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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 5-22 in the reply filed on November 19, 2025 is acknowledged.
Claim 24 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 19, 2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 1, 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
Claim Objections
Claim 11 is objected to because of the following informalities: Claim 11 recites “at temperatures up to at least 50 ˚C,” wherein “at least 50 ˚C” would traditionally be construed to mean 50 ˚C and greater. However, in the context of the claim, the phrase “…cures slowly if at all at room temperature (about 22 ˚C) and at temperature up to at least 50 ˚C” would appear to have been intended recite 50 ˚C as an upper bound as including temperatures “at least 50 ˚C” (i.e., greater than 50 ˚C) would overlap with the previously recited range at which the adhesive cures. In this case, the Examiner recommends that the claim recite “at temperatures up to 50 ˚C.”
Applicant is advised that should claim 18 be found allowable, claim 19 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(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.
Claims 11 and 17-22 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.
As to Claim 11: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation “wherein the adhesive cures when heated to a temperature of 80 ˚C” and the claim also recites “preferably at least 100 ˚C or greater” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For examination purposes, the claimed range is construed as the broadest recited range.
As to Claims 17-21: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance:
Claim 17 recites the broad recitation “0.1 to 35 wt%,” and the claim also recites “more preferably 1 to 30 wt%,” and “particularly preferably at 7.5 to 12.5 wt%” which is the narrower statement of the range/limitation.
Claim 18 recites the broad recitation “5 to 20 wt%,” and the claim also recites “more preferably 5 to 15 wt%,” and “particularly preferably at 7.5 to 12.5 wt%” which is the narrower statement of the range/limitation.
Claim 19 recites the broad recitation “5 to 20 wt%,” and the claim also recites “more preferably 5 to 15 wt%,” and “particularly preferably at 7.5 to 12.5 wt%” which is the narrower statement of the range/limitation.
Claim 20 recites the broad recitation “5 to 20 wt%,” and the claim also recites “more preferably 5 to 15 wt%,” and “particularly preferably at 7.5 to 12.5 wt%” which is the narrower statement of the range/limitation.
Claim 21 recites the broad recitation “between about 30 kHz and about 300 GHz,” and the claim also recites “more preferably 100 to 250 MHz,” and “particularly preferably 140 MHz” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For examination purposes, the claimed range is construed as the broadest recited range.
As to Claim 22: Claim 22 recites the limitation "the heat-curing step" in line 1. There is insufficient antecedent basis for this limitation in the claim as claim 1 recites a “pre-curing” step and a “heat treatment.” Both the claimed “pre-curing” step and the claimed “heat treatment” step recited in claim 1 involve heating (i.e., heat released from the radio frequency susceptor, as construed from the definition in the instant specification pg. 12, para. 2) that results in at least a partial cure. Therefore, it is not clear to which step the “heat-curing step” recited in claim 22 refers. For examination purposes, the claim is construed to refer to the “heat treatment” step.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 6-9, 16-17, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kirsten (US20030168640, hereinafter referred to as “Kirsten”).
As to Claim 1: Kirsten teaches a process for heating an adhesive composition by an electromagnetic field (50 kHz up to 100 MHz, see para. [0038] of Kirsten, which reads on the claimed radio-frequency as construed from the instant specification pg. 14, para. 2), thereby joining two substrates (Abstract and [0016]-[0023]). Kirsten teaches that the adhesive may comprise a nanoscale particle having properties so that, upon exposure to electromagnetic radiation, the adhesive composition is heated ([0015]) (i.e., a radio-frequency susceptor). Kirsten further teaches that the adhesive composition may comprise a binder matrix that is crosslinked via reactive groups (i.e., a thermoset) ([0015]). Kirsten teaches that the process may be used for joining metallic materials ([0020] and contemplates joining different metals (e.g., steel parts to aluminum parts ([0002]), which reads on the claimed wherein “the first substrate and the second substrate have different coefficients of thermal expansion” (CTE) as construed by the instant specification which discloses that aluminum and steel inherently exhibit a ΔCTE of 11 (pg. 13, Table 1 of instant specification). Kirsten further teaches that the process for bonding materials may take place in two stages wherein in a first stage the adhesive is partly cured (i.e., pre-curing) by electromagnetic radiation and, in a following process step, is fully cured by heat curing ([0024]) (i.e., a heat treatment).
As to Claims 6 and 7: Kirsten teaches the method of claim 1 (supra).
