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 .
The amendment of November 20, 2025 has been received and entered. With the entry of the amendment, claims 8-13 are withdrawn, and claims 1-7 and new claims 14-16 are pending for examination.
Election/Restrictions
Applicant’s election of Group I, claims 1-7, in the reply filed on July 16, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 July 16, 2025.
Claim Rejections - 35 USC § 112
The rejection of claims 1-7 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn due to the amendment of November 20, 2025 clarifying the claim language.
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.
Claims 1-7 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hasan (US 2018/0207325) in view of Ogawa et al (US 2008/0145689), EP 2251133 (hereinafter ‘133) and Eckert et al (US 6455443), EITHER alone OR further in view of Sauer (US 6488805).
Claims 1-3: Hasan provides a manufacturing method for a bonded body of different materials (0004), comprising providing a base material (substrate) including metal, for example (note the substrate of metal with oxide coating) (note 0053-0054, 0060). The surface of the base material is coated with organosilanes that can be amino based silanes to the surface with a solution to bond further material (described APIs, which can be linked with resins/polyepoxides, or simply the resins/polyepoxides can be used as the bonding material alone) (note 0067-0071, 0075, API as active pharmaceutical ingredient note 0002). Therefore, the organosilanes can be considered coupling agents. The organosilanes can be applied by coating from an organosilane/coupling agent solution, such as by dipping, with the solution has an amino based silane (note 0071, 0069, 0108, as desired by claim 2). It is indicated that different organosilanes can be desired to be bonded to different areas/regions of the substrate, where this is also bonding to different APIs (a different API for a different organosilane), and also would be understood to at least predictably and acceptably bond to different linkers, since the API would be bonded to linker that reacts with the specific organosilane and API (note 0072-0073, 00750068). Since the APIs/linkers bond to the specific organosilane, it is understood that the pattern/shape of the organosilane applied to different areas of the substrate would also correspond to the shape of the resin bonded to the base material, since the resin would specifically bond to the organosilane to be used for that specific resin. Hasan indicates that the organosilane reacts with hydroxyl groups on the substrate surface to bond to the surface, where the surface can be heated or treated to accelerate the reaction, and after reaction residual unreacted organosilane can be removed by washing/cleaning, using a solvent, which would also remove unreacted solution (note 0071).
(I) As to providing that the individual organosilanes are provided as coupling agents that have been applied to the substrate surface with a coupling agent solution that is then treated with an irradiation process for forming a binding layer to which the base material and coupling agent molecules in the coupling agent solution are bonded through covalent bonds by selectively irradiating only a portion that is smaller than an area of the entirety of a surface of the base material coated with the coupling agent solution with a laser while a position of the laser is sequentially changed to form a pattern having a shape corresponding to a shape of a resin to be bonded to the base material, with a cleaning process to remove the coupling agent that is not covalently bonded to the base material, and a resin bonding process to bond the binding layer and the resin, Hasan describes how the organosilane/coupling agent can be applied as a solution of the material in a process such as dipping, that would coat the entire surface (note 0071, 0108), but at the same time notes how it would also be desired to apply different organosilanes to different regions of the substrate (note 0073), and there would also be a process of bonding the organosilanes/binding layer with the resin material, since would react together to form layers with those materials (as a linker or alone, note 0075). As noted above, Hasan also has providing heat or other treatment to accelerate the reaction between the substrate surface and organosilane, and then after reaction cleaning to remove unreacted organosilane.
Ogawa teaches a manufacturing method for a bonded body of different materials (note 0006, 0021-0025). The process includes a coating process of coating a surface of an inorganic base material including metal (metal foil with a metal treatment of rust preventing material) with a coupling agent solution (note 0021-0024). The coupling agent solution can be an amino-based silane coupling agent solution as desired by present claim 2 (note 0023). There is a further treatment of the coupling agent on the surface of the base material with a treatment to bond the coupling agent with the base material (note coupling agent bonded with OH groups of the rust preventing metal of the overall inorganic base material), where the treatment can be by heating or by irradiation of the surface with a UV irradiation, forming a binding layer (note 0024). Thereafter a resin bonding process of bonding the binding layer and a resin (note adhesion assisting agent of epoxy resin) is provided (note 0025, 0073, 0006).
‘133 describes how UV irradiation under such conditions as in Ogawa can be provided using a pulsed UV laser, with an energy density of 0.003 to 0.5 microjoules/micrometer2 (0.3 to 50 J/cm2), and wavelength of 200-400 nm (note 0005, 0007), which such lasers project a spot on a surface to be treated, with a spot size of about 5-40 micrometer in diameter, for example, and where the area to be treated is moved over by the laser/spot (and thus the position of the laser, that is the spot, is sequentially changed) (note 0005-0006).
