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 § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-7 and 9-21 are rejected under 35 U.S.C. 103 as being
unpatentable over Chang et al., US 2019/0194495 (hereafter Chang) in view of
Kanungo, US 10,005,294 (hereafter Kanungo), and further in view of Burkhardt et al. (US 2010/0279121)
Regarding claims 1 and 20, Chang teaches a method for adhesively bonding two substrates in Figure 1 of Chang: an EVA shoe sole (i.e., a first substrate) and a material to be bonded to the EVA shoe sole (i.e., a second substrate). A method of Chang includes the steps of:
a) applying a liquid, radiation-curable primer composition onto the surface of the first substrate (Figure 1 teaching applying a composition to an EVA shoe sole, the composition described as an adhesive/primer composition at para [0016]), the composition identified as being applied by spraying, brushing or rolling at para [0032], thus understood to be in liquid form, the composition described as being exposed to UV radiation to cure at Figure 1, thus the composition meets all of the requirements of the recited composition);
b) curing the liquid, radiation-curable primer composition by applying radiation with a suitable wavelength, intensity and temporal exposure such that the radiation- curable primer composition is cured into a solidified, coherent or interrupted layer adhering to the surface of the first substrate (Figure 1 discloses a step of "expose
composition to UV radiation to cure" such radiation exposure understood to inherently meet the limitation of "suitable wavelength, intensity and temporal exposure such that the radiation-curable primer composition is cured into a solidified, coherent or interrupted layer adhering to the face of the first substrate"; at para [0032], the application by spraying, brushing or rolling understood to teach an application technique that results in a coherent or interrupted layer);
d) applying a curable adhesive composition onto the cured primer composition on the first substrate (para [0032] disclosing an option wherein a polyurethane adhesive, i.e., curable adhesive composition, is coated over the cured adhesive/primer);
e) joining the first substrate to the adhesive composition on the first substrate such that an adhesive bond is formed between the first substrate and the second substrate (Figure 1 and para [0032] disclosing adhesively bonding a material in the form of an upper shoe portion (i.e., the second substrate to the EVA shoe sole (i.e., the first substrate); and
f) curing the curable adhesive composition (Figure 1 and para [0032] disclose bonding with an adhesive, in particular a polyurethane adhesive, inherently teaching a step of curing the polyurethane adhesive to result in a bonded product).
As to the limitations directed to the radiation-curable primer composition, the composition of Chang includes:
- at least one radiation-polymerizable monomer (para [0005] disclosing a (meth)acrylate monomer; para [0019] disclosing an acrylate or methacrylate; Example 1 disclosing HDDA (hexanediol diacrylate) monomer); and
- at least one photoinitiator (paras [0017], [0019] and Example 1 disclosing "Irgacure 500" understood to be a photoinitiator blend).
Regarding the limitation of "wherein the radiation-curable primer composition contains less than 5% by weight of solvents, in relation to the whole primer composition," Chang teaches 100% solids formulation that "may eliminate the need for solvent usage" (para [0003]) and "100% solids composition with 0% solvent added (para [0016]). Furthermore, none of examples (paras [0022]-[0028]) include a solvent.
Regarding the limitation that step a) is performed by ink-jetting. The specification provides no special definition of "ink-jetting." Thus, this term must be given its broadest reasonable interpretation consistent with the specification without reading the specification into the claims. MPEP 2111. Therefore, the term "ink-jetting" is understood to require spraying with a nozzle according to ink-jet technology, i.e., the spraying of tiny droplets precisely ejected from a printhead. Chang teaches performing the step a) by "spraying" (para [0032]) which is a contactless method, understood to require the use of a nozzle and also understood as being an automatic application, i.e., by a device that works by itself with little or no direct human control. However, Chang is silent as to the spraying being performed according to ink-jetting which is understood to require spraying in tiny droplets precisely ejected from a printhead.
