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 .
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.
Claim Rejections - 35 USC § 112
Claims 1, 3-6, and 8-13 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 limitation "the coated metallic surface" in line 2 from the end. There is insufficient antecedent basis for this limitation in the claim. It appears “metallic surface” should read “metal surface” as recited in line 3 or the “metal surface” in line 3 should read “metallic surface”.
Claims 3-6 and 8-13 are rejected as depending from an indefinite claim.
Allowable Subject Matter
Claims 1, 3-6, 8-13, and 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
After search the prior art regarded as nearest the claimed invention is Vandermeulen (US2009123742 – previously of record). Vandermeulen discloses a method for treating a metal surface intended to be coated by an adhesive (para 0303), the method, comprising applying onto the metal surface (abstract) at least one polymer P obtained by radical copolymerization of a mixture of (i) from acrylic acid (para 0260), (ii) optionally methacrylic acid (para 0045) and (iii) at least one monomer M which is an ethylenically unsaturated monomer carrying an unsaturated heterocycle having at least two nitrogen atoms, said monomer M comprising an ethylenically unsaturated imidazole having the Formula (I) below: wherein: R1 is H or a methyl group —CH3; and A is a linkage selected from the group consisting of: a single covalent bond (para 0038); and a spacer group (para 0038). Vandermeulen further discloses wherein the amount of all monomers (C1) is 20%-70% and that the monomers (C1) comprise several different monomers (paras 0036-0042) and discloses “[w]ith very particular preference, monomer (C1) comprises 1-vinylimidazole” (para 0041, emphasis added) and “[t]he amount of all monomers (C1) together in accordance with the invention is 20% to 70% by weight” (para 0042, add emphasis) but does not explicitly disclose 5-95% acrylic acid, 0-90% optional methacrylic acid, 2-15% of at least one monomer M which is the ethylenically unsaturated monomer, and wherein the percentages are based on the total quantity of acrylic acid, methacrylic acid, and monomer M of formula (I). Vandermeulen fails to teach coating a first metal surface with the polymer P to form a coated metal surface and bonding the coated metallic surface to a second surface by adhesive bonding, the polymer P imparting a resistance to an adhesive failure to the bonding. The Office is unable to discern a reasonable rationale from the prior art that such features are taught, suggested, or otherwise rendered obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention.
Response to Arguments
Applicant’s arguments, see page 9 paragraph 2, filed 07/29/2026, with respect to claims 4 and 5 have been fully considered and are persuasive. The rejection under 35 U.S.C. §112(b) of 04/29/2026 has been withdrawn.
Applicant’s arguments, see page 9 paragraph 3, filed 07/29/2026, with respect to claim 19 have been fully considered and are persuasive. The rejection under 35 U.S.C. §112(d) of 04/29/2026 has been withdrawn.
Applicant’s arguments, see page 11 paragraphs 1-2, filed 07/29/2026, with respect to claims 1, 3-6, and 8-13 have been fully considered and are persuasive. The rejections under 35 U.S.C. §103 of 04/29/2026 has been withdrawn.
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 ANDREW L SWANSON whose telephone number is (571)272-1724. The examiner can normally be reached M-Th 0800-1900 and every other Friday 0800-1600.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Tucker can be reached at (571)272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW L SWANSON/Primary Examiner, Art Unit 1745
