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
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 3-7 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 3 recites the limitation "temperature solid polyester polyol" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "temperature solid polyester polyol" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "solid epoxy resin" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "solid epoxy resin" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "solid epoxy resin" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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) 1-4 and 8-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mauer et al. (EP 2134799) in view of Lutz et al. (US 20110297317).
As to claim 1, Mauer discloses a method of producing a double flanged/HEM joint (Abstract). Mauer discloses that the method comprises of: applying a one-component thermosetting epoxy resin composition to an inner panel or to an outer panel; contacting the one-component thermosetting epoxy resin composition with the inner panel or the outer panel; crimping the outer panel around the inner panel, such that the one- component thermosetting epoxy resin composition is present within the hem flange; compressing the hem flange; introducing thermal energy into the one-component thermosetting epoxy resin composition (Fig. 1a, 1b, 1c, 1d, 2a, 2b, 3, 4a, 4b; P14); wherein the one-component thermosetting epoxy resin comprises of: a 15-60% by weight, based on the total weight of the one-component thermosetting epoxy resin composition, of at least one epoxy resin A having an average of more than one epoxy group per molecule, comprising at least one liquid epoxy resin, where the proportion of liquid epoxy resin is 10-85% by weight, based on the total weight of epoxy resin (P11); at least one latent curing agent for epoxy resins (P4); 1-35% by weight, based on the total weight of the one-component thermosetting epoxy resin composition, of at least one liquid rubber (P12).
Mauer fails to specifically teach or disclose that the one component epoxy contains 4-12% by total weight of the adhesive at least one room temperature solid, crystalline polyester polyol. Lutz discloses a one-part structural epoxy resin adhesive (Abstract). Lutz teaches that it is known and conventional in the art to add a crystalline polyester polyol to a one-component epoxy resin at 2-10% weight of the total weight of the adhesive (¶45; claim 1). Lutz teaches that the addition of the crystalline polyester polyol increases the storage stability of the adhesive (Id.). It would have been obvious for one of ordinary skill in the art at the time of the invention to include a crystalline polyester polyol in the method of Mauer and would have been motivated to do so because Lutz teaches that the crystalline polyester polyol increases the storage stability of the adhesive.
As to claim 2, the method of claim 1 is taught as seen above. Lutz teaches a weight range of 2-10% which encompasses the recited weight range of 5-10%.
As to claim 3, the method of claim 1 is taught as seen above. Lutz teaches that the crystalline polyester polyol has a melting temperature of 45-125ºC which encompasses the recited temperature range.
As to claim 4, the method of claim 1 is taught as seen above. The above references as combined would have a weight ratio of liquid epoxy to crystalline solid polyester polyol of 0.83-21.25, which encompasses the recited weight ratio ranges.
As to claim 8, the method of claim 1 is taught as seen above. Mauer discloses that the adhesive may comprise of a dicyandiamide (P11).
As to claim 9, the method of claim 1 is taught as seen above. Mauer discloses that the adhesive may comprise of substituted ureas (P11).
As to claim 10, the method of claim 1 is taught as seen above. Mauer discloses that the adhesive may comprise of filler with a weight of 5-35% of the total weight of the adhesive (P13).
As to claim 11, the method of claim 1 is taught as seen above. Mauer discloses that the adhesive has a viscosity at 60ºC of 50-600 Pa*s (P14), but doesn’t specifically list the viscosity at 80ºC. The adhesive of Mauer would perform in the same manner as recited in claim 11 since it comprises of the same recited material.
As to claim 12, the method of claim 1 is taught as seen above. Mauer discloses that the adhesive may be applied at a temperature of 23ºC -80ºC (P14), which overlaps the recited application temperature range.
As to claim 13, the method of claim 1 is taught as seen above. It is the position of the Examiner that applying an adhesive by spraying is well known and conventional in the art and would have been obvious at the time of the invention to use the in the method of the above references as combined.
As to claim 14 and 15, the method of the above references as combined would produce an article with a hem flange bond.
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mauer et al. (EP 2134799) in view of Lutz et al. (US 20110297317) as applied to claims 1-4 and 8-15 above, and further in view of Elgimiabi (US 20140193603).
As to claims 5-7, the method of claim 1 is taught as seen above. Mauer discloses that the epoxy may comprise of both liquid and solid epoxy (P11), but fails to specifically teach or disclose the ratio liquid to solid epoxy. Elgimiabi discloses a method of making a metal HEM flange panel (Abstract; Fig. 1). Elgimiabi discloses that it is known and conventional in the art of making a HEM flange with an epoxy to use an epoxy with a liquid to solid epoxy ratio of 0.45-1.25 (Table 2; P11; ratio calculated by inverting solid to liquid epoxy ratio listed in table). It would have been obvious to one of ordinary skill in the art at the time of filing to use the liquid to solid epoxy ratio of Elgimiabi in the method taught by the above references as combined because one of ordinary skill in the art would have been able to carry out such a substitution to achieve the predictable result of providing a known successful and conventional liquid to solid epoxy ratio for use in a HEM flange. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER C CAILLOUET whose telephone number is (571)270-3968. The examiner can normally be reached M-F 9AM-5PM EST.
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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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/CHRISTOPHER C CAILLOUET/Examiner, Art Unit 1745
/GEORGE R KOCH/Primary Examiner, Art Unit 1745