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 .
Response to Amendment
This is a response to the amendment filed 10/10/2025 and the RCE filed 10/31/2025. Claim 6 is cancelled. Claims 1, 7, 8, and 10-12 have been amended.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant states Claims 11 and 12 are cancelled and thus the 112 rejections of these claims should be withdrawn. However, these claims do not appear to have been cancelled and the 112 rejections remain herein.
Applicant argues Fukushima (EP 0078174) fails to teach a functionally active polymer insert. However, Fukushima teaches layer [2] to be bonded to metal layer [5] is a thermoplastic modified with a functional group such as maleic anhydride to enhance bonding to metal (See page 5, lines 4-15) and the layer [1] not directly bonded to metal is a non-poly polymer such as polypropylene, specifically isotactic polypropylene (See page 7, lines 14-17 and Example 1, page 12, line 26 to page 13, line 5). A polymer modified by a functional group to enhance bonding is clearly a functionally active polymer as claimed, said polymer enhancing bonding of a polyolefin such as isotactic polypropylene, which only has hydrogens and carbons and thus is non-polar. Thus, Fukushima clearly teaches a functionally active polymer bonding a non-polar polymer to a metal as claimed.
As described previously and in the instant rejection, although Fukushima teaches co-extrusion, Fukushima also teaches the layers of the layer [2] and polymer or non-polar polymer composite part [1] may be pre-formed and laminated by a press (See page 8, lines 16-22). Fukushima also teaches these layers [1],[2] may be laminated in a press to the metal layers (See page 9, lines 24-27). This pre-formed layer [2] is a functionally active insert as claimed.
Thus, lamination of the layers is clearly taught, but the instant claims imply simultaneous lamination of all three layers (e.g. in order to insert and insert layer such as layer [2] as a separate component), which Fukishima does not explicitly teach, but Examiner has previously argued is merely a routine sequence alteration. Applicant appears to argue there is not motivation to separately laminate pre-formed layers [2] and [1] to metal [5], and thus implies layers [1] and [2] must be pre-laminated. Applicant does not state why this is so and make no attempt to address Examiner’s previous arguments as to why this simultaneous lamination would have been obvious. As previously argued, although Fukushima does not explicitly teach laminating the insert [2] and polymer or polymer composite part [1] together at the same time as these layers are laminated to the metal [5], there is no reason to suspect such a method wouldn’t have been suitable to create an identical product as desired in Fukushima since lamination of all these layers in the same end sequence is already taught therein.
For example, pre-heating the layers [1] and [2] individually prior to bringing all layers together at nip [7] in the illustrated figure in Fukushima, and then performing the rest of the process the same as taught therein, e.g. heated after-treatment at heating device [9], would have predictably produced an identical product via the claimed method. Therefore, as previously argued, the only difference between Fukushima and the instant claims is pre-laminating the polymer layer before laminating these layers to the metal [5] as opposed to simultaneous lamination of the layers [1], [2] and [5]. Further, there is no evidence simultaneous lamination would have been expected to be particularly difficult or unable to form the intended product, and there is also no apparent advantage in the instant invention to simultaneous lamination as opposed to pre-laminating the polymer layers prior to lamination to the metal. As such, as previously argued, the only apparent difference between the claimed invention and the teachings of Fukushima is the order of lamination, and the holdings in Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959), In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39, F.2d 975, 5 USPQ 230 (CCPA 1930) indicate that the selection of any order or sequence in the steps of a process is prima facie obvious in the absence of new or unexpected results. See MPEP 2144(IV)(C). Applicant has not responded to this argument and thus it cannot be overcome at this time.
Applicant further argues Fukushima does not teach localized heat and pressure to cause lamination. Examiner respectfully disagrees. Fukushima teaches the heating rolls that press and laminate the thermoplastic layers to the metal heat the metal directly at a temperature above the melting point of the thermoplastic during initial heating at nip [7], and also during after treatment via heat, which also may clearly be applied via heating rollers, such as heating device [9] in the figure (See page 10, lines 9-17). Examiner submits rollers apply direct localized heat only in the area of the metal in contact with the metal. Applicant has not explained why such heating does not read on the claim as written. There is no reason to suspect similar heating could not have joined both the metal [5] and separately conveyed layers [1] and [2] that are not pre-attached. Thus, the distinction between Fukushima and the instant claims is simultaneously laminating all of layers [1], [2], and [5] as opposed to pre-laminating layers [1] and [2] prior to laminated the pre-laminate to metal [5]. All aspects of the claimed method appear to be well-known, and the only distinction is considered and change in the order of the process sequence without any defined benefit. Examiner submits this is not considered inventive because a difference in process sequence to form a known product without any new or unexpected advantage is generally not considered inventive.
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 1-5 and 7-12 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 the non-polar polymer is “non-bondable to metal.” This is unclear. The instant specification never recites the word “non-bondable” nor makes clear what polymers would fall under this category. Since the instant method involves bonding such a layer to metal, the exact meaning of “non-bondable” is further unclear. Examiner assumes any non-polar polymer reads on the “non-polar or polymer composite.” Thus, the Examiner has essentially interpreted the claim as recited a “non-polar polymer or non-polar polymer composite.”
