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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 30, 2026 has been entered.
Status of the Claims
By amendment filed March 30, 2026 claim 1 has been amended. Claims 1 through 24 are currently pending.
Response to Arguments
Applicant's arguments filed March 30, 2026 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant’s argument that the present invention does not use photoinitiators and that Carlborg requires them is not persuasive. Carlborg teaches having initiated polymerization with the application of actinic radiation (Column 10 Lines 4-35), however Carlborg does not teach that photoinitiators were necessary to initiate the polymerization. Though Carlborg teaches the use of photoinitiators it does not teach that they were necessary for performing the taught method and that multiple types of initiators could be used. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP section 2123.II.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as was discussed in the previous Office Action and again within this Office Action, peroxide/hydroperoxyl was a known active oxygen group in the art which was equivalent to hydroxyl groups. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success in substituting the hydroxyl groups of Carlborg with the peroxide group. See MPEP section 2143.I.B.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies, that claim 1 does not recite epoxide or an epoxy, are not recited in the rejected claim(s). 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). Nothing within the claims excludes the presence of an epoxide.
In response to applicant's argument that Hirai is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the present invention is directed to coating a substrate and Hirai taught a coated substrate.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14 and 18 and rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 14 and 18 fail to further limit the claims because these claims require the presence of a photoinitiator in the compound/mixture while parent claim 1 requires that no photoinitiator is present. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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, 5, 9-15, 17, 20 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Carlborg et al (U.S. Patent # 9,523,019) in view of Bauman (U.S. Patent Publication No. 2005/0191435).
In the case of claim 1, Carlborg teaches a method for coating an object/substrate (Abstract). The method of Carlborg comprised providing a substrate and contacting the substrate surface with a first coating comprising a compound having at least one carbon-carbon double bond and at least one epoxide groups and initiating a reaction of the applied first coating followed by applying at least one further second coating (Column 2 Line 65 through Column 3 Line 32). Carlborg teaches that the first coating acted as a primer and provided excellent adhesion through covalent bonding (Column 3 Lines 60-64).
Carlborg further teaches that the reaction of the first coating was initiated with actinic radiation to polymerize the compound of the first coating (Column 10 Lines 4-17) and that the further second coating was cured after application (Column 10 Lines 18-35).
Furthermore, Carlborg teaches that the substrates included thermoplastic substrate having hydroxyl or active oxygen groups formed from plasma or corona treatment which reacted with the epoxides groups to adhere the coating to the substrate (Column 9 Lines 56-59 and Column 10 Lines 63-67).
Though Carlborg teaches embodiments wherein a photoinitiator is present during polymerization Carlborg does not teach that a photoinitiator is required for polymerization by application of actinic radiation (Column 10 Lines 4-35).
Though Carlborg taught that the substrate comprised a surface chemical group in the form of a hydroxyl groups or an active oxygen group with reacted with the compound comprising the carbon-carbon double bond Carlborg does not teach that the surface chemical groups of the substrate was at least one of an aromatic ring, a sulphur and a peroxide.
Bauman teaches a method for coating a plastic article wherein the adhesion between the plastic article and the coating is increased by plasma or corona treating the plastic artic in order to form oxygen-containing functional groups on the surface of the plastic article wherein the oxygen-containing functional groups included hydroxyl and a peroxide in the form of hydroperoxy (Abstract and Pages 1-2 Paragraphs 009-0010). Bauman teaches that the applied coatings included epoxies (Page 2 Paragraph 0011).
Based on the teachings of Bauman, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used a peroxide/hydroperoxy as the active oxygen group on the surface of the substrate of Carlborg because peroxide/hydroperoxy was a known active oxygen groups equivalent to a hydroxyl group for bonding with an epoxy/epoxide.
As for claim 5, as was discussed previously, the surface of the substrate of Carlborg was treated with either corona or plasma treatment prior to applying the first coating.
