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.
Election/Restrictions
Applicant's election with traverse of claims 1-13, 19, and 20 in the reply filed on 12/18/2025 is acknowledged. The traversal is on the ground(s) that Vandermeulen (US2009123742 – previously of record) does not teach the claims as currently amended. This is not found persuasive because, as demonstrated below, Vandermeulen renders obvious the elements of claim 1 such that no shared technical feature between the restricted groups amounts to a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claim15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/18/2025.
Claim Rejections - 35 USC § 112(b)
Claims 4 and 5 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.
In claim 4, line 14 ends with a period. Each claim must end with a period and periods may not be used elsewhere in the claims except for abbreviations. See MPEP 608.01(m). Further, the use of the period which should conclude the claim renders it indefinite as it is unclear whether lines 15-16 are intended as required of the claim. For the purposes of examination, the period of line 14 has been interpreted as a comma and lines 15-16 are interpreted as limiting.
Claim 5 is rejected as depending from an indefinite claim.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 19 only recites limitations identical to limitations in claim 1, from which claim 19 depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-6, 8-13, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vandermeulen (US2009123742 – previously of record).
In reference to claims 1 and 19:
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); and
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). Thus, Vandermeulen teaches wherein the specific monomer can also be less than 20% by weight.
It is the Examiner’s position that the range taught by Vandermeulen is sufficiently close to the claimed range to establish a prima face case of obviousness because there is no showing that the claimed proportions are critical (see MPEP 2133.05.I, see para 0065 of Applicant’s published specification stating the “monomer M: from 1 to 50%, for example from 1 to 30%, notably from 1 to 20%, and even 2 to 15% (e.g., about 3 to 10%)”).
In reference to claim 2:
In addition to the discussion of claim 1, above, Vandermeulen further discloses wherein the polymer P is used for treating a first metallic surface (S1) (Fig. 2). Vandermeulen does not explicitly disclose the first metallic surface is intended to be bonded to a second surface (S2) by adhesive bonding, and for imparting a resistance to the adhesive failure to the bonding. However, as the subsequent bonding is not explicitly claimed the future intended use does not impart patentable weight to the claim.
In reference to claim 3:
In addition to the discussion of claim 2, above, Vandermeulen further discloses imparting a resistance to corrosive atmospheres and to wet atmospheres (paras 0001-0005). Vandermeulen does not explicitly disclose the resistance to corrosive atmospheres and to wet atmospheres is imparted to the bonding. However, as discussed in reference to claim 2, as the subsequent bonding is not explicitly claimed the future intended use does not impart patentable weight to the claim. As such, it is the Examiner’s position that the method of Vandermeulen would impart to the bonding a resistance to corrosive atmospheres and to wet atmospheres if subsequently bonded to a second surface.
In reference to claims 4 and 5:
In addition to the discussion of claim 1, above, Vandermeulen does not explicitly disclose wherein polymer P further comprises below 10 mol % of one or more further monomers M′ (claim 4) or wherein the proportion in mol of monomers M′ is below 5 mol % (claim 5) selected from the group consisting of hydrophobic monomers and amphiphilic monomers selected from the group consisting of
i) monoethyl maleic anhydride ester, diethyl maleic anhydride ester, methyl (meth)acrylate, ethyl (meth)acrylate, isopropyl (meth)acrylate, n-butyl (meth)acrylate, 2-ethylhexyl (meth)acrylate
ii) monohydroxyethyl maleic anhydride ester, dihydroxyethyl maleic anhydride ester, hydroxyethyl (meth)acrylate, hydroxypropyl (meth)acrylate, hydroxybutyl (meth)acrylate
iii) poly(propylene oxide)-b-poly(ethylene oxide) maleic acid half ester
iv) poly(propylene oxide)-b-poly(ethylene oxide)-ethyl (meth)acrylate
v) poly(propylene oxide)-b-poly(ethylene oxide) (meth)acrylate, alkyl-poly(ethylene oxide) (meth)acrylate
vi) vinyl acetate, vinyl propionate.
provided the total amount of (i) acrylic acid and optionally (ii) methacrylic acid is at least 60% mol.
However, as currently written the claim requires wherein “wherein polymer P further comprises below 10 mol % of one or more further monomers M′ selected from the group…. provided the total amount of (i) acrylic acid and optionally (ii) methacrylic acid is at least 60% mol”. As the amount of acrylic acid and optionally methacrylic acid disclosed by Vandermeulen is below 60% (para 0260) the claim is met without the conditional use of monomers M’ of claims 4 and 5.
In reference to claim 6:
In addition to the discussion of claim 1, above, Vandermeulen further discloses wherein the polymer P is obtained by radical copolymerization of a mixture consisting of monomer (i), (ii), (iii) (see in reference to claim 1, above, and Vandermeulen paras 0038, 0045, 0260).
In reference to claim 8:
In addition to the discussion of claim 1, above, Vandermeulen further discloses wherein the polymer P has a number average molecular weight of at least 7,500 Da (para 0071).
In reference to claim 9:
In addition to the discussion of claim 2, above, Vandermeulen further discloses wherein the metal surface (S1) is a surface comprising a metal selected from aluminum, steel, zinc, aluminum alloys, or zinc alloys (para 0073).
In reference to claim 10:
In addition to the discussion of claim 9, above, Vandermeulen further discloses wherein the metal surface (S1) is a surface of aluminum or aluminum alloy (para 0073).
In reference to claim 11:
In addition to the discussion of claim 2, above, Vandermeulen does not disclose wherein the second surface (S2) is a metallic surface. However, as discussed in reference to claim 2, as the subsequent bonding is not explicitly claimed the future intended use does not impart patentable weight to the claim. As such, it is the Examiner’s position the material of the second surface does not impart patentable weight as the bonding is not required to meet the claim.
In reference to claim 12:
In addition to the discussion of claim 2, above, Vandermeulen does not disclose wherein the second surface (S2) is a non-metallic surface. However, as discussed in reference to claim 2, as the subsequent bonding is not explicitly claimed the future intended use does not impart patentable weight to the claim. As such, it is the Examiner’s position the material of the second surface does not impart patentable weight as the bonding is not required to meet the claim.
In reference to claim 13:
In addition to the discussion of claim 2, above, Vandermeulen does not disclose wherein the polymer P is used for treating both surfaces (S1) and (S2) before the adhesive bonding of the two surfaces. However, as discussed in reference to claim 2, as the subsequent bonding is not explicitly claimed the future intended use does not impart patentable weight to the claim. As such, it is the Examiner’s position treating both surfaces (S1) and (S2) does not impart patentable weight as the bonding is not required to meet the claim.
In reference to claim 20:
In addition to the discussion of claim 19, above, Vandermeulen does not explicitly disclose wherein the spacer group is —CO—NH—(CH2)n— or —CO—O—(CH2)n. However, claim 19 (from which claim 20 depends) recites the limitation “wherein…A is a linkage selected from the group consisting of: a single covalent bond; and a spacer group”. Claim 20 specifies what the spacer group is but does not explicitly require the spacer group but rather that the linkage is “selected from the group consisting of: a single covalent bond; and a spacer group”. As such, as currently written claim 20 is met by the use of a single covalent bond as A.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hoffmann (US5483004A)
Ghosh (US20030063998A1)
Jung (US20080026157A1)
Ishikawa (US20170247334A1)
Schneider (US20050137298A1)
Wildeson (US20100124614A1)
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
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