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 .
DETAILED ACTOIN
Specification
**Note: citations of paragraph (para) numbers refer to the applicant’s published application (US 2023/0302741)**
The disclosure is objected to because of the following issues: para 1, 11 and 42 state that the connection is formed without adhesive (i.e. weld bar not adhesive). Respectfully, this is not an accurate statement. In para 59-62, the specification details the material used for the weld bar to form the connection. The material can be either a heat activated thermoplastic or a heat activated curing thermoset. According to the specification, this material joins the glass insert to the plastic part (abstract, para 44, 81). This is the literal definition of an adhesive (see examiner’s provided definition, in Non-Final dated 4/8/26 (NF 4/8/26) - An adhesive is "Any substance capable of bonding two materials.") Thus, according to para 44, 59-62 and 81, the connection is clearly formed with an adhesive. For the purposes of this examination, the examiner will treat the weld bar material as an adhesive, because that’s what the specification discloses.
A possible amendment is to amend para 1, 11 and 42 to expressly require that the connection between the plastic part and glass insert is formed without a separate adhesive layer therebetween.
Appropriate correction is required.
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, 6-8, 11-13 and 21-23 is 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.
As to claim 1, the specification as originally filed does not support the limitation requiring “wherein the connecting region consists of the thermoplastic“. The original specification discloses “the connecting region consists of the plastic part and the glass insert” (original claim 14). Additionally, para 42 discloses the connecting region consists of the plastic part and “the contact region of the glass insert”. No portion of the original specification supports the connecting region consisting of ONLY the thermoplastic, wherein the glass insert or the glass contact region is expressly excluded from the connecting region.
As to claim 23, The specification as originally filed does not support the arranging comprising placing the weld bar and the abutment region directly against each other without any adhesive. As discussed in the objection to the specification above, the specification clearly discloses the weld bar containing adhesive material. The examiner notes the specification does support placing the weld bar and the abutment region directly against each without an adhesive layer separate and distinct from the adhesive material of the weld bar adhesive. See above.
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 1, 6-8, 11-13, and 21-23 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.
Claim 1 recites “wherein the connecting region consists of the thermoplastic”. It’s unclear if the “thermoplastic” refers to the thermoplastic part or the thermoplastic of the weld bar. Additionally, it’s unclear how, in the context of the previously recited limitations, how the connecting region can “consist” of the thermoplastic of the plastic part and the glass insert.
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.
Claim(s) 1, 6, 8, 11, 13, and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suter et al. (US 2018/0127694, of record) in view of Hoerlein (EP 2735432, see machine translation of record for citations) and Jidosha (EP 0212656, of record).
As to claim 1, Suter discloses a process for producing a plastic part 10 having a glass insert, comprising the steps of: providing a prefabricated plastic part 10a having at least one circumferential weld bar (lower end sidewalls structures, para 130, fig 3, 17b-18f), lying in a plane, providing a glass insert 1 (para 87) having at least one circumferentially closed abutment region 50 in which spaced-apart recesses 53 (para 137, fig 18f-18j) are arranged and which has a shape and size matching the weld bar, arranging the glass insert with the at least one circumferentially closed abutment region matched against the weld bar (fig 18f-18j), the weld bar having a volume that, when heated, seeps into the recesses of the abutment region and forms a connecting region 50 (figs, 2, 3, 18f-18j, associated text, para 125-140), wherein the weld bar and plastic part consist of a thermoplastic (para 97); wherein arranging comprises connecting the thermoplastic part to the glass insert in a form-fitting, liquid tight manner (para 20, 94, 96, fig 3, 18a-18e) without filler material (para 97); warming the weld bar and pressing the at least one circumferentially closed abutment region against the weld bar to produce the connecting region 50; wherein the connecting region consists of the thermoplastic (figs, 2, 3, 18f-18j, associated text, para 94-99. 125-140), wherein the connecting region encompasses a plastic-free region of the glass insert (17, para 129).
Suter does not expressly disclose the weld bar protruding and having an area integral with the thermoplastic part. However, para 130 of Suter suggests that, to assist in the joining, the bar can be formed as disclosed in Hoerlein.
Hoerlein discloses a protruding weld bar 31/32 having an area integral with a plastic part 13a/b, and that such a configuration enables improved melting (para 33-34). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Suter such that the weld bar is integral with the thermoplastic part and protruding, wherein the weld bar has an area integral with the thermoplastic part as such has a reasonable expectation of success and improves melting and joining.