Kanungo teaches using an ink jet printer to apply an energy curable liquid primer on a substrate wherein the primer may be an acrylic primer (col. 6, lines 52-55) cured using UV (col. 7, line 8) with substrates including rubber, plastic, paper, glass fabric or a combination thereof (col. 5, lines 18-24). The ink jet printer may include a plurality of inkjet ejectors for forming patterns of primer compositions and/or ink, the printhead can
be advantageously configured to be movable around a static substrate (col. 5, lines 25- 48).
Although not directed to adhering two substrates together using an adhesive like Chang, Kanungo is understood as analogous art to the present invention as it is directed to a radiation curable primer that is sprayed onto a substrate and a process ink-jetting to spray the primer. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). MPEP 2141.01(a) I.
It is the examiner's position that Kanungo meets both definitions of analogous art. First, like the present application, Chang and Kanungo are directed to processes that require the application of a primer onto a substrate surface. The term primer has long been associated with coatings used to prepare a surface of a substrate or other layer so that such surface treated area adheres to something else. The "something else" may be a coating, such as paint or ink, an adhesive, or another contacting layer that may also be an uncoated or coated substrate. Thus primers and processes using primers are understood to be analogous because primers serve as a preparatory layer applied for the purpose of improving adhesion to another layer applied to the primer, whether that layer be a coating, an adhesive, an ink or a substrate of another object.
Additionally, Kanungo is understood as reasonably pertinent to the problem faced by the inventor of the application. The specification describes the advantage of using robotic spray nozzles or inkjet applicators for the application of a primer which enables a highly efficient, fully automated process (para [0011] of the publication of the application, US2024/0052204). Thus a problem faced by the inventor is understood as how to improve efficiency of the primer application process through automation. Kanungo teaches printheads used for jetting of primer components can be configured to form patterns of primer compositions or be configured to move around a static substrate (col. 5, lines 34-48), thus teaching one of ordinary skill in the art how the use of an inkjet applicator for printing a primer may improve efficiency and improve automation, particularly when the substrate is a three-dimensional object.
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the method of Chang to utilize the ink jet printing mechanism and method of using the mechanism to spray a primer taught by Kanungo for applying the primer of Chang by spraying as predictable and suitable for the materials of Chang in view of the Kanungo teaching of using its printer for applying an acrylic, UV curable primer. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the method of Chang, that teaches spraying, to further utilize an ink-jet printing mechanism for the spraying process, in view of Kanungo, for the advantages taught in Kanungo, including printing the primer composition to form patterns of primer on three- dimensional objects, thus advantageously suitable for use on the three-dimensional shoe component taught as a substrate in Chang.
Regarding the limitation of a thiol-functional adhesive promoter added to the primer, Burkhardt, drawn also to the primer art (title/abstract), discloses that it is known to provide a thiol-based adhesive promoter – such as those based on mercaptosilanes – for the purpose of promoting adhesion ([0083]). In light of the foregoing, it would have been obvious to an ordinary skilled artisan to have added a mercaptosilane adhesion promoter to the system of Chang in order to predictably yield increased adhesion between layers of the corresponding construct ([0083]).
Regarding claim 4, please see the discussion in claim 1 above, Chang in view of Kanungo teaching the application of a primer by "ink-jetting." Regarding the recitation
that the nozzle of the applicator is automatically moveable in three dimensions relative to the first substrate, Kanungo teaches the printhead of Kanungo can be configured to be movable around a static substrate (col. 5, lines 25-48), understood as teaching the claim limitation of is automatically moveable in three dimensions relative to the substrate."
Regarding claim 5, Chang/Kanungo is silent as to the recited linear application speed. Since the specification contains no disclosure of the critical nature of this requirement or any unexpected results arising therefrom over the teachings of Chang/Kanungo, this requirement is understood as a design choice and as such is arbitrary and therefore obvious. Applicant must show that this requirement is critical. In re Woodruff, 16 USPQ 2d 1934.
