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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 18 June 2026 has been entered.
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.
Claims 1-10 are rejected under 35 U.S.C. 112(a) 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. Claim 1 recites “wherein e-coating is an electrodeposited organic coating” and no support is found where the e-coating comprises any and all organic materials. Paragraph 3 of the originally filed specification indicates where e-coatings may comprise resins, pigments, and additives and the first paragraph of the specification in the priority provisional application states where the e-coating may be epoxy-based. These are the only references found to organic materials within applicant’s original disclosure and this does not support the scope of any and all organic materials. As such, said recitation is considered new matter. Claims 2-10 are included in this rejection as they depend upon a rejected claim.
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.
Claims 2 and 4-5 are rejected under 35 U.S.C. 112(b) 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 2 recites where the first and second e-coatings comprise anodized coatings whereas claim 1 sets forth that the e-coating is organic and it is unclear how the coating is simultaneously anodized (e.g. inorganic) and organic.
Claim 4 recites a further second material different from the first configured to bond the first and second metal structures and is considered indefinite as claim 1 states where the adhesive layer is directly between the first and second organic e-coatings. As such, the configuration of the second material to the apparatus as a whole is unclear and the public is not appropriately appraised of the scope of the claim. Claim 5 is included in this rejection as it depends upon a rejected claim.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Power et al. (US 2020/0002585).
Considering claim 1, Power teaches a urethane adhesive system (abstract) including the bonding of two substrates with the adhesive therebetween (Paragraphs 108 and 127; Fig. 2) including an example of where the substrates are steel with an electro-deposited polymer coating thereon directly bonded by the adhesive (Paragraphs 109 and 129) and this is considered to teach 1st and 2nd metal structures with 1st and 2nd organic e-coatings thereon and this anticipates that which is claimed.
Considering claim 2, Power teaches where the e-coatings are the same (Paragraphs 109 and 129).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Naughton et al. (US 2007/0051465) in view of Power et al. (US 2020/0002585).
Considering claim 1, Naughton teaches an assembly of two or more components bonded with an adhesive to form a unitary article (abstract). Embodiments are taught of 1st and 2nd components joined directly by an adhesive (Paragraph 11; Fig.1b). The components comprise metals of steel, aluminum, etc. and may be coated with suitable coatings including cured e-coatings for metals (Paragraph 25). However, Naughton does not teach where the e-coatings are organic.
In a related field of endeavor, Power teaches a urethane adhesive system (abstract) for the bonding of two substrates with the adhesive therebetween (Paragraphs 108 and 127; Fig. 2). Example of where the substrates are steel with an electro-deposited polymer coating of epoxy thereon which is then directly bonded by the adhesive (Paragraphs 109 and 129).
As both Naughton and Power teach bonding of components with adhesive they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Naughton with the epoxy e-coating material taught by Power as this is considered a substitution of one conventionally known protective e-coating material for another and one would have had a reasonable expectation of success.
Considering claim 3, Naughton teaches an embodiment with member (32) having a groove which receives member (34) therein (Paragraph 12; Fig. 2b – reproduced below) and where the members may be e-coated (Paragraph 25).
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Considering claim 6, Naughton teaches where member (32) has a neck portion connecting to a larger structure (Figs 2a-2b) and where the members are metal (Paragraph 25) and this is considered a connection point configured to provide electrical continuity as no specific configuration is recited. See MPEP 2111.01.
Considering claim 7, the neck portion in Fig. 2b of Naughton is considered structurally weaker as claimed due to less material being present compared to the remainder of (32) and meets the claimed configuration as no particular strength is recited. See MPEP 2111.01.
Considering claim 8, Naughton teaches where (32) is connected to the larger structure of the assembly (Fig. 2b) and is considered configured to support the weight of the first member.
Considering claim 9, Naughton teaches in Fig. 2b where (32) has an outer and internal surface and where the internal surface is the connecting portion with (34).
Considering claim 10, Power teaches where the e-coatings are the same (Paragraphs 109 and 129).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Naughton et al. (US 2007/0051465) in view of Power et al. (US 2020/0002585) as applied to claim 1 further in view of Arrowsmith et al. (US 4,624,752).
Considering claim 2, notwithstanding the 35 USC 112(b) rejection as set forth above, the teachings of Naughton and Power as applied to claim 1 are outlined above. Naughton teaches where the components comprise metals of steel, aluminum, etc. and may be coated with suitable coatings including cured e-coatings for metals (Paragraph 25), but does not teach the claimed anodized coating.
In a related field of endeavor, Arrowsmith teaches a surface treatment of aluminum before adhesive coating or painting comprising anodizing (abstract) where the coating may be organic materials, such as paint, lacquers, and varnishes (Column 1 lines 15-24). The aluminum is anodized to produce thick, dense coatings which afford corrosion resistance (Column 3 lines 24-31) and this improves bonding to other materials (Column 5 lines 10-14).
As Naughton, Power, and Arrowsmith teach adhesive bonding of metals they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the teachings of Naughton and Power with the anodizing of the aluminum prior to bonding to organic materials (i.e. both metal components comprise and anodized layer) as this is known to improve bonding to other materials and one would have had a reasonable expectation of success.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Naughton et al. (US 2007/0051465) in view of Power et al. (US 2020/0002585) as applied to claim 1 further in view of Waid et al. (US 2010/0075132).
Considering claim 4, notwithstanding the 35 USC 112(b) rejection as set forth above, the teachings of Naughton and Power as applied to claim 1 are outlined above. Naughton teaches the bonding of two or more components with an adhesive (abstract; Paragraph 11). However, Naughton does not teach where the adhesive comprises 1st and 2nd materials.
In a related field of endeavor, Waid teaches a pressure-sensitive adhesive (abstract). The adhesive may be used to bond 1st and 2nd substrates of metal, etc. (Paragraphs 62 and 64). The adhesive comprises a core with an adhesive skin layer on either side (Paragraph 60), where the skin adhesives may be different adhesives (Paragraph 55), and where the core is adhesively bonded between the substrates (Paragraph 67).
As Naughton, Power, and Waid teach adhesive bonding of metals they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the teachings of Naughton and Power with the core and adhesive layers taught by Waid as this is considered a substation of one conventionally known adhesive material for another and one would have had a reasonable expectation of success.
Considering claim 5, Waid teaches where the skin adhesives may be different adhesives (Paragraph 55) and where adhesive may be crosslinked by radiation (Paragraph 13) including UV radiation (Paragraph 73) and comprises carbon black filler (i.e. conductive particles) (Tables 1-2 and Paragraph 80) and is considered to meet the claimed conduction as no particular degree of electrical conduction is required. See MPEP 2111.01.
Response to Arguments
Applicant’s arguments, see remarks pp. 8-11, filed 18 June 2026, with respect to the rejection(s) of claim(s) 1-4 and 10 under 35 USC 102(a)(1) in view of Hohman and Bortell and the rejection of claims 4-9 under 35 USC 103 in view of Bortell, Velling, and/or Stone have been fully considered and are persuasive. Applicant has amended the claims to recite materials and a configuration not disclosed by primary references of Hohman and Bortell. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Power, Naughton, Arrowsmith, and Waid as outlined above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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