Eckert describes how a substrate can be provided, where the substrate can be metal (note column 2, lines 35-50, column 23, lines 35-40), and silane coupling agent applied to the substrate as a silane coupling agent solution (note column 2, lines 50-60, column 4, lines 40-60), and the substrate heated at 90 degrees C or above, such as 90-200 degrees C (note column 2, lines 55-60, column 4, line 60 to column 5, line 15), where after this treatment the substrate is rinsed (cleaned) to remove residual unreacted silane coupling agent (and would therefore also be understood to remove unreacted solution) (note column 2, lines 60-65, column 5, lines 10-20).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hasan to specifically treat applied organosilane/coupling agent molecules with an irradiation process to form a binding layer to which the base material and coupling agent molecules in the coupling agent solution are bonded through covalent bonds by selectively irradiating only a portion that is smaller than an area of the entirety of a surface of the base material coated with the coupling agent solution with a laser while a position of the laser is sequentially changed to form a pattern having a shape corresponding to a shape of a resin to be bonded to the base material, with a cleaning process to remove the coupling agent that is not covalently bonded to the base material, and a resin bonding process to bond the binding layer and the resin as suggested by Ogawa, ‘133 and Eckert in order to form a desirable organosilane based binding layer that will allow for binding of resin material to a specific region of the substrate, since Hasan describes applying organosilane/coupling agent materials/molecules on a substrate and bonding to resin material where it is indicated that the application of the organosilane can be by dip coating a solution of the organosilane material to the entire surface, but also indicates that it can be desired to apply the organosilane/coupling agent materials to a specific region of the substrate (which would be less than the entire substrate) so as to allow for different materials to be applied to different areas, and that heating or other treating can be provided to help bond the organosilane to the substrate surface, and provide cleaning to remove unreacted organosilane, which would also be understood to remove unreacted solution, and thus would remove undesirable material that would not be useful for the bonding of the resin and so be suggested to occur before the resin bonding, and Ogawa as discussed above would indicate how similar organosilane/coupling agent materials can be applied to a substrate/base material and bonded to the substrate by heat or irradiation to form a binding layer that would then bond with resin, and Ogawa indicates that UV treatment can be provided with wavelength of 200-400 nm at 0.2-2.5 J/cm2, and ‘133 indicates that such a UV treatment can be provided with wavelength of 200-400 nm and overlapping irradiation energy density 0.2-50 J/cm2 by using a pulsed UV laser, where the laser has a spot size on the surface and moves (laser position on the surface that sequentially changes) to cover the area to be treated, and thus by using a laser, a specific area on the substrate can treated to form the binding layer by irradiation, even when the entire substrate initially provided with organosilane, Eckert indicates that when applying a silane coupling agent solution to a metal surface and performing a similar heating treatment as described by Ogawa, it is conventional to clean the resulting surface to remove unreacted silane coupling agent, which rinsing would also remove unreacted solution, and thus would remove undesirable material that would not be useful for the bonding of the resin and so occur before the resin bonding, and since the UV treatment with the laser would be an alternative to the heat treatment, it would be suggested to provide the same unreacted/unbonded silane coupling agent solution removal after the UV laser treatment as well, and by removing unreacted organosilane/coupling agent after the selective laser treatment, organosilane binding layer would only remain on the desired region of the substrate and not on other regions, thus giving an overall process that allows for specific location of organosilane binding layer material to be applied and remain to attach resin to a specific area of the base material, by selectively irradiating only a portion that is smaller than an area of an entirety of the surface of the base material coated with the coupling agent solution with a laser while a position of the laser is sequentially changed to form a pattern having a shape corresponding to a shape of a resin to be bonded to the base material, with a cleaning process of removing the coupling agent solution that is not covalently bonded to the base material. The specific J/cm2 to use would be optimized from the ranges given, resulting in a J/cm2 in the same range (note claim 3). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Since the same pulsed laser wavelength and energy density would be used with the same amino-based silane coupling agent as claimed, the claimed forming of a binding layer where the base material and coupling agent molecules are bonded through covalent bond is understood to occur. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
(II) Optionally, further using Sauer, Sauer further teaches that a metal (inorganic) base material can be provided, coated with a solution with an organosilane and then the coated material irradiated with a laser to provide a binding layer to prepare for further bonding, where a resin (epoxy resin) can be bonded to the binding layer (note column 1, lines 1-25, column 2, lines 35-68).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hasan in view of Ogawa, ‘133 and Eckert to further use a laser to provide the UV treatment as suggested by Sauer with an expectation of predictably acceptable results since Ogawa indicates providing a UV or heat treatment, and ‘133 indicates how similar UV treatment conditions to Ogawa can be provided with a laser, and Sauer would indicate how a laser can conventionally be used to prepare a silane agent applied to a metal base article for further application of a resin, such as epoxy resin.
