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.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 10/28/2025 is acknowledged.
Claims 21-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/28/2025. It is noted that while claims in Group II are now amended to depend on claim 1 of Group I, the technical features of the compound of claim 1 is not a special technical feature, as is explained in the rejection section below. Thus, there still exists a lack of unity of invention between the two groups.
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.
Claim 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.
Claim 17 recites the limitation "the adhesive" in line 4. 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.
Claim(s) 1-6, 8-14, 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mori (U.S Patent 10385076B2).
Regarding claim 1, Mori, drawn also to the art of a novel compound to be used a surface treatment agent i.e. bonding agent (Abstract; Column 10, lines 35-40) that is used to bond multiple different substrates, including a polymer and metal substrate (Column 17, lines 8-12; Column 26, lines 1-19). Mori discloses the compound containing a functional group that is an OH group or an OH-generating group (alkoxysilyl group) (Column 17, lines 27-33), an organic group containing a carbon double bond (Column 8, line 47), and a triazine ring (see General Formula [IV] – Column 7, lines 60-67).
Regarding claim 2, Mori has disclosed an alkoxysilyl group as the OH generating group (see claim 1 rejection above & Column 8, lines 41-43 & 50-53 & 57 & 58).
Regarding claim 3, Mori has disclosed a compound with the general formula as claimed (see General Formula [IV] of Mori & Column 8, lines 41-63). A, C, B chains extending from the triazine ring correspond to E, Q, and J, respectively. Mori discloses that B and C can be the same (Column 8, line 47 & 61) and also discloses embodiments wherein A contains the alkoxysilyl group with the formula NR1(R2) (i.e. NRSi(R’)n1(OR”)3-n1) (Column 8, lines 41-47& 57-61). Mori also discloses an embodiment wherein one of the extending chains other than the alkoxysilyl chain can also have the formula NR1(R2) wherein NR1(R2) is NRSi(R’)n1(OR”)3-n1 (Column 8, lines 41-47 & 57-61))).
Regarding claims 4 & 6, Mori has disclosed wherein E is N(R1)(R2) (see claim 3 rejection above), and further has disclosed Q to be the same (i.e. A=C) (see claim 3 rejection above).
Regarding claim 5, Mori has disclosed B=C i.e. Q=J (Column 8, line 47 & line 61).
Regarding claim 8, Mori has disclosed the compound being a bonding agent (Column 10, lines 35-40; Column 17, lines 27-33).
Regarding claim 9-10, Mori has disclosed the bonding agent being used to bond a material A (that is metal) and a material B that is polymer (Column 17, lines 8-12; Column 26, lines 1-19).
Regarding claim 11, Mori has disclosed a bonded body formed by bonding the material A and material B (Column 45, lines 41-45) (Copper substrate with the compound film applied on surface with a PP substrate with a compound film applied on surface).
Regarding claim 12, Mori has disclosed the bonding agent to be used in forming a circuit substrate (i.e. printed circuit board) (Column 26, lines 20-31 & Column 46, lines 65-67).
Regarding claim 13, Mori has disclosed a method of bonding a material A and a material B wherein the material A is metal and material B is polymer (Column 17, lines 8-12; Column 26, lines 1-19), and has disclosed applying a compound film i.e. bonding agent, to both substrate and then bringing them together under pressure and a heated temperature to bond them (Column 45, lines 41-45).
Regarding claim 14, Mori has disclosed producing, prior to applying the compound to the surface of A, conducting a cleaning treatment i.e. generating an OH group on the surface A by conducting corona discharge (Column 20, lines 36).
Regarding claim 16, Mori discloses providing the compound onto surface A by coating, immersing, spraying (Column 10, lines 44-46).
Regarding claim 17, Mori has disclosed applying pressure to the contact surface between surface A and B with the compound film disposed between, in order to bond and contact the two surfaces together (Column 45, lines 41-45 – Mori discloses a pressure of 1MPa).
Regarding claims 18-19, Mori has disclosed applying a temperature and pressure together, and has disclosed a temperature of 120oC (Column 45, lines 41-45), which falls within the instantly claimed range and thus anticipates the range.
Regarding claim 20, Mori discloses bonding a metal material and a polymer material with a bonding agent, wherein the compound is applied to the polymer material surface and wherein the functional groups are present at the surface (Column 17, lines 27-33), and forming the bonded body by performing electroless plating (Column 26, lines 1-23).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mori (U.S Patent 10385076B2) and Tu (U.S Patent 9394429B2).
Regarding claim 7, Mori has not explicitly disclosed the functional group in the carbon double bond component being as instantly claimed, however, Tu has disclosed such a functional group.
Tu, drawn also to the art of a silane coupling agent to bond a polymer to a filler (Abstract), wherein the filler can be metal (copper) (Column 1, line 59). Tu also discloses the silane coupling agent having a triazine ring and an OH generating group (alkoxysilyl group), and discloses the two other chains extending from the triazine ring, other than the alkoxysilyl chain, to be carbon double bond components (Column 2, lines 50-65), and has discloses the carbon double bond component to have a functional group as instantly claimed (CH2=CH(CH2)O- and CH2=C(CH3)CH2-) (Column 3, lines 5-20 and Column 2, lines 50-65, respectively).
It would have been obvious to an ordinarily skilled artisan to have modified the compound of Mori, with the functional group in the carbon double bond component as claimed, as disclosed by Tu, to arrive at the instant invention, in order to obtain increased use of life of parts or components produced using the coupling agent (compound) (Column 5, lines 50-56).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mori (U.S Patent 10385076B2) and Asuke (U.S PG Pub 20090226741A1).
Regarding claim 15, Mori has not explicitly disclosed conducting dehydration condensation to chemically bond OH group at surface A to an OH group or OH-generating group of the compound by dehydration condensation, however, this limitation is known from Asuke.
Asuke, drawn also to the art of a method of manufacturing a bonded body (Abstract), wherein the bonded body (Abstract) can be a circuit board (substrates with wiring or electrodes) [0359] discloses a treatment step which cleans and activates a surface [0090-0092], and this leads to improved bonding strength [0091], wherein the hydroxyl groups are exposed and then the surface and the bonding film chemically bond via dehydration and condensation [0285-0286].
It would have been obvious to an ordinarily skilled artisan to have modified the method of Mori, with the step of dehydration and condensation bonding of an OH group of a substrate surface with a OH group of the bonding film/agent, as disclosed by Asuke, to arrive at the instant invention, in order to ensure two substrates are firmly bonded together [0286].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US-5858615-A, US-20170223843-A1, US-20060115670-A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746