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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-5, 7-14, and 19 in the reply filed on December 8, 2025 is acknowledged.
Claims 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 8, 2025.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 8, 9, 11-14, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fumitoshi (JP 2004-231698). Note: The machine translation provided by the applicant is being used for JP 2004-231698.
Considering Claims 1 and 19: Fumitoshi teaches applying a polymer comprising a coplymerization mixture of acrylic acid, methacrylic acid (pg. 2) and a monomer of the formula
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144
366
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, where R1 is methyl or hydrogen, R2 is a C2-C10 divalent alkylene group, and R3 is ethylene or propylene (pg. 2), where the preferred compound is methacrylamideethylethyleneurea or acrylamideethylethyleneurea (pg. 3) to a metal substrate (pg. 4 and 5), that is to be coated with a paint or adhesive (pg. 5).
Considering Claims 2 and 3: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the resistance to adhesive failure and resistance to corrosive or wet atmospheres, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 4: Fumitoshi teaches examples comprising 18% of ethylhexyl acrylate, butyl acrylate or ethyl acrylate (Table 1).
Considering Claim 8: Fumitoshi teaches the polymer as having a molecular weight of 50,000 to 1,000,000 Daltons (pg. 4).
Considering Claim 9: Fumitoshi teaches the metal as being steel (pg. 5).
Considering Claims 11-13: The second surface is part of an intended use for the product of the process, and thus the further limiting of the second surface does not limit the scope of the process itself.
Considering Claim 14: Fumitoshi teaches applying a paint to the metal surface (pg. 5).
Claim Rejections - 35 USC § 103
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.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Fumitoshi (JP 2004-231698) as applied to claim 4 above.
Considering Claim 5: Fumitoshi teaches the process of claim 4 as shown above.
Fumitoshi teaches examples comprising 18% of ethylhexyl acrylate, butyl acrylate or ethyl acrylate (Table 1). This is sufficiently close to the claimed range that a person of ordinary skill in the art would expect the polymers to have substantially similar properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have used the acrylate monomer in the claimed amount, and the motivation to do so would have been, a person of ordinary skill in the art would expect the polymers to have substantially similar properties.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Fumitoshi (JP 2004-231698) as applied to claim 9 above, and further in view of Dollman et al. (US Pat. 4,191,596).
Considering Claim 10: Fumitoshi teaches the process of claim 9 as shown above.
Fumitoshi does not teach the metal surface as being aluminum. However, Dollman et al. teaches using polyacrylic acid or its esters as a surface treatment for aluminum, prior to treatment with a paint (Abstract). Fumitoshi and Dollman et al. are analogous art as they are concerned with the same field of endeavor, namely metal surface treatment to increase paint adhesion. It would have been obvious to a person of ordinary skill in the art to have selected aluminum as the surface of Fumitoshi, as in Dollman et al., and the motivation to do so would have been, it is a common metal for use in industry.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record does not teach or suggest the process of claim 7, where the polymer has the claimed molar ratios. The closest prior art is Fumitoshi, discussed above. Fumitoshi does not teach or suggest the claimed amounts of acrylic acid and methacrylic acid in the instant claim. Fumitoshi does not teach a broad range for the acidic monomers, and only teaches low amounts of acrylic acid and methacrylic acid in the polymer (Table 1). Absent direction from the prior art, a person of ordinary skill in the art would not be lead to the specific ranges claimed, and as such, the claim is non-obvious over the closest prior art of record.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767