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 .
Applicant's submission filed on 8/7/26 has been entered. Claims 1, 5-7, and 15-16 are pending examination, claims 8-14 are withdrawn and claims 2-4 and 17 canceled.
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.
Claim(s) 1, 5-6, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al (US 2014/0242779; hereafter Nakamura) in view of Knickerbocker et al (US 2012/0193014; hereafter Knickerbocker) and Oshio et al (JPH06254456; citations directed to machine translation provided herein, hereafter Oshio).
Claim 1: Nakamura teaches a substrate processing method (see, for example, abstract), comprising:
rotating a laminated substrate manufactured by bonding a first substrate and a second substrate (see, for example, Fig 3-8, [0047-49]);
applying a filler, having thermosetting property (thermosetting resin), to a gap between a peripheral portion of the first substrate and a peripheral portion of the second substrate (see, for example, Fig 3-8, [0049])
and curing the filler, wherein applying the filler and curing the filler are continuously performed in a same processing chamber (see, for example, Fig 7-8, [0047-0049]).
Nakamura teaches the method of claim 1 above, and further teaches wherein applying the filler comprises an opening of fill material supply unit / dispense nozzle body (31) opposite and in close proximity to the gap (see, for example, Fig 7-8, [0047-0048]). Nakamura is silent regarding particular details of the supply unit, so it does not explicitly teach applying the filler comprises conveying the filler by use of a conveyance mechanism which includes a tube having a discharge port and filled with a filler, and a filler conveyance member which extends from the discharge port and which is in close proximity to or contacts the gap, the filler conveyance member being a single solid rod-shaped member having a size that allows a tip portion of the rod-shaped shaped member to be inserted into the gas, further wherein the filler flows out of the discharge port and then flows on an outside surface of the filer conveyance member to reach the gap.
Knickerbocker teaches wherein brush dispensers are well known supply units for adhesive application to gaps between peripheral portions of two laminated substrates (See, for example, Fig 8, [0028], claim 16). Knickerbocker further teaches wherein the brush conveyance mechanism comprises a filler conveyance member being a single solid rod-shaped member (such as a single bristle of the brush) which extends in close proximity to or contacts the gap and has a size that allows a tip portion to be inserted into the gap (See, for example, Fig 8, [0028]). Knickerbocker references the conveyance mechanism as a brush applicator / dispenser ([0028], claim 16), but does not explicitly teach wherein the conveyance mechanism includes a tube having a discharge port and filled with the filler wherein the conveyance member extends from the discharge port. Oshio teaches a method of dispensing adhesive using a brush, further a brush with an associated tube feed wherein the bristles (of 5) of the brush extend from a discharge port of a tube (22) filled with the adhesive so the adhesive flows out of the discharge port, onto an outside surface of the filler conveyance member (bristle) to reach the gap (See, for example, [0001-0007], [0046-0049], Fig 2 and 6). Oshio further teaches wherein such supplied brushes overcome issues of the prior art and achieve continuous application with constant width and stable application amount (See, for example, [0001-0009]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a filler supplied tube-fed brush as the conveyance mechanism for filler flow out of the discharge port on an outside surface of the bristle (filler conveyance member) with a size allowing the tip portion thereof to be inserted into the gap as it is well known in the art to predictably provide filler application to gaps between peripheral portions of two laminated substrates with a bristle of a brush and further wherein the brush and associated tubular supply structure further provide improvements in achieving constant width and stable application amount further enabling continuous operation.
Claim 5: Nakamura further teaches wherein curing the filler comprises curing the filler by use of a lamp heater (Infrared rays irradiated from irradiation unit 32) (see, for example, [0049]).
Claim 6: Nakamura further teaches wherein the lamp heater is irradiates infrared radiation and is positioned above the laminated substrate directing its radiation toward the filler (see, for example, [0047-49], Fig 7-8). IR radiation is designated conventionally by possessing a wavelength between 780 nm – 1 mm. So although not explicitly irradiating a light having a wavelength of 1 micron or more, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a wavelength within the claimed range since 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, 191USPQ 90 (CCPA 1976).
Claim 16: Knickerbocker and Oshio further teach wherein the filler conveyance member is flexible (see, for example, Knickerbocker [0028], Fig 8, and Ohio [0006-0010]) wherein the member is a bristle of a brush applicator).
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of Knickerbocker and Oshio as applied to claim 1 above, and further in view of Bheda et al (US 2016/0266573; hereafter Bheda)
Claim 7: Nakamura in view of Knickerbocker and Oshio teaches the method of claim 1 above, and Nakamura further teaches curing of the thermosetting filler material via irradiation (IR , UV) and /or heating (see, for example, [0032], [0049]). But it is silent as to particular devices, so it does not explicitly teach curing the filler by use of a heat-gun. Bheda teaches a method of deposition and fast curing of thermosetting materials (See, for example, abstract). Bheda further teaches wherein IR lamps, lasers and heat guns are all well-known localized heating systems to ensure appropriate curing temperatures to predictably fast cure thermosetting materials (See, for example, abstract, [0077], [0086-0090]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a heat gun as the heating source since heat guns are well known in the art to predictably achieve fast curing thermosetting compositions while maintain appropriate curing temperatures, since primary reference is silent as to a certain detail, one of ordinary skill would be motivated to consult a secondary reference which satisfies the deficiencies of the primary reference, and since where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious. In re Fout, 675 F.2d 297,301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967).