Regarding claim 6, Chang teaches the application of a polyurethane adhesive onto the shoe portion, i.e., the second substrate (para [0032]). Chang further teaches that the polyurethane adhesive may be coated over the cured adhesive/primer on the first substrate (para [0032]). Chang further teaches that the polyurethane adhesive is not required, and thus only the adhesive/primer of Chang may be used to bond the first and second substrates (para [0032]). In view of these teachings, it would have been obvious to one of ordinary skill in the art at the time of filing the claims of the invention to modify the method of Chang to pretreat both the first and second substrates of Chang with the adhesive/primer according to Chang, with or without the addition of a polyurethane adhesive, as a predictable, adequate method step for forming a bond
between the two substrates according to Chang. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. V. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Regarding claim 7, Chang teaches steps of a), b) and d) of claim 1. It would have been obvious to one having ordinary skill in the art at the time of filing of the claims of the invention to predictably perform such steps in an automatic fashion according to known automatic shoe manufacturing processes, since it has been held that broadly providing a mechanical or automatic means to replace manual activity, which has accomplished the same result, involves only routine skill in the art. In re Venner, 120 USPQ 192.
Regarding claim 9, Chang teaches that once cured, the surface is ready to be bonded with an adhesive (para [0032]). The claim 9 recitation of applying the curable adhesive composition "within less than 5 minutes" of step a), which is the application of the primer on the surface of the substrate, is considered arbitrary and thus obvious, as the steps of applying primer, curing the primer and applying a curable adhesive would predictably follow one after another in a conventional shoe manufacturing process, the primer according to Chang being solventless, and thus not requiring a waiting time for solvent to evaporate or be otherwise removed. Since the specification contains no disclosure of the critical nature of this requirement or any unexpected results arising therefrom over the teachings of Chang, and as such this requirement would be arbitrary
and therefore obvious. Applicant must show that this requirement is critical. In re Woodruff, 16 USPQ 2d 1934.
Regarding claim 10 and 11, Chang discloses using a polyurethane adhesive at Figure 1 and para [0032].
Regarding claim 12, Chang discloses "radiation cured-typically UV cured" at para [0032]. Kanungo teaches its primers may be UV cured (col. 7, line 8).
Regarding claims 13-15 and claim 19, Chang/Kanungo teaches cure by UV irradiation (see rejection of claim 12 above). The effective ultraviolet wavelength, cure time and volume of primer composition per area of substrate ranges recited in the claims are understood to be design choices, since the specification contains no disclosure of the critical nature of these ranges or any unexpected results arising therefrom over the teachings of Chang that teaches the same primer recited in claim 1. It follows that the time between the application step a) and the curing step d) (claim 19), is also dependent upon effective ultraviolet wavelength, cure time and volume of primer composition per area of substrate. Thus, the recited ranges are arbitrary and therefore considered obvious. Applicant must show that these ranges are critical. In re Woodruff, 16 USPQ 2d 1934.
Regarding claims 16 and 17, Chang discloses 60-99% methyl methacrylate monomer content of the composition in para [0008]). Para [008] also discloses 0-20% hexane diol diacrylate, 1-20% acidic methacrylate and 1-5% photoinitiator.
Regarding claim 18, the shoe production process steps of Figure 1 of Chang are employed in the industrial assembly of a shoe.
Regarding claim 21, Chang fails to teach bonding the claimed substrates, but Chang in view of the teachings of Burkhardt, includes an adhesive capable of (and known to) bond many of the various substrates claimed (see Burkhardt – [0133]). It would have been obvious to have used the system of Chang with the adhesion promoter of Burkhardt to bond various other substrates, as desired, for the predictable reason of arriving at a bonded product given that it was known that Burkhardt’s mercaptosilane provides ample coupling to a multitude of varying surfaces (see Burkhardt [0133]). Moreover, the courts have held that use of known technique (using Burkhardt’s coupling agent / adhesion promoter) to improve a similar device (another primer system) in the same way (bond other substrates) is a matter of obviousness (MPEP 2143 I). The courts have also held combining prior art elements (primer and adhesion promoter) according to known methods (to promote bonding to various substrate surfaces) to yield predictable results (to promote bonding to various substrate surfaces) is likewise not patentably distinguishing (MPEP 2143 I).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Chang/Kanungo/Burkhardt as applied to claim 1 and further in view of Kinzelmann et al., US 6,350,344 (hereafter Kinzelmann), made of record by Applicant.
