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 .
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 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.
Claims 1-8 are pending. Applicant’s previous election of species of an epoxy adhesive without silicone still applies and no claims are currently withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/10/25 has been entered.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain embodiments, does not reasonably provide enablement for the full claimed scope. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to arrive at the invention in a manner commensurate in scope with the claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all embodiments within the scope of the claim can be made and/or used as claimed and whether the claim meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the full scope of the invention as claimed without undue experimentation.
Claims 1-5 and 8 recite an adhesive layer that forms a hard layer and a body layer, wherein the hard layer has larger adsorption force/elastic modulus/crosslinking density than the body layer, and wherein the substrate is silicate treated aluminum and the adhesive is BPADGE epoxy. However, the specification only provides enabling disclosure for forming such an adhesive layer (i.e., one that forms hard and body portions with the claimed properties) with an epoxy adhesive based on a particular curing agent (see the present examples). There is no guidance in the specification for forming the claimed adhesive layer (i.e., one that forms hard and body portions with the claimed properties) with any type of curing agent (of which there are countless possible types of curing agents for epoxy, beyond those used in the present disclosure). Therefore, the scope as claimed is far broader than the enabled disclosure in the present specification, which uses particular curing agent, such that undue experimentation would be required (amongst the many embodiments within the broader claimed scope and outside of the enabled disclosure) to arrive at the claimed adhesive layer (i.e., one that forms hard and body portions with the claimed properties).
Upon applying the Wands factors to claim 1-5 and 8, undue experimentation would be required:
The breadth of the claims; (as explained above, the claims are broad in terms of the type of curing agent relative to the much narrower guidance provided in the specification)
The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (the adhesive layer as claimed, i.e., one that forms hard and body portions with the claimed properties, would not be readily arrived at by one having ordinary skill in the art without significant guidance)
(E) The level of predictability in the art; (to achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various types of curing agents without any apparent predictability)
(F) The amount of direction provided by the inventor; (G) The existence of working examples; and (the direction in the specification, at best, is sufficient for certain curing agents, see e.g., the examples, without any corresponding direction provided for achieving the claimed adhesive i.e., one that forms hard and body portions with the claimed properties, with the broader types of curing agents as claimed)
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. (based on the broader claimed scope compared to the limited guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same enablement issue(s) via their dependency.
Claim Rejections - 35 USC § 112(b)/second paragraph
The following is a quotation of 35 U.S.C. 112(b):
CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1-8 is/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 pre-AIA the applicant regards as the invention.
Claim 1 recites a silicate layer on the surface of the aluminum base and then recites that the adhesive layer adheres to the surface of the aluminum base such that it is unclear if the epoxy is adhering to the silicate layer (as in the present examples) or if it is adhering to the other side of the aluminum base as the silicate layer. It would appear remedial to recite that the adhesive adheres to the silicate layer.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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 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.
If 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.
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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yusuke (WO 2017/195808, provided by Applicant with provided machine translation) in view of Kamegaya (U.S. 2013/0158231) in view of the Three Bond NPL document as evidenced by the SigmaAldrich NPL document.
Regarding claims 1-8, Yusuke teaches an aluminum substrate with a generic epoxy adhesive thereon (the adhesive having an overlapping thickness compared to the thickness of the overall adhesive layer in the present specification) wherein adhesive strength and high temperature properties are improved by treating the aluminum with a sodium silicate primer before applying the epoxy layer (page 2, page 11, page 13). Yusuke does not explicitly disclose the same type of epoxy as in the present disclosure.
However, Kamegaya teaches an epoxy adhesive that provides excellent storage, curability, and adhesion properties and includes bis(4-hydroxyphenyl propane) diglycidyl ether as the epoxy (the same as in the present examples), and dicyandiamide as the curing agent (the same as in the present examples) ([0001], [0042], [0096]). Thus, it would have been obvious to have used the epoxy adhesive from Kamegaya as the generic epoxy adhesive sought in Yusuke in order to provide excellent storage, curability and adhesion properties.
