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 § 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 1-14 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.
Claims 1, 8, and 9 recite “the mating surface of the two objects to be joined.” However, there is no antecedent basis for these mating surface of these two objects. Examiner assumes the mating surfaces of the two objects are joined via the adhesive as part of the process. As such, Examiner recommends amending the preamble to provide antecedent basis for the objects such as: “A method for preparing and applying a polyurethane adhesive to mating surfaces of two objects to be joined, …”
The remaining claims are rejected as being dependent on an indefinite claim.
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.
Claim(s) 1-5 and 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burghardt et al. (US 2009/0104453) in view of Shumann et al. (US 2011/0111221) and Masuda et al. (US 2015/0020957).
Regarding Claims 1-4 and 9-12, Burghardt et al. teaches mixing components of a polyurethane including isocyanate prepolymers and amine crosslinking agents (See page 1, paragraphs [0017]-[0024] and page 4, paragraphs [0059]-[0062], wherein the diisocyanates and polyols undergo reaction into polyurethane prepolymers including isocyanate reactive groups that then react with amines for crosslinking or chain extension, i.e. amine curing agents, wherein the isocyanate groups on the prepolymer that react with the amines reasonably make the prepolymer an isocyanate prepolymer; combining is a form of mixing and is inherent to form the polyurethane from it starting materials and further agitation via ongoing mixing is standard and well-known to facilitate the polymerizing reaction that forms the polyurethane).
Burghardt et al. teaches forming the polyurethane into a film of a desired thickness by using known methods such as coating on a release layer and allowing to solidify thereon (See page 6, paragraph [0120]), wherein a release, i.e. non-stick, layer may be included on each side of the formed polyurethane film, implicitly as protective layers peeled prior to use (See page 6, paragraph [1024]). Burghardt et al. further teaches the film is cut prior to bonding (See page [0142]) and placed in contact and held in contact with mating surfaces of objects to be bonded and heated to facilitate bonding (See page 7, paragraphs [0137]-[0141]). Burghardt et al. indicates the film is cut before bonding and the release films must be peeled before bonding, but is silent as to whether cutting occurs with the films in place. Examiner submits this is at least would have obvious to a person having ordinary skill in the art at the time of invention as long as the release films are removed prior to bonding. Such protective release films thus could have maintained their protection during cutting, thus preventing debris from the cutting process from contaminating the adhesive surfaces.
Burghardt et al. fails to teach the exact process as claimed for forming the polyurethane films. However, known processes for forming films of similar solidfiable adhesive films between release films would have predictably been suitable. Schumann et al. teaches polyurethane films may be coated between non-stick films and passed through sizing rollers that apply pressure before allowing the film to solidify and form (See page 10, paragraph [0131] and page 13, paragraph [0153]). Schumann et al. is silent as to more specific details of the film forming system including the rollers, but further indicates polyurethane and silicone films are known to be formed by similar methods (See page 2, paragraph [0017]). Masuda et al. teaches a process such as in Schumann et al. forming an adhesive film of precise thickness by applying it between release films prior to pressing with rollers, and specifically teaches pouring the adhesive on a first non-stick [4] layer on a planar molding surface [84], placing the second non-stick surface on the upper surface of the pour resin, and pressing the non-stick layer sandwiched resin with rollers to create a specified thickness, and then allowing to solidify (See pages 8-9, paragraph [0136] and Fig. 5).
Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize a film forming process such as in Schumann et al. and Masuda et al. to form the polyurethane film of Burghardt et al. Doing so constitutes known methods for forming adhesive films such as in Burghardt et al. and would have predictably formed a polyurethane film of desired thickness with two release film protective coatings, such as is taught in Burghardt et al., from a precursor meltable polyurethane, such as is clearly applicable in Burghardt et al., by extruding/pouring the precursor polyurethane onto a first non-stick film on the planar surface as the second non-stick film is placed thereon, pressing via thickness pinching rollers, and solidifying the thermoplastic via cooling at room temperature, i.e. 70-75 degree F.
Regarding Claims 5 and 13, Burghardt et al. teaches the film may be formed at a wide range of thicknesses up to 3 mm, and specifically teach 500 microns, or about 0.02 inches, as a suitable thickness for the film (See page 6, paragraph [0128]).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burghardt et al., Shumann et al. and Masuda et al. as applied to Claims 1, and further in view of Yamada et al. (US 6,020,059).
Regarding Claims 6, Burghardt et al., Shumann et al. and Masuda et al. teach the method of Claims 1 above. Burghardt et al. teaches siliconized, i.e. silicone treated, release films (See page 6, paragraph [0124]), but fails to specifically teach PTFE. However, it is well-known in forming adhesive films on release films that both silicone-treated films and PTFE films are known suitable alternative release films for form the adhesive film (See col. 5, lines 7-9 and lines 39-44, teaching both silicone-treated films and PTFE as suitable release films for forming and adhesive film from a coated resin). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize PTFE as opposed to siliconized release films. Doing so would have predictably provided a known suitable alternative release film for forming an adhesive film from resin.
Claim(s) 7, 8 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burghardt et al., Shumann et al. and Masuda et al. as applied to Claims 1 and 9, and further in view of Kelsch et al. (US 2022/0025229).
Regarding Claims 7, 8, and 14, Burghardt et al., Shumann et al. and Masuda et al. teach the method of Claims 1 and 9 above. Burghardt et al. further teaches blocked isocyanates as a suitable crosslinker (See page 5, paragraph [0102]), but is silent as to whether the polyurethane film may cure with heat. However, it is well-known in the art to form similar heat activatable thermoplastic polyurethane adhesive films with a latent reactivity by utilizing a blocked isocyanate cross-linker activatable at an activation temperature so as to enhanced bond strength via crosslinking/curing by heating film in contact with the substrates to be bonded (See, for example, Kelsch et al., pages 2-3, paragraph [0037]-[0041] and [0051], and page 4, paragraph [0060], teaching a blocked isocyanate crosslinker can provide latent reactivity to a thermoplastic polyurethane by activating and reacting to crosslink the adhesive at a specified curing temperature so as to increase the strength of the bonded film). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to impart a latent reactivity to the polyurethane adhesive film in Berghardt et al., such as by including a block isocyanate curing agent. Doing so would have predictably provided the polyurethane film of Berghardt et al. with a higher strength after heating due to the crosslinking reaction in the film heated between the objects. Note the temperature of crosslinking reaction is a curing temperature to which a user must heat in order to achieve the advantage of crosslinking, a well-known type of curing reaction.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746