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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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.
Claims 1-2, 4-14 and 17-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In reference to claims 1, 7 and 12, each of the claims has been amended to recite “the first thermoplastic adhesive layer has a forming temperature below 160ºC”. While the instant application has support for the thermoplastic adhesive can be curable at less than 160ºC at [0019]. However, there is no support for a “forming temperature” being below 160ºC. It is suggested to amend “has a forming” to “has a cure”.
Regarding dependent claims 2, 4-6, 8-11, 13-14 and 17-18, these claims do not remedy the deficiencies of parent claims 1, 7 and 12 noted above, and are rejected for the same rationale. Further, it is noted that if Applicant amends claim 7, as noted above, claim 9 would be subject to a rejection under 35 U.S.C. 112(d) for failure to further limit the claim upon which it depends.
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 1-2, 4-14 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Parloo et al. (US 2015/0147511) (Parloo) in view of Wakamatsu et al. (US 2018/0111352) (Wakamatsu) and 2015T-5015TP (Nitto).
In reference to claims 1, 4-7, 9 and 10, Parloo teaches a structural dampening material that provides a multitude of functionalities, such as reduction of vibration, reduction of low frequency noise, high damping performance at high temperatures, increasing rigidity of the adherent, good thermal insulation properties as well as easy applicability ([0024]; [0066]) (corresponding to a reinforcing element for attaching to a substrate). The structural dampening material includes a polypropylene honeycomb layer ([0024]) (corresponding to a stiffening layer, wherein the stiffening layer comprises a polypropylene honeycomb core element).
Parloo further teaches the honeycomb structure of the honeycomb layer includes individual cells that are closed on one side of the honeycomb layer in an alternating fashion, so that on each side open cells and closed cells alternative ([0028]) (corresponding to individual cells with each of the individual cells having one open end and one closed end; the open end and the closed end of each individual cell are aligned such that an open end of one individual cell is adjacent to a closed end of another individual cell).
The structural dampening material has a structure as follows: constraint layer/interlayer/honeycomb core layer/layer of structural damping material/double sided adhesive tape/release liner or constraint layer/interlayer/honeycomb core layer/layer of self-adhesive structural dampening material/release liner ([0060]; [0061]). The adhesive layer is on the other side of the honeycomb structure to ensure proper adhesion to the desired adherent ([0024]) (corresponding to a first thermoplastic layer adhering the stiffening layer to the substrate).
The interlayer between the constraint layer and the honeycomb core layer has adhesive properties ([0062]) (corresponding to a second thermoplastic adhesive layer, the high tensile modulus layer adhering to the stiffening layer by the second thermoplastic adhesive layer).
Parloo does not explicitly teach (1) the constraint layer has a tensile strength greater than 500 N/25mm and (2) the double sided adhesive tape/layer of self-adhesive structural dampening material (i.e., first layer) has a cure forming temperature below 160ºC or the interlayer (i.e., second layer) and the first layer have a shearing strength of at least 500 N/4 cm2, as presently claimed.
With respect to (1), Parloo teaches the constraint layer a glass fiber layer such as a glass cloth and is bonded to the laminate by adhesive interlayer comprising resin ([0042]; [0062]).
Wakamatsu teaches a pressure sensitive adhesive article including a pressure sensitive adhesive layer and a fibrous sheet ([0005]; [0036]; [0044]). The fibers are formed from glass and enable suitable reinforcement of an adherend ([0037]; [0038]). The fibrous sheet has a tensile strength of 500 to 2500 N/25mm ([0039]).
In light of the motivation of Wakamatsu, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the glass cloth be the fibrous glass sheet having a tensile strength of 500 to 2500 N/25mm, in order to provide suitable reinforcement to the adherend.
With respect to (2), Parloo teaches the first layer and the second layer may comprise adhesives that are pressure sensitive ([0062]).
