DETAILED ACTION
Applicant’s amendments to the claims filed August 11, 2025 were received. Claims 11 and 15 were amended.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Species A, claims 11-15 and 17-19 in the reply filed on March 27, 2025 is acknowledged.
Claims 1-10, 16, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 27, 2025.
Claim Interpretation
Claim limitation “adhesive dispersal module” in claims 11 and 19 has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “module” coupled with functional language “adhesive dispersal” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term “module” is merely a generic placeholder for the term “means.”
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 11 and 19 has/have been interpreted to cover “an applicator” corresponding to structure described in the specification that achieves the claimed function, and equivalents thereof (Spec., para 0027, 0034).
Claim limitation “joining module” in claim 11 has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “module” coupled with functional language “joining” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term “module” is merely a generic placeholder for the term “means.”
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 11 has/have been interpreted to cover “the combination of a clamp and robotic arm, or two robotic arms” corresponding to structure described in the specification that achieves the claimed function, and equivalents thereof (Spec., para 0028).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The rejection under 35 USC 112(b) on claim 15 is withdrawn since the claim was amended.
Claim Rejections - 35 USC § 102
The claim rejections under 35 USC 102(a)(1) are withdrawn since independent claim 1 was amended.
Claim Rejections - 35 USC § 103
Claims 11, 14, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Aldersley (US 20190168589) in view of Schoonover (US 20180029168, already of record).
Regarding claim 11, Aldersley teaches a system comprising:
an adhesive dispersal module (implicit of adhesive filling step) configured to apply adhesive (29) on a first member (3) comprising a first metal material having a first galvanic potential and a second member (15) comprising a second metal material having a second galvanic potential (para 0031, 0037, 0040; Fig. 2); and
a joining module (implicit of crimping) configured to join the first and second members (3, 15) via the adhesive (29) (para 0031; Fig. 2),
wherein when the first and second members (3, 15) are joined:
the adhesive (29) is in contact with a first side, edge, and second side of the first member (3); and the second member (15) is configured to engage the adhesive (29) on the first side, edge, and second side of the first member (para 0031, 0040; Fig. 2).
Aldersley does explicitly teach that the adhesive (29) comprises conductive metallic particles to enable electrical conductivity between the first and second members (3, 15).
However, Schoonover teaches a sprayer (not shown) (adhesive dispersal module) configured to apply adhesive 16 on a first member 12 comprising an aluminum (first metal material) having a first galvanic potential or a second member 14 comprising an aluminum (second metal material) having a second galvanic potential (para 0017, 0019, 0025; see for example Figs. 1-5); and laminating rolls (not shown) (joining module) configured to join the first member 12 and the second member 14 via the adhesive 16 (para 0038), wherein the adhesive 16 comprises conductive metallic particles that enable electrical conductivity between the first member 12 and the second member 14 when the first member 12 and second member 14 are joined, for the benefit of generating heat during welding to form an acceptable weld nugget (0009, 0036, 0050, 0052). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine conductive metallic particles with adhesive (29) to enable electrical conductivity between the first and second members (3, 15) in the system of Aldersley, as taught by Schoonover, for the benefit of generating heat during welding to form an acceptable weld nugget.
The terms “first” and “second” in the expressions “first galvanic potential” and “second galvanic potential”, respectively, in the limitation “a first member comprising a first metal material having a first galvanic potential or a second member comprising a second metal material having a second galvanic potential” merely refer to the first member and the second member each having an individual galvanic potential, respectively. In other words, the terms “first” and “second” in the expressions “first galvanic potential” and “second galvanic potential” do not explicitly connotate a value difference between the galvanic potentials.
Regarding claims 14, 15, and 17, as mentioned above, Aldersley does explicitly teach that the adhesive (29) comprises conductive metallic particles to enable electrical conductivity between the first and second members (3, 15).