Suter does not disclose that the spaced-apart recesses are through holes. Jidosha discloses a method of connecting a glass plate (col 3, line 15) to a plastic wherein the plastic weld bar material is melted directly through a through hole in the glass (col 2, line 33 - col 3, line 55, examples 1-2, figs 1-2d).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Suter and Hoerlein such that the spaced apart recesses are spaced apart through holes such that the melted thermoplastic has passed through said through holes in said abutment region as taught by Jidosha above as such produces an efficient joining operation while reducing waste (col 6, line 10-27).
As to claim 6, Suter discloses the weld bar comprises a foot formed that projects beyond the weld bar by at least a thickness of the glass insert (fig 3).
As to claim 8, Suter discloses that the plastic free region of the glass inserts comprises flat, closed surfaces (fig 17b).
As to claim 11, Suter in view of Jidosha discloses the glass insert is flat and the through-holes are generated by irradiating the glass insert with laser pulses and subsequent etching, wherein the glass insert prior to irradiation with laser pulses and prior to etching comprises a thickness of up to 800 µm, and after etching has a thickness which is smaller by 50 to 200 µm and the through-holes are located only in the laser-irradiated regions (para 87, figs 2, 17b, 18f-18j).
As to claim 13, Jidosha discloses the plastic is flat-pressed into a layer extending into a plane at a spacing from the surface of the glass insert (fig 1c-1d).
As to claim 21, Jidosha discloses the connecting region plastic which has passed through the through-holes of the abutment region on the surface of the glass insert and opposite to the plastic part forms protrusions (examples 1-2, figs 1-2d, e.g. protrusions shown as 1a fig 1(c)-1(d), 11a in figs 2c-2d). Additionally, the embodiment of fig 3a-b shows protrusions.
As to claim 22, Jidosha discloses pressing the protrusions to form a flat-pressed layer of plastic on the glass insert (protrusions 1a are pressed flat see figs 1c-1d, C5, lines 1-15).
As to claim 23, Suter as modified by Hoerlein and Jidosha above disclose the arranging comprises placing the weld bar and the abutment region directly against each other without any adhesive (Suter, para 47, 20, 94).
Response to Arguments
Applicant's arguments filed 6/30/26 have been fully considered but they are not persuasive.
The applicant asserts the “Examiner's continued objection fails to allow Applicant to be its own lexicographer” and the examiner is denying the applicant’s right to act as their own lexicographer. These arguments are not persuasive. The examiner never denied the applicant’s the “right” to act as their own lexicographer. Rather, section 13 of the NF 4/8/26 specifically says “While the applicant can act as their own lexicographer”.
Additionally, the examiner asserted that although the applicant can act as their own lexicographer, the redefinition of a term, in particular a redefinition contrary to its accepted meaning, must meet the standards set forth in MPEP 2111.01 IV. See section 13 of the NF 4/8/26. The applicant has failed to meet these standards. MPEP 2111.01 IV requires “To act as their own lexicographer, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366, 62 USPQ2d 1658, 1662 (Fed. Cir. 2002).” The applicant has not clearly set forth any special definition of “adhesive”. As previously submitted by the examiner, the plain and ordinary definition of adhesive is "any substance capable of bonding two materials" (herein referred to as “ordinary meaning”) No portion of the specification clearly rebuts this definition. In the original specification, “adhesive” is mentioned three times – para 1, 11 and 42. None of these paragraphs redefine “adhesive” by reciting an exact definition with “reasonable clarity, deliberateness, and precision” so as to rebut the ordinary meaning as required by MPEP 2111.01 IV.
Para 1 discloses “connection of the plastic part with the glass insert is carried out without a filler material, e.g. without adhesive”. This does not say the weld bar is without adhesive, and it does not say adhesive means something counter to its ordinary meaning. It simply says the connection can be formed without filler material, an example of which can be adhesive.
Para 11 recites “the plastic parts producible by the process shall not have an accessible adhesive layer”. This does not say the weld bar is without adhesive, and it does not say adhesive means something counter to its ordinary meaning. It simply says there is no separate adhesive layer between plastic (weld bar) and the glass. If anything, this indicates to one of ordinary skill a separate adhesive layer is excluded from between the weld bar and the glass, NOT that adhesive is excluded from the weld bar itself. This is disclosure alone disqualifies the applicant from meeting the “reasonable clarity, deliberateness, and precision” standard set forth in MPEP 2111.01, because it defines the absence of adhesive in a location counter to the location alleged by the applicant.