Nitto teaches Nitto 5015T is a transfer tape which consists of a pressure sensitive modified acrylic adhesive, intended for use as a general mounting tape where a particular high adhesion level on lower surface energy substrates is requires (General description, p. 1) (corresponding to the first thermoplastic adhesive layer being a thermoplastic acrylic-based pressure sensitive adhesive; the second thermoplastic adhesive layer is a thermoplastic acrylic-based pressure sensitive adhesive; the pressure sensitive adhesive comprises acrylate; the pressure sensitive adhesive comprises polyacrylate). The modified acrylic adhesive layer combines high repulsion resistance with a high adhesion level on low surface energy substrates and is suitable for a wide range of working temperatures (Characteristics, p. 1). The nest application conditions are obtained at a temperature between 15 ºC and 40 ºC (Application guidelines, p. 2). Thus, it is clear the adhesive will form a suitable bond at a temperature below 160ºC (corresponding to the first thermoplastic adhesive layer has a forming temperature below 160ºC).
Alternatively, the instant application discloses 5015T as a suitable adhesive for the first thermoplastic adhesive layer. Given that 5015T is disclosed as a suitable first thermoplastic adhesive layer for the claimed invention, it is clear that 5015T will inherently have a forming temperature below 160ºC. “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. (MPEP 2112.01).
Nitto further teaches the adhesive provides flexible and conformable application and maybe used in applications exposed to severe stresses (Characteristics; Application, p.1).
In light of the motivation of Nitto, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have each of the first layer and the second layer of Parloo be Nitto 5015T, in order to provide high adhesion, high repulsion resistance and a conformable application.
Given that Parloo in view of Wakamatsu and Nitto teaches the adhesive layers are Nitto 5015T and the instant application’s Specification discloses 5015T adhesive as a suitable thermoplastic pressure sensitive adhesive for producing the claimed product at [0030] and in working example 7, it is clear the adhesive layers of Parloo in view of Nitto would intrinsically have a shear strength of at least 500 N/4 cm2.
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 reference to claims 2 and 8, Parloo in view of Wakamatsu and Nitto teaches the limitations of claim 1 and claim 7, as discussed above. Parloo further teaches release liner included in the structural dampening laminate ([0060]; [0061]) (corresponding to further comprising a release liner layer).
In reference to claim 11, Parloo in view of Wakamatsu and Nitto teaches the limitations of claim 7, as discussed above. Parloo further teaches an overall thickness of the honeycomb layer is from 2 to 50 mm ([0030]) (corresponding to the honeycombed core element has a thickness between 1.5 mm and 5.0 mm).
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).
In reference to claims 12 and 14, Parloo teaches a structural dampening material that provides a multitude of functionalities, such as reduction of vibration, reduction of low frequency noise, high damping performance at high temperatures, increasing rigidity of the adherent, good thermal insulation properties as well as easy applicability ([0024]; [0066]) (corresponding to a reinforcing element for attaching to a substrate). The structural dampening material includes a polypropylene honeycomb layer ([0024]) (corresponding to a stiffening layer, wherein the stiffening layer comprises a polypropylene honeycomb core element).
Parloo further teaches the honeycomb structure of the honeycomb layer includes individual cells that are closed on one side of the honeycomb layer in an alternating fashion, so that on each side open cells and closed cells alternative ([0028]) (corresponding to individual cells with each of the individual cells having one open end and one closed end; the open end and the closed end of each individual cell are aligned such that an open end of one individual cell is adjacent to a closed end of another individual cell). An overall thickness of the honeycomb layer is from 2 to 50 mm ([0030]) (corresponding to the honeycombed core element has a thickness between 1.5 mm and 5.0 mm).
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).
The structural dampening material has a structure as follows: constraint layer/interlayer/honeycomb core layer/layer of structural damping material/ double sided adhesive tape/release liner or constraint layer/interlayer/honeycomb core layer/ layer of self-adhesive structural dampening material/ release liner ([0060]; [0061]). The adhesive layer is on the other side of the honeycomb structure to ensure proper adhesion to the desired adherent ([0024]) (corresponding to a first thermoplastic layer adhering the stiffening layer to the substrate).
