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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The amendment has rendered the 112b rejections of the previous office action moot.
Claim Rejections - 35 USC § 103
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).
Response to Arguments
Applicant's arguments filed June 11, 2026 have been fully considered but they are not persuasive.
Applicant argues on pages 6-7 that one of ordinary skill in the art upon reading Lutz, would not just add a crystalline polyester polyol without also adding an epoxy-functionalized fatty acid oligomer as well. This argument is not persuasive because claim 1 is a comprising claim that has a crystalline polyester polyol PP, which does not prohibit the addition of an epoxy-functionalized fatty acid oligomer taught by Lutz.
Applicant argues on page 6 that Lutz’s “elastomeric toughener” differs structurally from the recited toughener improver selected from the group consisting of terminally blocked polyurethane polymers, liquid rubbers, and core-shell polymers. This argument is not persuasive since, as seen in the rejection above, Mauer discloses the use of liquid rubber as a toughener which falls into Applicant’s recited materials.
In response to applicant's argument that Lutz is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Lutz is involved with in the area of adhesive bonding and the make up of said adhesives, which clearly falls into Applicant’s field of endeavor.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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
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