Claims 5-6: refer to the rejections of claims 5-6 over Nakamura in view of Knickerbocker and Oshio, and Bheda further explicitly teaches infrared heat lamps are all well-known localized heating systems to ensure appropriate curing temperatures to predictably fast cure thermosetting materials (See, for example, abstract, [0077], [0086-0090]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated an IR heat lamp as the heating source since IR heat lamps are well known in the art to predictably achieve fast curing thermosetting compositions while maintaining appropriate curing temperatures, since the primary reference is silent as to a certain detail, one of ordinary skill would be motivated to consult a secondary reference which satisfies the deficiencies of the primary reference, and since where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious. In re Fout, 675 F.2d 297,301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967).
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of Knickerbocker and Oshio as applied to claim 1 above, and further in view of Kneidel (US 2010/0125963; hereafter Kneidel).
Claim 15: Nakamura in view of Knickerbocker and Oshio teach the method of claim 1 above, wherein Knickerbocker and Oshio has taught the filler conveyance member as a brush bristle but it does not teach such a member is made of a material having a hydrophilic property. Kneidel teaches a method of modifying brush applicators, such as painting brushes (See, for example, [0001-0002]). Kneidel further teaches wherein modifying the bristles of such brush applicators allows for improved liquid pickup, retention, and release properties enhancing targeted delivery and volume control (See, for example, [0001], [0010], [0012], [0023], [0025]). Kneidel further teaches wherein the hydrophilic properties can be achieved by surface treatment or incorporated during formation of the bristle (see, for example, [0020]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a brush with bristles having a hydrophilic property by surface treatment or within its formation process since such hydrophilicity would predictably provide for improved liquid pickup, retention, and release properties enhancing targeted delivery and volume control.
Claim 16: Refer to the rejection of claim 15 above, wherein Kneidel has taught wherein conventional brush bristle are formed from polymeric materials like polyesters, PET, polyamides, nylon, etc (See, for example, [0026]) thus reading on being flexible.
Response to Arguments
Applicants’ arguments filed 8/7/26 have been fully considered but they are not persuasive.
The examiner does not agree with Applicant’s arguments (pg 6-7) that Nakamura in view of Knickerbocker and Oshio do not teach the recently amended content with respect to the member “being a single solid rod-shaped member” because they had taught a brush. As described previously and herein a single bristle of the brush of the prior art with its tip inserted in the gap and participating in filler transfer along its outside surface is interpreted as “the filler conveyance member”, thus meeting the actively amended claimed content. Although additional bristles of the entirety of the prior art brush can also participate in the application process, the claim as presently drafted does not exclude such additional features.
In response to Applicants’ arguments (pg 7) against the references individually (the brush of Oshio is designed to brush or coat the outer surface of cylindrical object, not a small gap), 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). And the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The rejection is over a combination of references, not Oshio alone. Oshio has only been relied upon for demonstrating benefits associated with the incorporation of an internal supply system for brushes. Specifically, such tube-feeding overcome issues of the prior art and achieve continuous application with constant width and stable application amount; such benefits derived explicitly from the prior art itself are deemed sufficient motivation for the combination. Oshio has not been relied upon for the particular structure of the substrate and the particular interaction between it and the brush; instead, such features have been derived from the teachings of the primary reference Nakamura and supporting reference Knickerbocker. Knickerbocker further serves as a bridging reference between Nakamura and Oshio demonstrating that brush dispensers are well known supply units for adhesive application to gaps between peripheral portions of two laminated substrates (See, for example, Fig 8, [0028], claim 16). As such, the examiner maintains reliance upon the applied combination is apt.
In response to applicant's argument (pg 8) that for claim 15 Kneidel 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). The Supreme Court in KSR reaffirmed the familiar framework for determining obviousness as set forth in Graham v. John Deere Co. (383 U.S. 1, 148 USPQ 459 (1966)), but stated that the Federal Circuit had erred by applying the teaching- suggestion-motivation (TSM) test in an overly rigid and formalistic way. KSR, 550 U.S. at ___, 82 USPQ2d at 1391. Specifically, the Supreme Court stated that the Federal Circuit had erred including “by holding that courts and patent examiners should look only to the problem the patentee was trying to solve ” (Id. at ___, 82 USPQ2d at 1397); Further when considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id . at ___, 82 USPQ2d at 1396. (MPEP 2441 I). In this case, Kneidel is pertinent to a particular problem with which the inventor was concerned, specifically it provides a means (via hydrophilicity) for surface modification on a filler conveyance member to enhance retention / release properties, targeted delivery and volume control thereover. Additionally / alternatively the combination of Nakamura in view of Knickerbocker and Oshio have already established the conventionality and predictability of bristle-based filler transfer within the art, Kneidel is similarly concerned with bristle based transfer and provides a predictable means for enhancement thereof. As such the examiner maintains that Kneidel is analogous and combination therewith is apt.
As to the remaining dependent claims they remain rejected as no additional separate arguments are provided.
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 NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/Primary Examiner, Art Unit 1712
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