Given that the constraint layer is spaced apart from the release liner by at least the honeycomb core layer and the honeycomb core layer has the thickness of 2 mm to 50 mm ([0060]; [0061]; [0030]), it is clear the constrain layer is at least 1 mm from a surface of the adherent (corresponding to the high tensile modulus layer is positioned within the reinforcing element to be at least 1 mm from a surface of a substrate).
The interlayer between the constraint layer and the honeycomb core layer has adhesive properties ([0062]) (corresponding to a second thermoplastic adhesive layer, the high tensile modulus layer adhering to the stiffening layer by the second layer).
Parloo does not explicitly teach (1) the constraint layer has a tensile strength greater than 500 N/25mm and (2) the double sided adhesive tape/layer of self-adhesive structural dampening material (i.e., first layer) has a cure forming temperature below 160ºC or the interlayer (i.e., second layer) and the first layer have a shearing strength of at least 500 N/4 cm2, as presently claimed.
With respect to (1), Parloo teaches the constraint layer is a glass fiber layer such as a glass cloth and is bonded to the laminate by adhesive interlayer comprising resin ([0042]; [0062]) (corresponding to a high tensile modulus layer comprising a resin and a plurality of fibers; the plurality of fibers are selected from the group of carbon fiber and glass fiber).
Wakamatsu teaches a pressure sensitive adhesive article including a pressure sensitive adhesive layer and a fibrous sheet ([0005]; [0036]; [0044]). The fibers are formed from glass and enable suitable reinforcement of an adherend ([0037]; [0038]). The fibrous sheet has a tensile strength of 500 to 2500 N/25mm ([0039]).
In light of the motivation of Wakamatsu, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the glass cloth be the fibrous glass sheet having a tensile strength of 500 to 2500 N/25mm, in order to provide suitable reinforcement to the adherend.
With respect to (2), Parloo teaches the first layer and the second layer may comprise adhesives that are pressure sensitive ([0062]).
Nitto teaches Nitto 5015T is a transfer tape which consists of a pressure sensitive modified acrylic adhesive, intended for use as a general mounting tape where a particular high adhesion level on lower surface energy substrates is requires (General description, p. 1) (corresponding to the first thermoplastic adhesive layer being a thermoplastic acrylic-based pressure sensitive adhesive; the second thermoplastic adhesive layer is a thermoplastic acrylic-based pressure sensitive adhesive; the pressure sensitive adhesive comprises acrylate; the pressure sensitive adhesive comprises polyacrylate). The modified acrylic adhesive layer combines high repulsion resistance with a high adhesion level on low surface energy substrates and is suitable for a wide range of working temperatures (Characteristics, p. 1). The nest application conditions are obtained at a temperature between 15 ºC and 40 ºC (Application guidelines, p. 2). Thus, it is clear the adhesive will form a suitable bond at a temperature below 160ºC (corresponding to the first thermoplastic adhesive layer has a forming temperature below 160ºC).
Alternatively, the instant application discloses 5015T as a suitable adhesive for the first thermoplastic adhesive layer. Given that 5015T is disclosed as a suitable first thermoplastic adhesive layer for the claimed invention, it is clear that 5015T will inherently have a forming temperature below 160ºC. “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. (MPEP 2112.01).
Nitto further teaches the adhesive provides flexible and conformable application and maybe used in applications exposed to severe stresses (Characteristics; Application, p.1).
In light of the motivation of Nitto, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have each of the first layer and the second layer of Parloo be Nitto 5015T, in order to provide high adhesion, high repulsion resistance and a conformable application.