Kirsten teaches that the process may be used for joining metallic materials ([0020] and contemplates joining different metals (e.g., steel parts to aluminum parts ([0002]), which reads on the claimed wherein “the first substrate and the second substrate have different coefficients of thermal expansion” (CTE) as construed by the instant specification which discloses that aluminum and steel inherent exhibit a ΔCTE of 11 m/(m-˚C x 106) (pg. 13, Table 1 of instant specification), which is within the claimed range.
As to Claim 8: Kirsten teaches the method of claim 1 (supra).
Kirsten further teaches that the binder matrix of the adhesive may be epoxide (i.e., epoxy) polyurethane, (meth)acrylate, or hotmelt adhesive-based ([0030]).
As to Claim 9: Kirsten teaches the method of claim 1 (supra).
Kirsten further teaches that the binder matrix of the adhesive may be epoxide (i.e., epoxy) based ([0030]).
As to Claim 16: Kirsten teaches the method of claim 1 (supra).
Kirsten teaches that the adhesive may comprise a nanoscale particle having properties so that, upon exposure to electromagnetic radiation, the adhesive composition is heated ([0015]) (i.e., a radio-frequency susceptor). Kirsten further teaches that suitable materials include metals ([0026]).
As to Claim 17: Kirsten teaches the method of claim 1 (supra).
Kirsten teaches that the adhesive may comprise a nanoscale particle having properties so that, upon exposure to electromagnetic radiation, the adhesive composition is heated ([0015]) (i.e., a radio-frequency susceptor). Kirsten further teaches that suitable materials include metals ([0026]). Kirsten teaches exemplary embodiments comprising magnetite, MA (i.e., a metal) in an amount of 20 wt% (Table 3), which is within the claimed range.
As to Claim 21: Kirsten teaches the method of claim 1 (supra).
Kirsten teaches that the process for bonding materials may take place in two stages wherein in a first stage, the adhesive is partly cured (i.e., pre-curing) by electromagnetic radiation and, in a following process step, is fully cured by heat curing ([0024]). Kirsten further teaches that said first stage wherein the adhesive is partly cured by electromagnetic radiation may use frequencies in the range of 50 kHz up to 100 MHz ([0038]), which is within the claimed range.
Claim Rejections - 35 USC § 103
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.
Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kirsten (US20030168640, hereinafter referred to as “Kirsten”) in view of Li et al. (US 5,277,737, hereinafter referred to as “Li”).
As to Claim 5: Kirsten teaches the method of claim 1 (see above).
Kirsten teaches that the process for bonding materials may take place in two stages wherein in a first stage the adhesive is partly cured (i.e., pre-curing) by electromagnetic radiation and, in a following process step, is fully cured by heat curing ([0024]) (i.e., a heat treatment), but does not define a degree of cure for the partial curing.
Li teaches a related method for bonding a non-conductive member to a conductive member by applying adhesive between mating surfaces of the non-conducting and conducting member (Abstract). Li further teaches that the adhesive may be cured by applying a radio frequency that excites the polar molecules within the adhesive (i.e., acts as a radio-frequency susceptor), which generates a dielectric heating for bonding two substrates (col. 3, ln. 1-10), wherein said adhesive may be an epoxy adhesive (col. 8, ln. 1-2) (i.e., a thermoset adhesive). Li further teaches exemplary processes wherein the extent of cure is 85% (col. 8, ln. 17-30) (i.e., corresponding to the claimed degree of cure of 0.85 as construed from the instant specification pg. 15, para. 3-4). Kirsten and Li are considered analogous art because they are directed towards the same field endeavor, namely, process for bonding materials with thermoset materials cured by applying an electromagnetic frequency. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a partial cure degree for the first step wherein the adhesive is partly cured contemplated by Kirsten within the claimed range, such as 85% or 0.85, as a person having ordinary skill in the art would reasonably recognize that Li teaches that such a degree of reaction confers a degree of crosslinking sufficient to impart improved strength and handleability over uncured adhesive components in a significantly shorter period of time relative to oven curing (Table II of Li) and decreasing the amount of time in an oven to achieve the “fully cured” state via heat curing ([0024] of Kirsten), thus reducing the thermal stressing of the substrates as is recognized at para. [0068] of Kirsten.
Claims 10, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kirsten (US20030168640, hereinafter referred to as “Kirsten”) in view of Ryan et al. (US20040159654, hereinafter referred to as “Ryan”).
As to Claim 10: Kirsten teaches the method of claim 1 (see above).
Kirsten teaches that the binder matrix of the adhesive may be epoxide (i.e., epoxy) based ([0030]), however, Kirsten does not teach wherein the epoxide is based on a bisphenol epoxy.
