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 4/14/2026. Claims 1 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 have been corrected. Examiner disagrees for the reasons in the 112 rejections below. Examiner notes Applicant appears to add new matter.
Applicant argues Fukushima (EP 0078174) teach chemically modified polyethylene and the instant invention does not use a functionalized polymer. Regardless, “functionally active polymer” is a broad term that encompasses any polymer with functionally active groups, functionalized or otherwise. 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. Applicant is free to claim the desired polymer they utilize as the functionally active polymer and have chosen not to claim it. The Examiner notes although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues Fukushima teaches co-extrusion and thus does not teach a stand alone layer. As described previously, 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. Examiner has previously argued changing the order of lamination to laminate the polymer layer and the metal all at once rather than pre-laminating the polymer layers is considered an obvious selection process sequence with no apparent advantages (See arguments in office action mailed 1/15/2026). Applicant’s arguments do not appear to contradict this logic.
Applicant further argues the process is directed to welding and not lamination. Examiner notes the distinction between these two processes is not always clear as melting bonding may be considered both welding and lamination. Regardless, Applicant does not claim welding nor a specific process that excludes the laminating process in Fukushima other than bonding the non-polar polymer and functionally active polymer to each other at the same time as the metal with localized heat directly and only on the metal. Fukushima teaches rollers that only heat the outer metal layer at the location at which they contact the metal. It is still unclear why this is not the localized direct heating as claimed.
Applicant argues the heating device 9 heats all layers in Fukushima. Although this is true, the instant claims mandate the localized heat must heat the other layers and only limits direct contact/heating, i.e. implies heating the other layer through the metal layer, exactly what is taught in Fukushima. The metal layers are the only layers in direct contact with or heated by the heaters in Fukushima (See arguments in office action mailed 1/15/2026). If Applicant intends for the process to cause the localized heating to only bond a localized portion of the layers in a welding region such that there are welded and non-welded areas, they have not claimed this in their process. Localized heat means heat applied at a distinct location as opposed everywhere, such as is an oven. Localized heat does not imply the localized heat cannot heat all areas of substrates through movement of said localized heat unless this is expressly forbidden. Applicant has not currently narrowed the claims as such.
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 11-12 are 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.
Claim 1 recites “inserting a functionally active polymer layer as a separate stand alone component…between the metal part and the non-polar polymer or polymer composite part.” This mandates the non-polar polymer or polymer composite part must exist before the stand alone insert is inserted. Claims 11 and 12 seem to indicate even when molten and not existing as a layer, the molten material may be considered a non-polar polymer or polymer composite part. There is no support for this in the instant specification. The molten material must solidify as a layer to form a non-polar polymer or polymer composite part, a part clearly implying the formation of a solid component. Any other interpretation is unreasonable and makes Claim 1 indefinite, especially since the instant specification is so limited about specific process teachings. This is supported by the instant specification, which references “the molten polymer of the part” indicating they form the part but are distinct from the part when molten (See instant PgPub 2024/0025167, page 3, paragraph [0034]). This is the only coherent interpretation.
Claim 1 also recites “applying localized heat directly and only to the metal part.” This clearly indicate the heat source is in contact with the metal part and only the metal part to het the system. This is an embodiment such as shown in figure 2 and a heating method such as, for example frictional heat (See instant PgPub 2024/0025167, page 3, paragraph [0035]). Claim 11 and 12 recite injection molding (Fig. 9) and extrusion/3D printing method (Fig. 11) that are taught as alternative heating methods to the method of Claim 1 (See page 3, paragraph [0035]).
Further, Applicant now recites the injection molding and extrusion/3D printing occurs before bonding. There is no support for this in the instant specification. These processes are discussed minimally in the instant spec as heating methods and Figs. 9 and 11 appear to show these processes as occurring in situ to facilitate layer bonding, not a process for pre-forming layers. This contradicts the process recited in Claims 11 and 12 and Claim 1. There is no support for these claims as written and they constitute new matter.
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 11-12 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 “inserting a functionally active polymer layer as a separate stand alone component…between the metal part and the non-polar polymer or polymer composite part.” This mandates when the stand alone component is inserted, it must be inserted between existing layers.
Claims 11 and 12 recites forming the polymer or polymer composite part as a “molten polymer or polymer composite part is laid upon the metal part and the insert layer is laid therebetween.” This clearly recites the polymer or polymer composite part is formed as a molten composite “upon the metal.” The “part” cannot possibly exist as a molten liquid but must be the solid form from said liquid (See above). Further, Claim 1 recites the only heating is directly upon the metal. It is unclear how this is possible if another layer is applied as a molten layer. The molten layer is applied on the functionally active polymer layer insert and this necessarily applies heat to this layer in direct contradiction to Claim 1. Examiner submits Claim 11 and 12 are impossible and cannot be performed. They directly contradict Claim 1. These claims must be cancelled.
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. Also not forming films via 3D printing is also well-known (See, for example, Zhou et al., US2019/0045038, page 5, paragraph [0038], teaching polymer films are well-known to be formed by extrusion and 3D printing among other methods).
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 only 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, thus only applying heat directly to the metal and localized pressure only at the roller nip, wherein the heat, applied indirectly through heat heated metal, 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 it is clear heated rollers themselves are suitable to provide the desired heating only on the metal outer layers; Examiner submits since the rollers only contact a localized length of the laminate 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 heating device [9]; note even IR heat locally applied only to the outer layer, i.e. the metal, reasonably reads on the heating claimed). 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. Examiner note if the layers are not prelaminated and exists as a distinct layer, such as argued above, then each layer is a “stand-alone component” during lamination/melt bonding.
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
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 SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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