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 .
Response to Arguments
Applicant’s arguments, see Applicant Arguments, filed 7th August 2026, with respect to the rejection of claims 1-3, 7, and 9-22 under 35 U.S.C. 103 have been fully considered and are partially persuasive. Previous grounds of rejection have been withdrawn.
Regarding Claim 1 and 7, Applicant contends that “Iwamura does not disclose or suggest distinguishing feature of claim 1” and “Zhao does not disclose or propose any technical content related to the above-identified technical feature” of the amended claim 1 these arguments are persuasive. However, Applicant also contends “Iwamura teaches away from using a solvent-based roughening approach”. This is not persuasive, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004)” (see MPEP 2145).
Regarding Claim 2 and 9, Applicant contends “Tallmadge neither teaches nor suggest applying an adhesive contain a surface-roughening solvent onto a cationic electrodeposition coating to increase the surface roughness”, this is persuasive. However, Applicant also contends “the function of the solvent in Tallmadge is completely different from the function of the surface roughening solvent defined” in the application, this is not persuasive. The discloser of Tallmadge teaches combinations of adhesives and solvents which have inherent material properties, if the prior art structure is capable of performing the intended use, then it meets the claim. The function of an apparatus or composition is not solely dependent on explicit teaching.
Regarding Claim 9 and 17, Applicant contends “Ota does not teach or suggest coating an adhesive containing a surface-roughening solvent on a cationic electrodeposition coating layer”, this is persuasive. However, Applicant also contends “the function of the solvent in Ota completely different from the function of the surface roughening solvent” in the application, this is not persuasive. The discloser of Ota teaches combinations of adhesives and solvents which have inherent material properties, if the prior art structure is capable of performing the intended use, then it meets the claim. The function of an apparatus or composition is not solely dependent on explicit teaching.
Regarding Claims 3, 12-13, 16 and 20 the dependance on Amended Claims 1 and 9 is recognized and because the previous rejections of Claims 1 and 9 are withdrawn, the previous rejections of Claims 3, 12-13, and 16-20 are also withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 7, 9, 12, 16-17, and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding Claim 1, the limitation “wherein the adhesive contains a containing a roughening solvent to make a surface maximum height roughness of the cationic electrodeposition coating layer 19.6 or more” is recited and not enabled by the specification and figures. “In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is "reasonable" or is "undue."” (see MPEP 2164.01). The Wands factors for the instant case are Analyzed as follows. A, the breadth of the claims, the claims pertain to a “flocked helical spring” comprising an adhesive. While flocked helical springs are limited in scope, the adhesive including a “roughening solvent” has a very broad scope as there are known to be many adhesives, and roughening solvents in both the flocked spring art and the general chemical art. B, nature of the invention, while flocked helical springs behave in a simple predictable manner, the adhesive of Claim 1 can be complex and behave extremely unpredictably because the adhesive, the solvent in the adhesive, and the cationic electrodeposited layer on the spring body can interact in a multitude of different ways based on minor chemical changes to any one of the components. C, the state of the prior art, while flocked helical springs with applied adhesives and adhesives containing roughening solvents are well known, the prior art is limited in its disclosure of adhesives containing roughening solvents which directly make the surface roughness a specific value. D, the level of one of ordinary skill, one of ordinary skill in the art of flocked helical springs would have a background in manufacturing and understand the processes by which one can flock and utilize different materials to achieve different properties of the spring, but would not have an advanced understanding of academic chemistry to understand complex interactions between adhesives and the solvents within them. E, the level of predictability in the art, in the art of flocked helical springs there is a predictable and routine method of testing and determining which material have desirable properties, but not of how to modify existing materials, in the art of adhesive containing roughening solvents uncertainties are introduced such that experimentation can yield un-predictable results. F, the amount of direction provided by the inventor, the inventor discloses potential materials for many components of the flocked helical spring, but this does not include the roughening solvent. The inventor provides no direction to composition, material properties, or methods of manufacture related to the roughening solvent. G, the existence of working examples, working examples are known to exist as disclosed in the Applicants specification, but information about the examples is not provided. H, the quantity of experimentation needed to make or use the invention based on the content of the disclosure, large amounts of experimentation are required in order to determine the unknown roughening solvent using only the provided material information and results of material testing. After considering these factors, Examiner finds a lack of enablement for Claim 1. For more discussion on Lack of Enablement (see MPEP 2164.01). Claims 2-3, 7, and 9-22 are similarly rejected.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yamada (JP 2014117857 A) discloses the use of adhesive comprising a roughening solvent to make the surface of application rougher.
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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/S.W.I./Examiner, Art Unit 3616
/Robert A. Siconolfi/ Supervisory Patent Examiner, Art Unit 3616
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