Claim 1 introduces a “non-polar polymer or polymer composite part” and then layer in claim 1, and also in claims 10-12, recites “the polymer or polymer composite part” and/or “the polymer or polymer composite layer/part.” It is unclear if these are the same. Examiner assumes they are and encourages Applicant to utilize consistent terminology for clarity.
Claims 11 and 12 recites forming the polymer or polymer composite part as a “molten polymer or polymer composite…laid upon the metal part and the insert layer is laid therebetween.” This clearly recite the polymer or polymer composite part is formed as a molten composite “upon the metal.” Examiner previously interpreted this as co-forming the polymer or polymer composite part and insert layer via coextrusion or injection molding, and it is unclear how else this could be interpreted. The claim now clearly implies the polymer or polymer composite part must be pre-formed and exist as a “separate component” as the time the insert layer is inserted between those existing. This would appear to preclude a process wherein “molten polymer or polymer composite…laid upon the metal part” because the only way this can occur is form the polymer or polymer composite part directly on the insert layer while the insert layer is upon the metal, which is contradictory to claim 1 wherein the polymer or polymer composite part must exist as a separate component at the time the insert is insert between the polymer or polymer composite part and metal. It is impossible to separately form a polymer or polymer composite part such that the insert can be inserted between the polymer or polymer composite part and metal while simultaneously forming the polymer or polymer composite part “upon the metal.”
Examiner submits it is impossible to simultaneously co-form and separately form the same layers in the same process as is now recited in Claim 11 and 12. If the polymer composite part is formed “upon the metal” there can never be a “between” space for inserting the insert layer because such a space can only exist if the polymer composite part is formed entirely separate from and away from the metal, which Claims 11 and 12 preclude, thus creating the contradiction. Thus, Claims 11 and 12 are contradictory to Claim 1 and no process can possibly meet the scope of these claims as currently constructed. Examiner maintains the previous scope of Claim 11 and 12 is obvious for the reasons previously rejected in view of Fukushima and Nishikori et al. (US 2018/0229263), i.e. co-forming via extrusion or injection molding. It is also noted the direct heating through the metal as is now recited would appear to be distinct from the disclosure of extrusion and injection molding in the instant specification, but no new matter rejection is made at this time due to the current incoherence of the scope of these claims.
Applicant should cancel these claims or re-write them and clarify their scope and support in the specification since injection molding and extrusion are taught generally as the method of heating, and it is unclear how these methods fit into the heating process now claimed (See instant USPgPub 2024/0025167, heating “injection mold type heating” and “extrusion heating” without further explanation and without indication there is direct heat applied through the metal to melt both layers in association with such a process since it would appear the heat from the molten polymer supplies the heat in these instances).
The remaining claims are rejected as being dependent on an indefinite claim.
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 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima (EP 0078174).
Regarding Claims 1, Fukushima teaches a method of joining a metal part and a polymer/polymer composite part, the method comprising:
providing a metal part [5];
providing a non-polar polymer or non-polar polymer composite part [1];
inserting a functionally active polymer insert layer [2] between the metal part [5] and the polymer or polymer composite part [1] (See page 3, lines 8-18, wherein a thermoplastic, i.e. polymer core is between bonding thermoplastics, i.e. insert layers, that facilitate bonding to metal; and see page 6, lines 4-15, page 7, lines 14-17 and Example 1, page 12, line 26 to page 13, line 5, teaching layer [1] as a polyolefin such as isotactic polypropylene, which is only hydrocarbon and thus non-polar, and teaching layer [2] as a bonding layer wherein the polymer, such as an isotactic polypropylene, is modified with a functional group such as maleic anhydride, i.e. functionalized, to enhance bonding, thus forming a functionally active polymer); and
applying localized heat directly to the metal part to a temperature above the melting temperatures and below a degradation temperature of the polymer or polymer composite part and the insert layer and simultaneously applying localized pressure to the combination of the metal part, the polymer or polymer composite part, and the insert layer to combine the metal part and the polymer or polymer composite part into a joined assembly (See page 10, lines 9-17, teach the heating rolls [7],[7’] that press and laminate the thermoplastic layers to the metal and apply direct localized heat only when the metal is in contact with the rollers and localized pressure only at the roller nip, wherein the heat is at a temperature above the melting point of the modified thermoplastic to melt the thermoplastic layers for lamination). Examiner submits the modified thermoplastic and thermoplastic would have been expected to have similar melting temperatures, and further, the after treatment via heated rollers [9], which may be considered part of the joining process is clearly taught as occurring above the melting temperature of all the thermoplastic layers (See Example 1, pages 12, line 26 to page 13, line 15, teaching a modified polypropylene bonding layer [2] with MP 156 C and an isotactic polypropylene core layer [1] known to have a MP in a similar range, i.e. 160 C, and certainly well below the 200 Celsius after treatment that will occur under pressure in heating device [9], and note an IR heat applied through the metal above the melting temperature is still direct heat because nothing recites direct contact between the heater and metal, and further, it is clear heated rollers themselves are suitable to provide the desired heating; Examiner submits since the rollers only contact a localized length of the laminated and not the full length, both nip [7] and roller in heater [9] apply localized direct heat directly to the metal part, and there is no reason to suspect rollers [7],[7] wouldn’t operate at a similar temperature to the roller in hear [9]). Thus, Fukushima clearly teaches applying heat directly (though heated rolls, IR, etc.) to the metal part to a temperature over the melting temperature of the insert [2] and polymer or polymer composite part [1] as part of the joining process.
