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 .
Claims 1 and 9 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 “an electrolysis step immediately after the activating step” (cl 1:23-24) lacks support in the instant disclosure. The instant specification only supports an activating step occurring between the second pore formation step and the electrolysis step (para. 0011). There is no support for the electrolysis step occurring immediately after the activating step.
The phrase “an electrolysis step immediately after the activating step” (cl 9:23-24) lacks support in the instant disclosure. The instant specification only supports an activating step occurring between the second pore formation step and the electrolysis step (para. 0011). There is no support for the electrolysis step occurring immediately after the activating step.
Correction is 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 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 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 immediately after the activating step (Kim teaches the timing of the electrolysis step since example 1 of Kim teaches performing the second etching process and then the electrolysis step on the etchings, and para. 0047 of Kim teaches an activation step before the electrolysis step) of immersing the substrate that has undergone the second pore formation step in an electrolytic solution comprising (i) a chelating agent (para. 0050; oxalic acid constitutes chelating agent), (ii) sulfuric acid, and (iii) distilled water (para. 0050), and conducting electrolysis at a temperature of 5C to 80C for 180 to 3600 seconds at a constant voltage of 1V to 50V to form a surface treatment layer having fine protrusions (see Fig. 1, paras. 0048, 0053,0055; the fine protrusions of Kim meet the micro-protruded structure; electrolysis inherently needs a minimum of 1.23 V to work);
a molding step of joining the substrate that has undergone the electrolysis step with a polymer resin by injection molding (see Fig. 1, [0059])
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).
Claim(s) 9 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 immediately after the activating step (Kim teaches the timing of the electrolysis step since example 1 of Kim teaches performing the second etching process and then the electrolysis step on the etchings, and para. 0047 of Kim teaches an activation step before the electrolysis step) of immersing the substrate that has undergone the activating step in an electrolytic solution comprising (i) a chelating agent (para. 0050; oxalic acid constitutes chelating agent), (ii) sulfuric acid, and (iii) distilled water (para. 0050), and conducting electrolysis at a temperature of 5C to 80C for 180 to 3600 seconds at a constant voltage of 1V to 50V to form a surface treatment layer having fine protrusions (see Fig. 1, paras. 0048, 0053,0055; the fine protrusions of Kim meet the micro-protruded structure; electrolysis inherently needs a minimum of 1.23 V to work);and
a molding step of joining the substrate with a polymer resin by injection molding (see Fig. 1, [0059]).
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).
Applicant's arguments filed 6/22/26 have been fully considered but they are not persuasive.
Applicant argues the prior art of record does not teach a chelating agent. However, this argument is misplaced since Kim teaches an electrolytic solution comprising (i) oxalic acid, which constitutes a chelating agent, (ii) sulfuric acid, and (iii) distilled water (para. 0050). Applicant mentions the use of Ti-EDTA as the chelating agent; however, this compound was never recited in the outstanding claims. Applicant is reminded that 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).
Applicant argues the claimed invention involve critical etching conditions and have unexpected results; however, this argument is misplaced since the conditions and materials of the outstanding claims, and the argued conditions and materials of Tables 2-4 are not commensurate in scope. To argue criticality and unexpected results, there must be a nexus, and the scopes must be commensurate.
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.
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 EDMUND H LEE whose telephone number is (571)272-1204. The examiner can normally be reached M-Th 9AM-4PM.
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EHL
/EDMUND H LEE/Primary Examiner, Art Unit 1744
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