However, Schoonover further teaches a concentration of the conductive metallic particles within the adhesive 16 is 0.01-10.0 weight percent (para 0050, 0052), wherein
the adhesive 16 comprises one or more of a thermal adhesive, a UV adhesive, or a combination thereof and the conductive metallic particles blended therein (para 0025, 0036, 0050, 0052), and that the conductive metallic particles are dispersed in the adhesive 16 and are configured to provide electrical conductivity between the first member 12 and the second member 14, for the benefit of generating heat during welding to form an acceptable weld nugget (0009, 0036, 0050, 0052). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine conductive metallic particles with adhesive (29) to enable electrical conductivity between the first and second members (3, 15) in the system of Aldersley, as taught by Schoonover, for the benefit of generating heat during welding to form an acceptable weld nugget.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Aldersley (US 20190168589) in view of Schoonover (US 20180029168, already of record) as applied to claim 11 above, and in further view of Wang (US 20110031126, already of record).
Regarding claim 12, the previous art combination above does not explicitly teach a coating chamber configured to perform electrocoating on joined first and second members.
However, Wang teaches a coating chamber 106 configured to perform electrocoating on joined first and second members, for the benefit of depositing a continuous polymer coating over the metal surfaces (para 0009, 0026-0030; see for example Fig. 3). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine an electrocoating chamber with the system of the previous art combination above, as taught by Wang, for the benefit of depositing a continuous polymer coating over the metal surfaces.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Aldersley (US 20190168589) in view of Schoonover (US 20180029168, already of record) as applied to claim 11 above, and in further view of Nakagawa (US 20080026247, already of record).
Regarding claim 18, Schoonover of the prior art combination above teaches that the conductive metallic particles in the adhesive are uniformly dispersed within the adhesive (para 0009, 0036, 0050, 0052). Schoonover further teaches that the conductive metallic particles comprise zinc particles (para 0009, 0036, 0050, 0052).
Aldersley further teaches that the second metal material comprises aluminum (para 0037).
Aldersley does not explicitly teach that the first metal material comprises magnesium.
However, Nakagawa teaches the first metal material comprises magnesium and the second metal material comprises aluminum (i.e., “the combination of aluminum and magnesium materials”; para 0067-0068), for the benefit of reducing the weight of the vehicular body (para 0003, 0059, 0074). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the first metal in Aldersley with magnesium, as taught by Nakagawa, for the benefit of reducing the weight of the vehicular body.
Claims 13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Aldersley (US 20190168589) in view of Schoonover (US 20180029168, already of record) as applied to claim 11 above, and in further view of Lewis (US 20140193630, already of record).
Regarding claims 13 and 19, the previous art combination above does not explicitly teach an adhesive dispersal module configured to select a concentration of conductive metallic particles in the adhesive.
However, Lewis teaches a sprayer 100 (adhesive dispersal module) mechanically configured to select a concentration of hard filler (e.g., metallic particles) in an adhesive (para 0075, 0080, 0090, 0096, 0106, 0110; see for example Fig. 1), for the benefit of obtaining desired physical characteristics of the polymer material (para 0079). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine an adhesive dispersal module configured to select a concentration of metallic particles in the adhesive with the previous art combination above, as taught by Lewis, for the benefit of obtaining desired physical characteristics of the polymer material.
This recitation “such that a galvanic potential of the adhesive is between the first galvanic potential and the second galvanic potential” merely refers to the expected result of operating the claimed apparatus in the intended manner, and thus does not further structurally limit the apparatus as claimed. See MPEP 2114 and 2115.
However, the apparatus of the prior art combination of Schoonover and Lewis is mechanically configured to achieve the recited result, since the combination of Schoonover and Lewis discloses the metallic composition (e.g., zinc particles) and every structural feature necessary to carry out the claimed operation.
Schoonover further mentions a size of metallic particles up to 125 micrometers (para 0051). Schoonover does not explicitly teach a size of metallic particles between 200 – 2000 micrometers.
However, similar to above, the particle size of the metallic particles is not expected to alter the operation of the claimed apparatus in a patentably distinct way; and the particle size of the metallic particles merely refers to operating the claimed apparatus in an intended manner. See MPEP 2114 and 2115. Nonetheless, Lewis further teaches that the filler particle size is known to vary with the applied thickness layer (para 0062), and further discloses filler particle sizes within the claimed range (para 0062-0063) that must be sized suitably for spray application (see esp. para 0009). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use metallic filler particles within the claimed range in the previous art combination above, for the benefit of suitability for spray application.
Response to Arguments
Applicant’s arguments with respect to claim 11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 CHARLES CAPOZZI whose telephone number is (571)270-3638. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES CAPOZZI/Primary Examiner, Art Unit 1717