Ryan teaches a composition that can bond two or more substrates comprising a radio frequency susceptor capable of heating the composition ([0006]) further comprising a thermoplastic polymer or thermoset resin ([0029]). Ryan further teaches that the composition may include a heat-curable thermoset resin additive which may be an epoxy resin based on bis-phenol A-epichlorohydrin diglycidyl ether ([0218]). Kirsten and Ryan are considered analogous art because they are directed towards the same field of endeavor, namely, adhesive compositions comprising electromagnetic susceptors for heating and processes for joining substrates using the same. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a bisphenol A-based epoxy resin as the epoxy-based thermoset binder matrix of Kirsten based on the finding that such resins, such as bis-phenol A-epichlorohydrin diglycidyl ether, are recognized within the art as suitable heat/catalyst curable thermosetting additives for adhesive compositions and processes for curing the same via electromagnetic frequencies. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
As to Claims 12 and 13: Kirsten teaches the method of claim 1 (see above).
Kirsten is silent towards wherein the adhesive comprises a curing agent from the claimed group.
Ryan teaches a composition that can bond two or more substrates comprising a radio frequency susceptor capable of heating the composition ([0006]) further comprising a thermoplastic polymer or thermoset resin ([0029]). Ryan further teaches that the thermoset resin (e.g., an epoxy-based resin) may be cured with a dicyandiamide ([0218]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a curing agent such as dicyandiamide as the curing agent for the binder matrix of the adhesive may be epoxide (i.e., epoxy) based of Kirsten and the motivation would have been that Ryan teaches that dicyandiamide is recognized within the art as a suitable curing agent for thermosetting epoxide resins within adhesive compositions and processes for curing the same via radio frequency. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
Claims 11 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Kirsten (US20030168640, hereinafter referred to as “Kirsten”) in view of Son et al. (US 3,732,286, hereinafter referred to as “Son”).
As to Claim 11: Kirsten teaches the method of claim 1 (see above).
Kirsten teaches that the binder matrix of the adhesive may be epoxide (i.e., epoxy) based ([0030]). Kirsten further teaches exemplary compositions that cure at 100 ˚C ([0067]-[0068]). Kirsten also teaches that the adhesive composition is heated to “a temperature at which the binder matrix is crosslinked via the reactive groups of the binder” ([0015]), which would reasonably be construed to suggests that sufficient curing is not achieved at room temperature. Nonetheless, Kirsten does not explicitly teach wherein the adhesive “cures very slowly if at all” at about 22 ˚C and up to 50 ˚C.
Son teaches a curable epoxy resin cured with dicyandiamide at elevated temperatures to form crosslinked thermosetting materials suitable for adhering metals to other materials (Abstract and col. 1, para. 1). Son further teaches that epoxy resins cured with dicyandiamide and similar materials at elevated temperatures store well at room temperature (i.e., undergo little to no curing) and require temperatures of about 120 ˚C to undergo appreciable curing. Kirsten and Son are considered analogous art because they are directed towards the same field of endeavor, namely, heat-curable adhesive compositions. Based on the disclosure of Son regarding the curing kinetics of traditional epoxy resin systems, a person having ordinary skill in the art of curable epoxy resin systems, such as that contemplated by Kirsten ([0030] of Kirsten), would reasonably expect the epoxy system contemplated by Kirsten would necessitate temperatures above 80 ˚C to undergo curing and furthermore that the system would not undergo appreciable curing at room temperature (i.e., cure “very slowly”). Alternatively, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select an epoxy resin system cured in the manner of Son for the method of Kirsten and the motivation would have been that Son teaches that such an epoxy resin system improves the curing kinetics of epoxy resin systems such that rapid curing occurs at elevated temperatures (100 to 150 ˚C, see col. 1 ln. 58-68) while maintaining considerable storage stability (i.e., curing very slowly if at all) for up to 30 days (col. 2, ln. 12-13).
As to Claim 22: Kirsten teaches the method of claim 1 (see above).
Kirsten teaches that the process for bonding materials may take place in two stages wherein in a first stage, the adhesive is partly cured (i.e., pre-curing) by electromagnetic radiation and, in a following process step, is fully cured by heat curing ([0024]). However, Kirsten does not explicitly teach a temperature range for the process step wherein the adhesive is “fully cured.”