As for claim 9, Carlborg teaches that the coating components were applied either as is or diluted in a solvent (Column 12 Lines 43-58) therefore the teachings of Carlborg encompass applying the compound without dissolving or diluting the compounds in a solvent before contacting the substrate surface.
As for claim 10, Carlborg teaches that the first coating further comprised a compound having at least one thiol group (Column 4 Line 63 through Column 5 Line 11).
As for claims 11-13, Carlborg teaches that in the first coating the ratio between the number of thiol groups and the number of carbon-carbon double bonds in the coating was either in the range of 0.1 to 0.9 or 1.1 to 20 (Column 5 Lines 12-16), which were both within the claimed ranges.
As for claim 14, Carlborg teaches that the first coating comprised a Norrish type II photoinitiator in the form of a hydrogen type abstraction initiator (Column 12 Lines 32-35) including the specific Norrish type II photo initiator in the form of isopropyl thioxanthone (Column 12 Line 59 through Column 13 Line 3), which is a specific initiator disclosed in the specification of the present application.
As for claim 15, Carlborg teaches that the thickness of the first coating was in the interval was 2 to 100 micrometers (Column 7 Lines 18-24), which overlapped with the claimed range. In the case where the 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 section 2144.05.I of the MPEP.
As for claim 17, Carlborg teaches that the first coating compound was applied as a single formulation/mixture (Column 9 Line 63 through Column 10 Line 3).
As for claim 20, Carlborg teaches that the irradiation was conducted with UV radiation (Column 14 Lines 28-34).
As for claim 24, Carlborg does not teach that the atmosphere during irradiation with actinic radiation was reactive and therefore the atmosphere was inert.
Claims 2, 6, 7, 19, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Carlborg et al in in view of Bauman as applied to claims 1 and 17 above, and further in view of Haraldsson et al (WIPO Patent Publication No. WO2019/185302A1).
The teachings of Carlborg in view of Bauman as they apply to claims 1 and 17 have been discussed previously and are incorporated herein.
In the case of claim 2, Carlborg does not that compounds which had not reacted to form covalent bonds were removed after step c).
Haraldsson teaches a coating composition for substrate comprising a compound comprising a carbon-carbon double bond which formed covalent bonds with the substrate when subjected to actinic radiation and was used as a primer layer (Abstract and Page 3 Lines 18-20). Haraldsson teaches that after initiating polymerization by exposure to actinic radiation unreacted/unattached compounds were removed to provide a layer with a desired thickness (Page 14 Lines 6-9 and Page 15 Line 28 through Page 16 Line 5).
Based on the teachings of Haraldsson, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have removed the compounds of Carlborg in view of Bauman that did not react to form covalent bonds in order to form a primer layer with a desired thickness.
As for claims 6 and 7, Carlborg does not specifically teach that there was an electron withdrawing groups adjacent to one side of the carbon-carbon double bond in the compound.
Haraldsson teaches that the complexes formed by the compound are increased in strength by including electron withdrawing groups on both sides of the carbon-carbon double bond (Page 10 Line 24 through Page 11 Line 6).
Based on the teachings of Haraldsson, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have included electron withdrawing groups on both sides of the carbon-carbon double bonds of the compounds of Carlborg in view of Bauman in order to increase the strength of the complexes formed by the compounds during bonding.
As for claim 17, Carlborg does not teach that the thickness of the applied layer of the first coating/compound and the absorbance of the applied layer at the wavelength of the actinic radiation were adapted so that the reaction was still initiated in step c).
Haraldsson teaches that the thickness of the applied compound and the wavelength of the applied actinic/UV radiation were adapted to each other so a layer of a desired thickness was formed on the surface of the substrate (Page 7 Line 23 through Page 8 Line 23 and Page 9 Line 18 through Page 10 Line 2).
Based on the teachings Haraldsson, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have adapted the thickness of the applied compound of Carlborg in view of Bauman and the wavelength of the applied actinic/UV radiation to each other so that a layer of a desired thickness was formed on the surface of the substrate.
As for claims 21 and 22, Carlborg does not teach that the first coating was applied as a pattern or that the irradiation with actinic/UV radiation was done in a pattern.