As an alternative to Kamegaya, the Three Bond NPL document discloses that high temperature (as sought by Yusuke) structural adhesion may be achieved with DGEBA epoxy (the same epoxy as in the present examples, as evidenced by the SigmaAldrich NPL document synonyms section) and dicyandiamide curing agent (the same as in the present examples) (pages 2-3, 5-6). Thus, it would have been obvious to have used the epoxy adhesive of the Three Bond NPL document as the generic epoxy adhesive sought in Yusuke in order to provide high temperature structural adhesion.
Based on the above, modified Yusuke (i.e., Yusuke in combination with the teachings of Kamegaya or the Three Bond NPL document) teaches an aluminum substrate with a sodium silicate pretreatment (as in the present examples) that is then coated at an overlapping thickness (compared to the thickness of the overall adhesive layer in the present examples) with an epoxy adhesive made of the same epoxy resin and curing agent as in the present examples. Because the overall article is made of the same materials and same layer order, this same epoxy adhesive material will inherently form the claimed hard layer and body layer, with the hard layer being harder than the body layer in the portion immediately adjacent to the silicate primer/aluminum substrate, and with the hard layer inherently having the crosslinking density/adsorption/elastic properties of claims 1-5 and 8, and also with the hard layer forming a thickness overlapping claims 6-7 (in view of the overlapping total thickness of the adhesive layer and the same conditions that form the hard layer within the overall adhesive layer as explained above).
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bunji (JP H0881784, provided by Applicant with provided machine translation) in view of Kamegaya (U.S. 2013/0158231) in view of the Three Bond NPL document as evidenced by the SigmaAldrich NPL document.
Regarding claims 1-8, Bunji teaches an aluminum substrate with a dicyandiamide cured epoxy adhesive thereon (the adhesive having an overlapping thickness compared to the thickness of the overall adhesive layer in the present specification) wherein excellent adhesive strength is provided by treating the aluminum with a sodium silicate primer before applying the epoxy layer ([0001], [0004], [0011], [0012], the machine translation of [0012] mistakenly indicates zero as the adhesive thickness but the corresponding portion of the JP document appears to show this as 0.1 mm, see below).
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Bunji does not explicitly disclose the same type of epoxy ingredient in the epoxy adhesive as in the present disclosure.
However, Kamegaya teaches an epoxy adhesive that provides excellent storage, curability, and adhesion properties and includes bis(4-hydroxyphenyl propane) diglycidyl ether as the epoxy (the same as in the present examples), and dicyandiamide as the curing agent (the same as in the present examples) ([0001], [0042], [0096]). Thus, it would have been obvious to have used the epoxy adhesive from Kamegaya as the dicyandiamide epoxy adhesive sought in Bunji in order to provide excellent storage, curability and adhesion properties.
As an alternative to Kamegaya, the Three Bond NPL document discloses that high temperature structural adhesion may be achieved with DGEBA epoxy (the same epoxy as in the present examples, as evidenced by the SigmaAldrich NPL document synonyms section) and dicyandiamide curing agent (the same as in the present examples) (pages 2-3, 5-6). Thus, it would have been obvious to have used the epoxy adhesive of the Three Bond NPL document as the dicyandiamide epoxy adhesive sought in Bunji in order to provide high temperature structural adhesion.
Based on the above, modified Bunji (i.e., Bunji in combination with the teachings of Kamegaya or the Three Bond NPL document) teaches an aluminum substrate with a sodium silicate pretreatment (as in the present examples) that is then coated at an overlapping thickness (compared to the thickness of the overall adhesive layer in the present examples) with an epoxy adhesive made of the same epoxy resin and curing agent as in the present examples. Because the overall article is made of the same materials and same layer order, this same epoxy adhesive material will inherently form the claimed hard layer and body layer, with the hard layer being harder than the body layer in the portion immediately adjacent to the silicate primer/aluminum substrate, and with the hard layer inherently having the crosslinking density/adsorption/elastic properties of claims 1-5 and 8, and also with the hard layer forming a thickness overlapping claims 6-7 (in view of the overlapping total thickness of the adhesive layer and the same conditions that form the hard layer within the overall adhesive layer as explained above).