Para 42 states the connection “is liquid-tight without additional material, e.g. without adhesive”. This does not say the weld bar is without adhesive, and it does not say adhesive means something counter to its ordinary meaning. It simply says the connection can be formed without additional material, an example of which can be adhesive.
At best, the above cited portions of the specification indicate the connection is formed without a separate adhesive layer between the weld bar and the glass. But, for the reasons detailed above, in the 8/4/26 interview summary, and the examiner’s previous office actions, said disclosures do not clearly redefine the term “adhesive” counter to its ordinary meaning. Additionally, said discloses do not clearly state adhesive is excluded from the weld bar itself. According to MPEP 2111.01 IV, “where the specification is ambiguous as to whether the inventor used claim terms inconsistent with their ordinary meaning, the ordinary meaning will apply.” Thus, the examiner respectfully submits, for at least the reasons detailed above and in previous actions, the ordinary meaning of “adhesive” applies. It appears to the examiner that the disclosure supports bonding/joining without a separate adhesive layer.
The applicant states “adhesives for glass usually are reactive compounds, e.g. on the basis of acrylates like methyl methacrylate (MMA), or silanes. Reactive compounds (duroplasts) harden chemically and cannot be softened again by heating like a thermoplastic.” This is a conclusory statement not supported by evidence. Nonetheless, it does not negate the examiner’s submitted ordinary definition.
Subsequently, the applicant states “The new reference of Hoerlein does not cure the previous defects in the rejection, and the ever evolving rejection indicates an improper predetermination to reject the claims.” The applicant appears to be asserting the examiner’s rejection is allegedly improper because of an additional reference after filing of amendments and an RCE. This argument has no legal basis, and it’s not germane to the merits of the rejection. Nonetheless, the Hoerlein reference is NOT new. See Final Rejection dated 9/15/25.
Applicant states
The interpretation of the examiner that the thermoplastic is an adhesive itself is contrived because adhesives generally don't have structure and couldn't form a weld bar. The contrived interpretation would have the thermoplastic part along the connecting region encompassing the plastic free region of the glass insert be completely be made of an adhesive. Such an interpretation is not supported by the application and improper under §2111.01. It would not be made by an artisan.
Respectfully, no portion of the examiner rejection states that the thermoplastic of Suter is an adhesive. The assertion that “adhesives generally don’t have structure and couldn’t form a weld bar” is conclusory and inaccurate. These above remarks are not germane to merits of the rejection.
The applicant argues that because Hoerlein fails to disclose glass, one of ordinary skill would not look to Hoerlein to modify Suter. This argument is not persuasive because para 130 of Suter literally says to look to Hoerlien (EP 2735432) for guidance on how to perform the attaching “to assist in this joining, the lower end of sidewall 13 may be provided equally with structures such as illustrated in EP2735432”.
Applicant then asserts that Suter does not disclose a weld bar. This is not persuasive as the examiner has extensively discussed, both in the body of the rejection above and in previous office actions (NE 4/8/26), the lower end sidewalls structures as the weld bar (para 130, fig 3, 17b-18f). Applicant’s asserts Suter does not disclose through-holes. Suter discloses connecting the thermoplastic part by melting the weld bar such that thermoplastic of the bar melts into the recess in a form-fitting manner. See para 20 and 47. Hoerlien discloses through-holes and Suter suggests the joining can be performed in the manner disclosed by Hoerlien (see above, para 130).
Applicant’s arguments with respect to Jidosha are not germane to the merits of the rejection because Jidosha is used to show why it would be obvious to use spaced apart though-holes through which the plastic melts. Applicant’s argument that Suter “does not need a weld bar” is directly contradicted by the fact that Suter discloses a weld bar. Applicant accuses the examiner of using a “made up theory” as the motivation (efficient joining operation) for modifying Suter such that it has through holes. The argument is not persuasive because the examiner’s reasoning is not a theory. Jidosha literally discloses that joining by using through holes “leads to an effi-cient joining operation” (C6, L26-27).
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 CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