Haraldsson teaches that the primer layer was formed in a desired pattern by either applying the coating in a pattern or irradiating the applied coating in a pattern (Page 10 Lines 6-10).
Based on the teachings of Haraldsson, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have either applied the first coating of Carlborg in view of Bauman as a pattern or irradiated the coating in a pattern because these were known method in the art for forming a patterned primer layer.
Claims 3, 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Carlborg et al in view of Bauman as applied to claim 1 above, and further in view of Hirai (U.S. Patent Publication No. 2004/0185388).
The teachings of Carlborg in view of Bauman as they apply to claim 1 have been discussed previously and are incorporated herein.
In the case of claims 3 and 4, Carlborg does not specifically teach that the substrate comprised any of the materials of claims 3 and 4. However, as was discussed previously, Carlborg teaches that the substrates comprised thermoplastics and further teaches that the substrates were those used as printed circuit boards (Column 6 Lines 24-30).
Hirai teaches a printed circuit board (Abstract) wherein the substrate for the printed circuit board comprised thermoplastic resins including polyolefins and polycarbonates (Page 6 Paragraph 0077).
Based on the teachings of Hirai, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used polyolefins and polycarbonates as the substrate materials of Carlborg in view of Bauman because these where known thermoplastic materials in the art for forming printed circuit boards.
As for claim 8, Carlborg does not teach that the coating compounds were dissolved in at least one solvent before contacting the substrate surface. However, as was discussed previously in the rejection of claim 9, Carlborg teaches an embodiment wherein the coating compounds were diluted in a solvent prior to application.
Hirai teaches that the surface of the substrate for the printed circuit board was coated with a primer layer and that the primer layer was formed by applying a coating material dissolved or dispersed in a solvent (Page 6 Paragraphs 0079-0080).
Based on the teachings of Hirai, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have dissolved the first coating compounds of Carlborg in view of Bauman in a solvent because this was a known application method in the art for applying a primer composition to the surface of a printed circuit board.
Claims 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Carlborg et al in view of Bauman as applied to claims 1 and 17 above, and further in view of Ahn et al (U.S. Patent Publication No. 2017/0217997).
The teachings of Carlborg in view of Bauman as they apply to claims 1 and 17 have been discussed previously and are incorporated herein.
In the case of claims 16 and 18, as was discussed previously, Carlborg taught having applied the compounds as a single formulation and that the formulation comprised a Norrish type II photoinitiator. However, Carlborg does not teach that the formulation/coating was acidic.
Ahn teaches a primer composition (Abstract) which was bonded with UV light (Page 32 Paragraph 0150) and that the primer composition had either a neutral or acidic pH (Page 32 Paragraphs 0151 and 0158).
Based on the teachings of Ahn, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formed the first coating/formulation of Carlborg in view of Bauman to have an acidic pH because this was a known pH in the art for primer compositions.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Carlborg et al in view of Bauman as applied to claim 1 above, and further in view of Boday et al (U.S. Patent # 9,999,905).
The teachings of Carlborg in view of Bauman as they apply to claim 1 have been discussed previously and are incorporated herein.
In the case of claim 23, Carlborg does not teach that the primer/first coating was applied by inkjet. However, Carlborg teaches that the first coating was applied by conventional method including spray coating (Column 9 Line 63 through Column 10 Line 3).
Boday teaches a method for forming a polymeric coating (Abstract) wherein the polymeric coating 150 was applied onto a substrate 100 which was a printed circuit board and had a primer layer 109 formed on the substrate 100 prior to applying the polymeric coating 150 (Column 3 Line 58 through Column 4 Line 52). Boday teaches that the primer layer was applied by spray-on coating or inkjet printing (Column 7 Line 66 through Column 8 Line 3).
Based on the teachings of Boday, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have applied the primer layer/first coating of Carlborg in view of Bauman by ink jet printing because this was a known deposition method in the art for forming primer layer.
Conclusion
Claims 1 through 24 have been rejected. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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