Claim 4: as to repeating the coating, irradiation and cleaning processes before providing the resin bonding, such that one partial region of the base material has a first silane coupling agent bonded and a second different regions of the base material having a second different silane coupling agent bonded, Hasan indicates that different organosilanes can be desired to be applied to different areas/regions, where this also bonding to different APIs (a different API for a different organosilane or different linkers) (note 0072-0073), and therefore, it would have been obvious to repeat the process with a different organosilane/coupling agents before applying resin material so that different resin will attach to different coupling agents.
Claims 5, 7: as to the placement of the region to be first irradiated and the region to be second irradiated, this would be a matter of routine experimentation based on the specific silanes to be used and resin bonding material. Note as discussed in MPEP 2144.04(VI)(C), rearrangement of parts would be an obvious matter of design choice.
Claim 6: similarly, as to claims 5, 7, the elastic modulus of the binding layer formed in the first irradiation process being lower than that formed in the second irradiation choice would be a matter of design choice, where since different silanes would be used for different parts, they would predictably and acceptably, when formed into a binding layer. have different elastic modulus, and the placement would be a matter of routine experimentation based on the specific silanes to be used and resin bonding material. Note as discussed in MPEP 2144.04(VI)(C), rearrangement of parts would be an obvious matter of design choice.
Claim 14: as to a concentration of a coupling agent in the coupling agent solution, Hasan gives an example of 1 % v/v (note 0108), in the claimed range. Ogawa notes amounts of 0.1-15 g/L (note 0024), which further indicates the obviousness of optimizing the amount used. Note MPEP 2144.05(A)(II) as to the obviousness of optimizing a concentration amount.
Claim 15: As to the binding layer being smaller than the base material, this would be further suggested by the combination of references used for claim 1, where the binding layer would correspond to the pattern/shape of the binder layer, which would be smaller than the surface of the base material (the resin layer and binder layer can be considered as the first of any materials being applied when multiple resin layer materials or APIs applied).
Claim 16: As to the applying a liquid resin on the binding layer and then curing the liquid resin, Hasan describes that linkers, including polyepoxides can be applied (note 0075). Ogawa describes how epoxy resin (note 0026) along with other polymer (B) such as acrylonitrile butadiene rubber or polyacetal resin (note 0039-0044) and also (C) epoxy resin curing agent (note 0048), described as an adhesion assisting agent (note 0072, 0026), where the agent can be applied to the binding layer in liquid form and cured (semi cured) (note 0072-0073, 0025). Therefore, it would be suggested that polymer material can be applied as a liquid resin material applied onto the binding layer and curing.
Shimotsuma et al (US 2006/0208374) also notes the removing of excess silane coupling agent after treatment (note 0042). Monson et al (US 5120395) also notes a pulsed UV laser system (note column 3, lines 10-35).
Response to Arguments
Applicant's arguments filed November 20, 2025 have been fully considered.
Note the adjustment to the rejections due to the amendments to the claims, where claim 1 now requires irradiating only a portion that is smaller than an area of an entirety of a surface of the base material coated with the coupling agent solution, where previously in the claims, irradiation could be on an entirety of a surface coated with the coupling agent solution (such as for claim 4, where the coupling agent previously could be coated on only a portion of the surface)..
With the adjustment to the rejections, Hasan is now the primary reference. As to the suggestion to specifically irradiate a portion smaller than the entirety of the surface of base material coated with the coupling agent, this would have been suggested by Hasan in combination with the other references, where Hasan indicates to provide different organosilane/coupling agent/binder layer to different regions of the substrate, meaning that a portion of any one coupling agent to be bonded to the substrate would be less than the entirety of the surface, and as discussed in the rejection, it would have also been obvious to initially apply coupling agent solution to the entire base surface, irradiate the portion to be kept and then remove the remaining solution. Note the discussion in the rejection above. While Ogawa does not disclose the applying of the coupling agent to specific regions, it does disclose how to bond coupling agent to prepare for adhesion of resin, and therefore is pertinent and relevant to how to perform such application for the process of Hasan as well, since Hasan is also applying coupling agent solution to prepare for adhesion of resin type material.
As to the argument as to the criticality of the laser range in claim 3, it is the Examiner’s position that the showing testing of Figure 4 does not show criticality commensurate in scope with what is claimed. Note MPEP 716.02(d). Here, Figure 4 tests the results of a specific coupling agent (KBM603) on a specific aluminum solvent using a solution with a specific amount of the coupling agent, using a specific laser, and then bonded with a specific epoxy resin. However, the present claims 1, 3 would allow for use with any silane coupling agent, in any amount, on any metal or glass including substrate, with any laser and bond with any resin. There is no showing that the same results would apply to such a wide variety of possible materials, and therefore, the showing is not commensurate in scope to what is claimed.
Therefore, the rejections above are maintained.
Conclusion
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.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718