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the amendment to the claims resolves the scope of enablement issue. While many of the aspects related to scope of enablement have been resolved, the curing agent for the epoxy, which appears material in arriving at the claimed properties, is still completely unlimited in the claims (any curing agent is within the claimed scope) relative to the much more specific curing agent used in the present specification for achieving the claimed properties. Accordingly, this aspect of the commensurate in scope issue still remains.
Applicant continues to argue that the two step heating process is explained throughout the Application. The Examiner’s previous statements regarding this assertion are reproduced below and maintained: It is not true that the two stage heating process is discussed in the present application in anything more than the bare minimal way (i.e., the only mention of heating at all in the present disclosure is: “the obtained laminate was heated and maintained at 135° C. for 10 minutes, and then heated further and maintained at a higher temperature of 155° C. for 20 minutes”), and certainly is not “explained through out the Application” as resulting in the claimed structure.
To the contrary, the specification seems to attribute the claimed structure to the presence of the silicate layer. See below from [0041] of the present PGPub.
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Similarly, the comparative examples in the present application differ from the inventive examples by the omission of the silicate treatment.
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Applicant then provides additional explanation regarding why the two step heating process matters, but this is presented merely as attorney remarks without any supporting evidence or declaration (the previous declaration does not relate to this portion of the remarks). It is also noted that Applicant refers to “density” but the cited paragraph from the specification refers to “crosslink density.” Even if Applicant’s remarks were presented as a declaration (assuming the same wording was used), there is no explanation or logical connection between “the time difference between the first and second heating (i.e., curing) steps” and “generates the hard layer”/“cures at a higher density”. There is nothing about a time difference between two curing steps that would (based on the knowledge of one of ordinary skill in the art) affect a change in hardness or density. Thus, this explanation is merely conclusory.
Applicant then cites to the previously provided declaration, but that portion of the remarks is merely a summary of the declaration, which was previously considered and found deficient (for the reasons set forth in the following paragraph). These problems with the previously provided declaration were also raised in the previous phone interview. None of the following problems with the declaration have been resolved or even addressed in Applicant’s remarks (the previous “third” problem was addressed by the claim amendment) and accordingly the declaration is still not persuasive and the two step heating aspect that Applicant’s seeks to use as a distinction over the cited references is still not a patentable distinction because it still appears to be a merely “product by process” aspect of the present disclosure, without any evidence that the two step heating process actually affects the final product/structure as claimed. If Applicant’s summary of the declaration is meant to address the illegible issue below, the problem would have to be remedied by providing a legible version of the signed declaration.
First, the declaration appears illegible in large parts, especially in the provided table. Second, the declaration does not appear to test all the embodiments within the table. Lastly, and most importantly, the declaration is deficient in that it does not represent the combination of references as set forth in the rejection because it does not appear to use the epoxy resin set forth in the rejection (DGEBA epoxy and dicyandiamide curing agent, from the secondary references) and instead just uses the epoxy resin from the unmodified primary references. Based on the above, (i.e., in the absence of any evidence that the heating steps influence the claimed structure and with an abundance of Applicant’s own disclosure instead pointing to the silicate layer/epoxy interface) the inherency rejection is maintained based on the substantially identical type of substrate (aluminum treated with silicate) and substantially identical type of epoxy resin (DGEBA epoxy and dicyandiamide curing agent) as rendered obvious by the combined references compared to the teachings of the present disclosure.
As explained in the previous telephone interview, if Applicant provides compelling evidence showing that the two step heating actually does affect the claimed properties, this would then become part of the scope of enablement analysis (since the claims do not recite any limitation on the heating/curing process).
Applicant then argues hindsight, but the motivation provided in the rejections above are from the prior art, not hindsight.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights