing the substrate that has undergone the first and the second pore formation steps in a nitric acid solution ([0047]);
an electrolysis step of immersing the substrate that has undergone the first and the second pore formations steps and the activating step in an electrolytic solution and conducting electrolysis to form a surface treatment layer having a micro-protruded structure (see Fig. 1, [0048] and [0055]; absent a clear and supported definition of “micro,” the fine protrusions of Kim meet the micro-protruded structure); and
a molding step of joining the substrate with a polymer resin and conducting injection molding (see Fig. 1, [0059]),
wherein the sequential combination of the alkaline and acidic etching improves surface-roughness uniformity and enhances bonding strength between the titanium and the resin (see Fig.1, [0001] and [0016]),
wherein the titanium-resin assembly exhibits a tensile bonding strength of 30MPa or more (see [0099-0100]; Table 1).
Kim fails to teach that the metal is titanium; and wherein the first etching solution is an alkaline solution from the claimed solution options with a pH>7 and is used in a pore formation step performed at the claimed temperature and duration; the second solution is an acidic solution from the claimed solution options with a pH <7 and is used in a pore formation step performed at the claimed temperature and duration; and the protrusions having an average width of 500nm to 500nm. However, Kim discloses that the metal may be, but is not limited thereto, one of aluminum, iron or copper ([0025]).
Okumura discloses a metal-resin injection molded composite structure (see abstract and [0127]) wherein the metal can be aluminum, iron, copper or titanium ([0031]). It would have been obvious to one of ordinary skill in the art at the time of filing to have substituted the metal of Kim with titanium as taught by Okumura to yield predictable results with a reasonable expectation of success. One would have been motivated to do so because this is substituting a known metal in an injection molded metal-resin structure with another known metal in an injection molded metal-resin structure (see MPEP 2143, KSR rationale, (B)). Further, as Okumura discloses titanium as another suitable metal as compared to aluminum, iron or copper, this is substitution of equivalents known for the same purpose which is prima facie obviousness (see MPEP 2144.06).
Kim/Okumura fail to teach wherein the first etching solution is an alkaline solution and the second solution is an acidic solution. Instead, Kim discloses that the first etching solution is acidic and the second etching solution is basic/alkaline (claim 16). The purpose of the two etching processes is to maximize the bonding strength of the metal substrate to the polymer resin (see Kim, [0045]).
Sun discloses a method of forming a metal-resin compound wherein two etching solutions using alkaline including sodium hydroxide at 10-60C for 1-60 minutes and all kinds of acidic etching solutions at 20-30C for 1-60 mins are used to form pits (pores) in the metal in order to assist bonding between the resin of the metal base during injection molding (see abstract; Embodiment 1; claim 16). The first etching solutions uses an alkaline etching liquid including sodium hydroxide and the second etching solution uses an acidic etching liquid (see claim 1). It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the etching process of Kim/Okumura in the manner as taught by Sun such that the first etching solution is an alkaline like sodium hydroxide and the second etching solution is acidic like those commonly used for etching at the taught temperature and duration with predictable results and a reasonable expectation of success. One would have been motivated to do so because Sun recognizes that a first alkaline etching solution followed by a second acidic etching solution also forms pores that allow for a strong bond strength between the metal base and the resin during injection molding.
Kim/Okumura/Sun fail to teach the acidic solution being selected from the claimed solution options. Instead, Sun teaches using any common acidic etching solution capable of etching a metal like phosphoric acid at 20-30C for 1-60 mins. JP2005074629 discloses using an acidic etching solution like phosphoric acid, nitric acid, or sulfuric acid (para. 0056 of English machine translation). It would have been obvious to one of ordinary skill in the art at the time of filing to have substituted the phosphoric acid of Kim (modified) with nitric acid or sulfuric acid as taught by JP2005074629 to yield predictable results with a reasonable expectation of success. One would have been motivated to do so because this is substituting a known acidic etching solution with another known acidic etching solution (see MPEP 2143, KSR rationale, (B)). Further, as JP2005074629 discloses nitric acid or sulfuric acid as another suitable acidic etching solution as compared to phosphoric acid, this substitution of equivalents known for the same purpose is considered prima facie obviousness (see MPEP 2144.06).
Kim teaches forming fine protrusions on the surface treated layer of the substrate (Step S400; [0048] and [0055]), but does not teach the protrusions having an average width of 500nm to 500nm. Since the electrolysis step of Kim is the same as the claimed electrolysis step, the formation of protrusions having an average width of 500nm would be inherent to the electrolysis of Kim. However, if not inherent, protrusions having the claimed average width is a well-known result from electrolysis; thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to impart protrusions having an average width of 500nm on the surface treated layer of Kim in order to enhance bonding between the substrate and the resin.
Regarding claim 11, such is taught by Kim (para. 0050).
Regarding claim 14, such is taught by Kim (para 0053).
Regarding claim 15, such is inherently taught by Kim since electrolysis inherently needs a minimum of 1.23 V to work.
Applicant's arguments filed 1/26/26 have been fully considered but they are not persuasive.
Applicant argues Kim (modified) does not teach the newly claimed temperature and duration for the pore formation steps. This is misplaced since the above combination of Kim, Okumura et al., Sun et al, and JP2005074629 teach a first pore formation step performed at 10-60C for 1-60 minutes and a second pore formation step performed at 20-30C for 1-60 minutes.
Applicant argues Kim (modified) does not teach the newly claimed micro-protrusions having an average width of 50-500nm. First, the argued average width range of 50 to 500nm is not found in the claims. The claims recite “500nm to 500nm” unlike the range found in the arguments. Second, since the electrolysis step of Kim is the same as the claimed electrolysis step, the formation of protrusions having an average width of 500nm would be inherent to the electrolysis of Kim. However, if not inherent, protrusions having the claimed average width is a well-known result from electrolysis; thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to impart protrusions having an average width of 500nm on the surface treated layer of Kim in order to enhance bonding between the substrate and the resin.
Applicant argues Kim does not teach the newly claimed tensile bonding strength. This is misplaced since Kim teaches the tensile bonding strength at paragraphs [0099-0100] and Table 1.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. TW 1462757 teaches using nitric acid as an acidic etching solution for etching titanium.
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EHL
/EDMUND H LEE/Primary Examiner, Art Unit 1744