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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on November 10, 2025 has been entered.
Response to Amendment
Applicant’s amendment filed on November 10, 2025 has been entered. Claim 1 has been amended. New Claims 16-18 have been added. As such, Claims 1, 3-6, and 9-18 are currently pending in the application, with Claims 12-15 withdrawn from consideration.
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, 3-6, 9-11, and 16-18 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 one or more materials” in line 15. There is insufficient antecedent basis for this limitation in the claim. Is the one or more materials referencing a material that makes up the backing layer or the adhesive layer? For purposes of examination, the Office will assume that “the one or more materials” limitation in line 15 is meant to refer to a material present in the backing layer. However, as currently constructed, Claim 1 and its dependent claims are indefinite.
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.
Claims 1, 3-6, 9, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2011/0143136 to Hebert et al. (“Hebert”) in view of Technical Data Sheet for 3M™ Structural Adhesive Tape SAT1010M, dated July 2019 (“3M”).
With regard to Claims 1 and 3, Hebert discloses a multilayer protective article comprising a fluoropolymer backing layer and an uncured adhesive layer. See, e.g., Abstract, entire document. Additional layers, such a second adhesive layer, paragraph [0035], are optional and not required. Hebert discloses that “[t]he protective articles of the disclosure have many different uses including use to protect entire surfaces, portions of surfaces or edges of coatings, films, and substrates, and to repair coatings, films and substrates. Such protective articles are useful on vehicles, such as planes, trains, automobiles, boats, and ships.” Paragraph [0011]. Hebert discloses that the fluoropolymer backing layer can be blended with an additional polymer, such as polyurethane. Paragraph [0015]. Hebert discloses that the uncured adhesive layer can comprise an uncured structural adhesive film. Paragraph [0023]. Hebert also discloses that the uncured adhesive layer can an epoxy-based resin, paragraph [0018], and be modified to include anti-corrosion additives. Paragraph [0024]. However, Hebert does not specifically disclose that the adhesive layer in its cured state is polar solvent resistant enough to prevent polar solvent transported metal ions from passing all the way through its thickness. Nonetheless, such a combination of features is well known in the art. 3M is also related to an uncured, single-layer structural adhesive layer comprising an epoxy-based resin. See, e.g., entire document. 3M discloses that the SAT1010 adhesive tape is suitable for use in metal bonding applications and for the bonding and isolation of dissimilar materials. Page 1. 3M teaches that the SAT1010 tape provides an isolation barrier between two dissimilar materials and guards against galvanic corrosion. Id. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide an single-layer uncured structural adhesive layer, such as SAT1010, as the structural adhesive layer in the protective article disclosed by Hebert in order to provide an adhesive layer in its cured state that is polar solvent resistant enough to prevent polar solvent transported metal ions from passing all the way through its thickness to improve against galvanic corrosion, as shown to be desired by Heber, and as shown to be known by 3M. The combination of Hebert with 3M does not specifically disclose the property of the corrosion barrier layer not being permanently compressible or the torque loss being from 0% up to 15%. Nonetheless, it is reasonable to presume that such a feature is inherent to the material disclosed by Hebert in view of 3M. Support for the presumption is found because the combination of references teaches using similar material, i.e., corrosion-barrier polymer materials, such as an uncured structural adhesive combined with a backing, in a similar application, i.e. an isolator used to join dissimilar substrates, in order to form a similar end use product, i.e., a corrosion protection film. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require Applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). Even if not inherent, the person having ordinary skill in the art would be motivated to provide a corrosion barrier layer that is resistant to thermoplastic deformation so that it remains intact when it is combined with metal surfaces. Otherwise deformation of the barrier layer would impair the ability of the material to provide the barrier feature and further impair the ability to inhibit the corrosion. Moreover, the person having ordinary skill in the art would be motivated to provide low torque loss to the cured adhesive resin layer in order to improve durability of the corrosion protection composite material. With regard to Claim 4, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the backing layer disclosed by Hebert with a heat distortion temperature greater than the curable adhesive resin layer so that the backing layer does not degrade during a thermal curing of the adhesive at its cure temperature, a necessary feature to prevent the material from degrading during use. With regard to Claim 5, Hebert discloses that “[t]he protective articles of the present disclosure can be in a variety of shapes, sizes, and thicknesses. They can be in the form of sheet materials or they can be formed to three-dimensional shaped articles, such as a formed boot, or they can be molded as three-dimensional fixtures.” Paragraph [0011]. With regard to Claim 6, Hebert discloses that the layers can have a thickness of 1 mil to 8 mil. Paragraphs [0026] [0048] to [0056]. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. M.P.E.P. 2144.05. With regard to Claim 9, although the combination of Hebert with 3M does not disclose a shear modulus of 2.0 GPa to 10 GPa, it is reasonable to presume that such a feature is inherent to the material disclosed by Hebert in view of 3M. Support for the presumption is found because Hebert and 3M teaches using a similar material, i.e., corrosion-barrier polymer materials, such as an uncured structural adhesive combined with a backing, in a similar application, i.e. an isolator used to join dissimilar substrates, in order to form a similar end use product, i.e., a corrosion protection film. The burden is upon the Applicant to show otherwise. With regard to Claim 16, Hebert discloses that protective articles of the present disclosure can be in a variety of shapes, sizes, and thicknesses. Paragraph [0011]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a backing layer having a thickness of 10 mil to 20 mil in order to tailor the isolator for use in applications requiring greater thickness for durability, since such a modification can be made with easily known effect without any undue burden, and because “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). With regard to Claims 17 and 18, Hebert teaches using a surface treatment on the backing layer, including corona treatment. Paragraphs [0016] and [0017].
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hebert in view of 3M, and further in view of U.S. Patent Application Publication No. 2015/0050075 to Kelley et al. (“Kelley”).
With regard to Claim 10, the combination of Hebert with 3M does not specifically disclose an isolated substrate joint comprising two dissimilar material substrates. Kelley is also related to providing a corrosion-resistant barrier. See, e.g., Abstract, entire document. Kelley teaches that corrosion barrier can be provided between two dissimilar material substrates such that a mechanical fastener connects the material substrates and fixes the corrosion barrier in place. Figures 2 and 3 and paragraphs [0029] to [0031]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the corrosion protection film disclosed by Hebert in view of 3M between two dissimilar material substrates such that a mechanical fastener connects the material substrates and fixes the corrosion barrier in place, in order to use the corrosion barrier in an automotive frame, as shown to be known by Kelley. With regard to Claim 11, Hebert discloses that the protective article can be formed to three-dimensional shaped articles, such as a formed boot, or they can be molded as three-dimensional fixtures.
Response to Arguments
Applicant’s arguments with respect to the amended claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789