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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/4/26 has been entered.
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 the specification, this material joins the glass insert to the plastic part (abstract, para 44, 81). This is the literal definition of an adhesive.1 Thus, according 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.
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.
Claim 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. The specification as originally filed does not support the arranging comprising placing the weld bar and the abutment region directly against each without any adhesive. As discussed in the objection to the specification above, the specification clearly discloses the weld containing adhesive. 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.
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 thermoplastic of the plastic part and the glass insert.” It’s entirely unclear if the “thermoplastic of the part” is the same “thermoplastic” previously recited. 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 1 previously requires the material of the heated weld bar to form the connecting region. Thus, the limitation improperly excludes the material of the heated weld bar from the connecting region.
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 thermoplastic of the thermoplastic part and the glass insert (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 20, 94)
Response to Arguments
Applicant's arguments filed 3/4/26 have been fully considered but they are not persuasive.
**Applicant’s representative has requested an interview. The examiner agrees that one should be scheduled.**
The examiner’s definition of “adhesive” is not based on a theory. An adhesive is “Any substance capable of bonding two materials”. See attached definition. The weld bar is a substance capable of bonding two materials. Said substance as disclosed in the specification can be formed from heat-activated thermoset or thermoplastic materials (para 59-61). Applicant then asserts that the ordinary meaning of “without adhesive” is “without material other than the plastic of the weld bar” because the specification recites “It has shown that the connecting region formed in this way, which consists of the plastic of the weld bar and the contact region of the glass insert, is liquid-tight without additional material, e.g. without adhesive.” This portion of the specification does not support the applicant’s assertion because it does not expressly say the definition of without adhesive is without material other than the plastic of the weld bar. While the applicant can act as their own lexicographer, the specification fails to meet the standard for imparting a “special definition” to the term “adhesive”. See MPEP 2111.
The applicant asserts the point of “the disclosure and the claim is that there is no separate adhesive.” It appears to the examiner that the disclosure supports bonding/joining without a separate adhesive layer. But the claims (even claim 23) do not require such. Limitations recited in the specification are not disclosed in the claims. MPEP 2111.
Applicant cites a Google search for the ordinary meaning of “adhesive”. Respectfully, the ordinary meaning cited by the applicant is not the “broadest reasonable interpretation” as required by MPEP 2111. Examiner respectfully submits that the definition of an adhesive being “any substance capable of bonding two materials” constitutes a broad, reasonable interpretation and is a more appropriate definition than applicant’s. For the reasons detailed above and in previous office actions, the specification fails to impart a special definition to adhesive. Additionally, the specification does not impart a specification definition to the weld bar. Disclosing the weld bar directly contacts the glass insert to form the connection does not exclude the presence of adhesive material in the weld bar.
The applicant asserts that the claims require direct contact between “the weld bar and the thermoplastic part”. No portion of the claims recite such a limitation.
The applicant asserts that the amended claim “excludes any filler material, including any adhesive that is separate from the ‘prefabricated single-pieced thermoplastic part.’” Respectfully, this is not accurate. Claim 1 excludes filler material between the thermoplastic part and the glass insert. It does not specify what constitutes “filler material” and it does not exclude “adhesive material.”
Applicant asserts the “sidewalls” of Suter is not comparable to the "single-pieced prefabricated part”. Respectfully the examiner identified 10a as the singled pieced thermoplastic part. Additionally, the examiner clearly identified the lower end sidewalls structures as the weld bar. The portion of the sidewall is discussed in para 130 which recites the lower sidewall is “directly thermally welded” to the insert 1.
The applicant asserts Suter does not disclose "wherein the arranging comprises connecting the thermoplastic part to the glass insert in a form-fitting, liquid-tight manner and without filler material”. This is not accurate. Para 20 discloses that insert and weld bar are “directly sealed”. Para 94 and 130 also discloses. At least figures 18a-18e disclose the form fit. At least para 43, 97 and 130 disclose pressing. Applicant asserts that Suter does not disclose protrusions. This is an individual attack on Suter without considering the other references. Applicant is reminded that one cannot show nonobviousness by attacking references individually and in a vacuum of each other as a rejection under 35 U.S.C. 103 is a consideration relating to the combined teachings of the references (and not each reference in a vacuum of the others). Claim 23 is addressed in the rejections above.
Conclusion
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.
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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
1 An adhesive is “Any substance capable of bonding two materials.” See attached reference. “Dictionary of Materials and Testing (2nd ed)”. Tomsic, Joan. Published 2000. Page 9. Retrieved online via Knovel