Regarding claim 8, Chang is silent as to storing the primed substrate for at least one day. Kinzelmann teaches solvent-free radiation-curable primers (Abstract) that may be based on acrylate and/or methacrylate monomers (col. 3, lines 7-10). Like Chang, Kinzelmann teaches the inclusion of suitable photoinitiators and curing by UV light (col. 3, lines 26-31). Kinzelmann teaches an advantage of its primers is that they may be used for both "in-line" priming and "off-line" priming (col. 2, lines 1-7). Kinzelmann explains that "in-line" priming means that after coating with the primer composition, a further coating may be applied onto the primer layer in a single operation (col. 2, lines 1- 7) and in "off-line" priming, the primer is first applied and a further coating is applied at a later time (col. 2, lines 1-7).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the method of Chang to include an
"off-line" priming step according to Kinzelmann, for the advantage taught in Kinzelmann of delaying the adhesive application step a desired amount of time.
As to the time being "at least one day," since the specification contains no disclosure of the critical nature of this requirement or any unexpected results arising therefrom over the teachings of Chang/Kinzelmann, this requirement is understood as arbitrary and therefore obvious. Applicant must show that this requirement is critical. In re Woodruff, 16 USPQ 2d 1934. Also, the claimed materials are the same and presumed to therefore have the same properties, e.g., shelf life of at least one day. The burden is shifted to the applicant to prove otherwise (In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980)). See MPEP Sections 2112-2112.02. Furthermore, the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on prima facie obviousness" under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 20 and 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The arguments relating to the thiol-functional adhesion promoting monomer are moot in light of the new grounds of rejection submitted above. Specifically, the teachings of Burkhardt render the foregoing obvious.
The arguments regarding the unexpected results have been fully considered are not found to be persuasive for two reasons. First, and most importantly, there is a notable difference in scope between the showing and the claim set. Particular materials, and most relevantly, a particular silane, are chosen to show unexpected results. The showing is not commensurate with the broad scope of the claims. Secondly, the showing that an adhesion promoter promotes adhesion appears to be expected rather than unexpected as by its very nature that additive is provided for the purpose of promoting adhesion.
The applicant argues that Kanungo is not relevant to the present rejection because it is from a different field of endeavor.
The examiner has fully considered the arguments but respectively disagrees. Kanungo is particularly relevant because it discloses a means by which to apply a primer and thus would have been very relevant to another system requiring the application of a primer. The courts have held that combining prior art elements according to known methods (ink jet printing another primer) is a matter of obviousness if yields only a predictable result (printing) (MPEP 2143 I). The courts have also held that use of known technique (ink jet printing a primer) to improve similar devices (another primer) in the same way (inkjet printing) is likewise a matter of obviousness (MPEP 2143 I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tsuno (US 5,109,057), drawn also to the primer art (abstract), discloses that it was well known to use mercaptosilane coupling agents in primer compositions (column 2, lines 23-40) for the purposes of increasing adhesion (i.e. coupling) to various substrates, such as metal, glass, ceramic, and others (column 2, lines 1-3).
Kishimoto (US 10,385,238), drawn to adhesive/primer systems (abstract), discloses the use of silane-based coupling agents, such as mercaptosilanes (column 5, lines 25-60) for the implicit purpose of providing primer/adhesive surface coupling, as the name “coupling” agent implies.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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