Son teaches a curable epoxy resin cured with dicyandiamide at elevated temperatures to form crosslinked thermosetting materials suitable for adhering metals to other materials (Abstract and col. 1, para. 1). Son further teaches that epoxy resins cured with dicyandiamide and similar materials at elevated temperatures and cure at temperatures of about 120 ˚C to about 150 ˚C (col. 1, ln. 34-67). Based on the disclosure of Son, a person having ordinary skill in the art would recognize that temperatures greater than 120 ˚C are known as suitable temperatures for heat-treating epoxy resins (such as that contemplated by Kirsten, see [[0030]). As such, when determining the conditions for the process step in which the adhesive is fully cured by heat curing ([0024]), it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the conditions recognized within the art as suitable for heat treating thermosetting systems contemplated by Kirsten (e.g., epoxy resin systems).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kirsten (US20030168640, hereinafter referred to as “Kirsten”) in view of Koch et al. (US 20180258329, hereinafter referred to as “Koch”).
As to Claims 14 and 15: Kirsten teaches the method of claim 1 (see above).
Kirsten teaches that the binder matrix of the adhesive may be epoxide (i.e., epoxy) based ([0030]) and may comprise catalysts, but is silent towards wherein the catalyst is selected from the claimed group.
Koch teaches a related epoxy adhesive composition suitable for metal-metal and metal-nonmetal bonding ([0002]) that cures upon heating ([0030] and [0052]). Koch further teaches that the adhesive composition may comprise a catalyst to provide a heat-activated cure response, wherein said catalyst may be 2,4,6-tris(dimethylaminomethyl)phenol integrated into a poly(p-vinylphenol) ([0052]). Kirsten and Koch are considered analogous art because they are directed towards the same field of endeavor, namely, heat-activated curing compositions suitable for metal-metal and metal-nonmetal bonding. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a curing catalyst comprising 2,4,6-tris(dimethylaminomethyl)phenol integrated into a poly(p-vinylphenol) for the adhesive binder matrix of Kristen and the motivation based on the finding that Koch teaches that such a curing catalyst system is recognized within the art to suitable for epoxy thermoset composition (such as that contemplated by Kirsten) and known to induce crosslinking upon an increase in temperature. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
Claim 18-20 is rejected under 35 U.S.C. 103 as being unpatentable over Kirsten (US20030168640, hereinafter referred to as “Kirsten”) in view of Sweeney et al. (WO 2019104216, hereinafter referred to as “Sweeney”).
As to Claim 18 and 19: Kirsten teaches the method of claim 1 (see above).
Kirsten is silent towards wherein the radio susceptor is carbon black.
Sweeney teaches a related non-contact method of joining two components via direct heating of a thermoset adhesive wherein said thermoset adhesive includes a susceptor that interacts with an electromagnetic field to heat the thermoset adhesive (Abstract). Sweeney further teaches that the susceptor may be carbon black ([0042]). Sweeney further teaches exemplary susceptor loadings from 0.1 to 10 wt% (Fig. 1A and [0043]). Kirsten and Sweeney are considered analogous art because they are directed towards the same field of endeavor, namely, methods for curing adhesives comprising dispersed electromagnetic susceptors. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute carbon nanotubes for the particles that can be heated by action of electromagnetic field taught by Kirsten and the motivation would have been that Sweeney teaches that carbon nanotubes are known within the art as susceptors suitable for heating thermoset adhesive compositions in the presence of an electromagnetic field. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07. Furthermore, the amounts contemplated by both Kirsten (1 to 30 wt%, see claim 5) and Sweeney (0.1 to 10 wt%) for an amount of radio susceptor overlap with the claimed range for an amount of carbon black. In the case where claimed ranges “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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as both Kirsten and Sweeney suggests, that the overlapping portion is a useable range for an amount of an electromagnetic frequency susceptor in an adhesive composition suitable for heating the composition upon application of an electromagnetic frequency.
As to Claim 20: Kirsten teaches the method of claim 1 (see above).
Kirsten is silent towards wherein the radio susceptor is carbon nanotubes.
Sweeney teaches a related non-contact method of joining two components via direct heating of a thermoset adhesive wherein said thermoset adhesive includes a susceptor that interacts with an electromagnetic field to heat the thermoset adhesive (Abstract). Sweeney further teaches that the susceptor may be carbon nanotubes ([0042]) and teaches exemplary compositions wherein the carbon nanotubes are present in an amount of 10 wt% ([0043]), which is within the claimed range. Kirsten and Sweeney are considered analogous art because they are directed towards the same field of endeavor, namely, methods for curing adhesives comprising dispersed electromagnetic susceptors. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute carbon nanotubes for the particles that can be heated by action of electromagnetic field taught by Kirsten and the motivation would have been that Sweeney teaches that carbon nanotubes are known within the art as susceptors suitable for heating thermoset adhesive compositions in the presence of an electromagnetic field. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767 /MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767