Given that Parloo in view of Wakamatsu and Nitto teaches the adhesive layers are Nitto 5015T and the instant application’s Specification discloses 5015T adhesive as a suitable thermoplastic pressure sensitive adhesive for producing the claimed product at [0030] and in working example 7, it is clear the adhesive layers of Parloo in view of Nitto would intrinsically have a shear strength of at least 500 N/4 cm2.
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 reference to claim 13, Parloo in view of Wakamatsu and Nitto teaches the limitations of claim 12, as discussed above. Parloo further teaches 50% of the cells are open on one side, while the other 50% of the cells are closed on that side. On the other side of the respective honeycomb core layer, the cells which are open on the one side are closed on the other side ([0028]) (corresponding to a ratio of the open end of the individual cells to the closed end of the individual cells on a given side of the polypropylene honeycomb core is 1:1).
In reference to claim 17, Parloo in view of Wakamatsu and Nitto teaches the limitations of claim 12, as discussed above. Parloo teaches the first layer is adhered between the honeycomb core layer and the adherent ([0061]; [0061]; [0024]) (corresponding to the first thermoplastic layer is a doubled sided). Parloo in view of Nitto teaches the first layer is Nitto 5015T, Nitto 5015T is a modified acrylic adhesive (General description, p. 1) (corresponding to a double sided acrylic adhesive tape with an acrylate adhesive).
In reference to claim 18, Parloo in view of Wakamatsu and Nitto teachers the limitations of claim 12, as discussed above. Parloo shows in FIGS. 1(a) and 1(b) the closed end of the individual cells of the honeycomb are adhered to the double sided tape or self-adhesive structural dampening material 2 and the interlayer (i.e., dampening material/ dampening material 1) (corresponding to the closed end of the individual cells in the polypropylene honeycomb core is adhered to the first thermoplastic adhesive layer or the second thermoplastic or thermoset adhesive layer).
Response to Arguments
In response to amended Specification filed 12/02/2025, the previous Specification Objections of record are withdrawn.
In response to amended claim 4, the previous Claim Objections of record are withdrawn.
In response to amended claim 1, which now requires “a high tensile modulus layer having a tensile strength greater than 500 N/25mm” it is noted that Parloo and Nitto, alone or in combination, no longer meet the presently claimed limitations. Therefore, the previous 35 U.S.C. 103 rejections over Parloo in view of Nitto are withdrawn. However, the amendments necessitates a new set of rejections, as discussed above.
Applicant’s arguments with respect to the teachings of JPS 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.
Applicant primarily argues:
“The Office Action alleges that the material in Nitto would inherently have a forming temperature below 600ºC, which has now been amended to a forming temperature below 160ºC. The Office Action’s analysis is not sufficient to present a prima facie case of obviousness. According to the M.P.E.P., ‘[t]he fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic.’ M.P.E.P. at § 2112 (emphasis added); see also In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955 (1957 (Fed. Cir. 1993). In addition, inherency must be supported by ‘fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.’ Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis added).”
Remarks, p. 7-8
The examiner respectfully traverses as follows:
As discussed in the rejection above, Nitto discloses the best application conditions are obtained at a temperature between 15ºC and 40ºC (Application guidelines, p. 2). Therefore, it is clear the first layer of the 5015T tape would form a suitable bond at a temperature below 160ºC (i.e., 15-40ºC).
Alternatively, the instant application discloses 5015T as a suitable adhesive for the first thermoplastic adhesive layer. Given that 5015T is disclosed as a suitable first thermoplastic adhesive layer for the claimed invention, it is clear that 5015T will inherently have a forming temperature below 160ºC. “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. (MPEP 2112.01).
It is not clear how the prior art can disclose the same first thermoplastic adhesive layer as presently claimed comprising the same types and amount of components as presently claimed and disclosed by the working examples and not possess the properties claimed. The Office realizes that the claimed properties are not positively stated by the reference. However, the references teaches all of the claimed ingredients and claimed amounts. Therefore, the claimed properties would be inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.
Therefore, Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive.
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 Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784