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 .
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 16 and 17 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.
Considering Claims 16 and 17: Claims 16 and 17 recite the limitation "the surface treatment" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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, 3-7, 16, and 17 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 (HDDMA or hexanediol dimethyacrylate); a thermally curable resin (epoxy resin)and thermal curing initiator (Table 2 Working Examples 4,5). The two layers have different adhesion properties including different T-peel strength and shear strength (Table 2).
Considering Claims 1, 3, 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). The adhesive film additionally contains the both of the adhesive layers described above.
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. 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). "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).
Response to Arguments
Applicant's arguments filed June 17, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Aizawa does not teach self polymerizable multi-functional compound having two free radical groups is not persuasive. Aizawa teaches the presence of hexanediol dimethacryalte (Table 2, Working Example 4,5), which has two free radiacal polymerizable acrylate groups.
Correspondence
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.
Conclusion
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
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