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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 18, 2026 has been entered.
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 1-5, 16, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aizawa (WO 2017/197087).
Considering Claims 1-4, 16, and 17: Aizawa teaches a structural adhesive film comprising a first and second major surface (32a and 32b) opposite each other (Fig. 6a), the first major surface being prepared from a first curable layer made from an epoxy resin, a phenoxy resin/thermoplastic resin and a curing agent (Table 2); and the second major surface prepared from a polyester mesh/surface treatment (Working Example 6).
Aizawa is silent towards the coefficient of friction of the two surfaces. However, Aizawa teaches the same claimed structure as claim 1, 16, and 17, namely an adhesive film made from a epoxy compound, thermoplastic compound and an epoxy curing agent, with a surface having a mesh applied. "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. See MPEP § 2112.01. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). See MPEP § 2112.
Considering Claim 5: Aizawa teaches the adhesive film as having a thickness of 0.2 mm/200 microns (Working Example 3).
Claims 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aizawa (WO 2017/197087).
Considering Claims 6 and 7: Aizawa teaches a structural adhesive film comprising a first and second major surface (1a and 1b) opposite each other (Fig. 2), the first major surface being prepared from a first curable layer made from an epoxy resin, a phenoxy resin/thermoplastic resin and a curing agent (Table 2); and the second major surface prepared from a distinct structural adhesive comprising a polymeric material comprising the self-polymerization reaction product comprising a radiation polymerizable multifunctional compound (GMA); a thermally curable resin and thermal curing initiator (Table 2). The two layers have different adhesion properties including different T-peel strength and shear strength (Table 2).
Aizawa is silent towards the coefficient of friction of the two surfaces. However, Aizawa teaches the same claimed compositions as instant claims 2 and 6. "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. See MPEP § 2112.01. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). See MPEP § 2112.
Response to Arguments
Applicant's arguments filed March 18, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Aizawa does not teach the claimed coefficient of friction according to DIN EN ISO 8295 is not persuasive. The original specification of the instant application teaches that the means of forming a film with different coefficients of friction can be the application of a mesh or oil OR the use of a structural adhesive film distinct from the structural adhesive present on the first major surface (5:3-21). The surface treatment with a mesh or oil is not required to achieve the claimed difference in the coefficient of friction.
Aizawa is silent towards the coefficient of friction of the two surfaces. However, Aizawa teaches the same claimed compositions as instant claims 2 and 6. "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. See MPEP § 2112.01. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). See MPEP § 2112.
The applicant has not provided evidence to rebut the finding of inherency based on the compositional features of Aizawa, and thus they have not met the burden on the applicant to rebut the finding of inherency.
B) The applicant’s argument that Aizawa does not teach a radiation self-polymerizable multifunctional compound is not persuasive. Aizawa teaches glycidyl methacrylate (Table 2), which is a multi-functional (has two functional group) self-polymerizable compound (contains an unsaturated group).
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.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767