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 .
Status of Claims
Claims 1-11 are pending in the current application.
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 (i.e., changing from AIA to pre-AIA ) 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.
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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Nakakita et al. (US 2020/0115601 A1) in view of Ibaragi et al. (WO 2019/132042 A1, herein US 2020/0316915 A1 utilized as English language equivalent for all citations).
Regarding Claim 1, Nakakita teaches a resin-metal composite member comprising a metal member (a first adherend), an adhesive layer, and a covering resin layer (a second adherend), where the adhesive layer comprises a continuous phase of a thermoplastic polyester elastomer and a discontinuous phase of a polyphenylene ether (phenoxy) resin (i.e., an adhesive with a continuous-discontinuous phase separation structure) (Nakakita, Abstract, [0014]-[0015], [0046]-[0111], [0148]). Nakakita teaches the adhesive layer comprises the continuous phase can be made of one polyester elastomer and contains preferably 95% by mass or more of the polyester elastomer (such as a Hytrel or Pelprene thermoplastic polyester elastomer), where the polyester elastomer has a melting temperature of preferably 160-230oC (Nakakita, [0054]-[0058], [0080], [0096]-[0097]). Nakakita’s Hytrel and Pelprene thermoplastic polyester elastomers are identical to the thermoplastic polyester elastomers of the specification as originally filed (Spec, [0026]-[0027]). Nakakita teaches the discontinuous phase may contain only the phenoxy resin, where the phenoxy resin is included in an amount of 3-35% by mass with respect to the entirety of the adhesive layer (Nakakita, [0106]). The continuous and discontinuous phase materials can be the only two components of the adhesive layer, and the continuous phase can be 65-97% by mass with respect to the entirety of the adhesive layer (Nakakita, [0151]). Therefore, the resultant content ratio of phenoxy:polyester elastomer is approximately 3:97 to 35:65. Nakakita’s content ratio overlaps the claimed ratio of 20:80 to 80:20, and therefore, renders obvious the claimed range (MPEP 2144.05).
Nakakita remains silent regarding an area portion of a phase separation structure being 1% by area or less in an observable area in an elastic modulus phase image by an AFM.
Ibaragi, however, teaches an adhesive resin layer for adhering to a metal substrate comprising a phenoxy resin that can be blended with a thermoplastic polyester, where the phenoxy resin is obtained from a condensation reaction between a dihydric phenol compound and epihalohydrin, is an amorphous resin, has a weight average molecular weight of preferably 30,000-80,000, has a hydroxyl equivalent of preferably 50-500, has a glass transition temperature of 65-150oC, has a bisphenol A-type skeleton, and can specifically be a resin of YP-50S (Ibaragi, Abstract, [0037], [0071]-[0085]). Ibaragi’s phenoxy resin is identical to the phenoxy resin of the specification as originally filed (Spec, [0019]-[0023]).
Since Nakakita and Ibaragi both disclose adhesives comprising phenoxy resins for adhering to metal substrates, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Ibaragi’s phenoxy resin as Nakakita’s polyphenylene ether (phenoxy) resin to yield an adhesive that exhibits increased strength, excellent usability, excellent workability, decreased water absorption, improved adherend affinity, improved mechanical properties, and desirable flowability as taught by Ibaragi (Ibaragi, [0079]-[0084]).
Modified Nakakita discloses an adhesive layer composition formed of Hytrel or Pelprene thermoplastic polyester elastomers and YP-50S phenoxy resins that are identical to those disclosed by the specification as originally filed. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01, II. 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). See MPEP 2112.01, I. In view of the foregoing, modified Nakakita’s adhesive layer embodiments having a content ratio within the claimed ratio of 20:80 to 80:20 are considered to at least establish a prima facie case of obviousness over the claimed area portion of a phase separation structure being 1% by area or less in an observable area in an elastic modulus phase image by an AFM with a predictable and reasonable expectation of success (MPEP 2112.01, MPEP 2143).
Regarding Claim 2, modified Nakakita teaches the adhesive layer exhibits a tensile modulus of preferably 50 MPa to 1000 MPa, and a tensile break elongation of preferably 30% or more (Nakakita, [0154]-[0169]). Modified Nakakita’s tensile modulus range falls within the claimed range of 2500 MPa or less, and therefore, satisfies the claimed range (MPEP 2131.03). Modified Nakakita’s tensile break elongation range falls within the claimed range of 5% or more, and therefore, satisfies the claimed range (MPEP 2131.03). Modified Nakakita remains silent regarding a glass transition temperature of the adhesive layer, however, modified Nakakita’s adhesive layer composition is formed of Hytrel or Pelprene thermoplastic polyester elastomers and YP-50S phenoxy resins that are identical to those disclosed by the specification as originally filed. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01, II. 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). See MPEP 2112.01, I. In view of the foregoing, modified Nakakita’s adhesive layer embodiments having a content ratio within the claimed ratio of 20:80 to 80:20 are considered to at least establish a prima facie case of obviousness over the claimed glass transition temperature range with a predictable and reasonable expectation of success (MPEP 2112.01, MPEP 2143, MPEP 2144.05).
Regarding Claims 3 and 6, modified Nakakita teaches the phenoxy resin is obtained from a condensation reaction between a dihydric phenol compound and epihalohydrin, is an amorphous resin, has a weight average molecular weight of preferably 30,000-80,000, has a hydroxyl equivalent of preferably 50-500, has a glass transition temperature of 65-150oC, has a bisphenol A-type skeleton, and can specifically be a resin of YP-50S (Ibaragi, Abstract, [0037], [0071]-[0085]). Modified Nakakita’s glass transition temperature overlaps with the claimed range of 120oC or less, and therefore, renders obvious the claimed range (MPEP 2144.05). Modified Nakakita teaches the polyester elastomer has a melting temperature of preferably 160-230oC (Nakakita, [0080], [0096]-[0097]). Modified Nakakita’s melting point temperature overlaps with the claimed range of 180oC or less, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claims 4, 7, and 8, modified Nakakita teaches one of the two adherends is a resin material and the other is a metal material (Nakakita, Abstract, [0028]-[0029], [0046]-[0053], [0170]-[0172]).
Regarding Claims 5, 9, 10, and 11, modified Nakakita teaches the adhesive layer consisting of the composition of the polyester elastomer and the phenoxy resin discussed above for claims 1-4 (Nakakita, [0053]-[0153]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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