Examiner submits such adhesive bonding is a chemical bond, i.e. a non-mechanical bond, since at least some chemical force/bond such as covalent bonding, ionic bonding, Van der Waals forces, dipole bonding, hydrogen bonding, etc. must exert force on the substrate to maintain the adhesive bond. This is a chemical bond as claimed without further specificity.
Fukushima teaches the layers of the insert [2] and polymer or polymer composite part [1] may be pre-formed and laminated by a press (See page 8, lines 16-22). Fukushima also teaches these layers [1],[2] may be laminated in a press to the metal layers (See page 9, lines 24-27). Although Fukushima does not explicitly teach laminating the insert [2] and polymer or polymer composite part [1] together at the same time as these layers are laminated to the metal, there is no reason to suspect such a method wouldn’t have been suitable to create an identical product as desired in Fukushima since lamination of all these layers in the same end sequence is already taught therein. For example, pre-heating the layers [1] and [2] individually prior to bringing all layers together at nip [7] in the illustrated figure in Fukushima, and then performing the rest of the process the same as taught therein, e.g. heated after-treatment at heating device [9], would have predictably produced an identical product via the claimed method if the layer [1] and [2] are melt bonded as taught in Fukushima simultaneous to bonding to the metal, rather than being pre-bonded to each other and then bonded as a pair to the metal.
Thus, the only apparent difference between the claimed invention and the teachings of Fukushima is the order of lamination. Specifically, Fukushima teaches pre-laminating the functional active polymer insert [2] and non-polar polymer or polymer composite part [1] prior to laminating to the metal whereas the instantly claimed invention recites lamination of each layer simultaneously, but each process recites an identical product formed by heating all layers through the metal above the MP of the insert and polymer or polymer composite part.
Examiner submits the difference is nothing more than using a distinct sequence of lamination to form the same product. The holdings in Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959), In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39, F.2d 975, 5 USPQ 230 (CCPA 1930) indicate that the selection of any order or sequence in the steps of a process is prima facie obvious in the absence of new or unexpected results. See MPEP 2144(IV)(C). Thus, unless simultaneous lamination of the insert [2], polymer or polymer composite part [1], and metal has an unexpected advantage over prior lamination of the insert [2] and polymer or polymer composite part [1] before laminating the combined insert and polymer or polymer composite part to the metal in a laminating process identical to that claimed for the simultaneous lamination, the difference in sequence is not considered inventive.
Regarding Claim 10, Fukushima teaches the bonding insert layers are 10-50 microns (See page 8, lines 11-14).
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima as applied to Claim 1, and further in view of St. Clair et al. (US 4,543,295).
Regarding Claims 2-4, Fukushima teaches the method of Claim 1 as described above. Fukushima does not teach a need for roughening, but fails to teach degreasing. However, it is well-known to degrease metals with ethanol such as in Fukushima prior to laminating (See, for example, St. Clair et al., col. 7, lines 39-44). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to degrease the metal in Fukushima with ethanol prior to laminating. Doing so would have predictably cleaned the metal surface of oils, etc. to facilitate bonding.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima and St. Clair et al. as applied to Claim 2, and further in view of Bito et al. (US 2009/0068482).
Regarding Claim 5, Fukushima and St. Clair et al. teaches the method of Claim 2 as described above. Fukushima does not teach a need for roughening and indicates surface treatments that increase surface area, i.e. roughening, are not required for strong bonding (See page 1, lines 17-25). Fukushima teaches copper (See page 4, lines 2-5), but silent as to a surface roughness. However, copper, even when exposed to roughening may have a surface roughness below that claimed (See, for example, Bito, teaching surface roughness with an Rz as low as 0.1 micron is suitable for bonding copper; and note Rz is almost always higher than Ra and thus the Ra value is clearly within the claimed range when Rz is 0.1 micron). Thus, it would have been obvious to a person having ordinary skill in the art to utilize an Ra metal below 0.76 Ra. Such values are known for copper and known to be suitable for bonding to polymers.
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima as applied to Claim 1, and further in view of Wollack et al. (US 2012/0064331).
Regarding Claims 7-9, Fukushima teaches the method of Claim 1 as described above. Fukushima does not teach filler in the thermoplastic bonding layers. However, it is know to include filler, such as glass particles, in thermoplastic bonding layers it order to reduce the energy needed to melt and/or stiffen or rigify the boding layer without degrading bonding (See, for example, Wollack et al., page 4, paragraph [0040]-[0041]). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize glass particles in the thermoplastic bonding layer in Fukushima. Such particles would predictably reduce energy to melt and rigify the layer as desired. Such particles make the functionally active thermoplastic bonding layer the matrix in a composite.
Conclusion
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746