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 Amendment
The preliminary amendment filed on December 22, 2023 has been entered. Claims 1-7 are pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/578,636. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘636 encompass or are obvious over the present claims. The claims of US ‘636 do not include the claimed “pre-joining” step; however, it would have been obvious to the skilled artisan to have arranged the bodies to be joined prior to heat fusing with the amorphous thermoplastic resin in order to control the formation of the laminated body. With respect to claims 5-7, the method claims of US ‘636 would result in the article of claims 5-7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/724,370. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘370 encompass or are obvious over the present claims. The claims of ‘370 includes an “injection molding” step which occurs prior to the joining step. The injection molding step would function to arrange the materials in the claimed “pre-joining” step of the present claims. With respect to claims 5-7, the method claims of US ‘370 would result in the article of claims 5-7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/723,316. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘316 encompass or are obvious over the present claims. The claims of US ‘316 are directed to a specific joined body, i.e., a bumper reinforcement, whereas the present claims are directed to a generic joined body. The species claims of US ‘316 anticipate the present method claims. With respect to claims 5-7, the method claims of US ‘316 would result in the article of claims 5-7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/723,979. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘979 encompass or are obvious over the present claims. The present claims require that the solid joining agent is melted by heating and pressurizing the laminated body to join materials A and B, whereas the claims of US ‘979 require at least one of the solid joining agent, material A, or material B is heated to facilitate bonding of the laminate. The genus claims of US ‘979 would anticipate the present method claims since heating the solid joining agent would be clearly envisaged by the claims of US ‘979. With respect to claims 5-7, the method claims of US ‘979 would result in the article of claims 5-7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/871,881. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘881 encompass or are obvious over the present claims. The present claims are in product-by-process format; however, the same materials are used the article claims of US ‘881. Thus, the invention of the claims of US ‘881 are deemed to be the same or substantially the same as the claims of the present claims. See MPEP 2113.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/875,281. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘281 encompass or are obvious over the present claims. The claims in US ‘281 are connected via an end-to-end arrangement, which reads on the generic arrangement of the present claims. Thus, the claims of US ‘281 anticipate the present claims. With respect to claims 5-7, the method claims of US ‘281 would result in the article of claims 5-7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claims 1, 4, 5, and 7 are objected to because of the following informalities. The use of the language “…at least one of …. and…” in claim 1 (lines 3 and 4), claim 4 (lines 2 and 3), claim 5 (lines 3 and 4), and claim 7 (lines 2 and 3) should be changed to “…at least one of … or …”. While the specification discloses the intention for this language to be claimed alternatives, as written, one different interpretation is that the “and” requires both components to be present, e.g., in claim 1 epoxy resin and phenoxy resin. As such, clarity of the claims would be enhanced by change the term “and” to “or” in this phrase.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Takahashi et al. (WO2018/124215). US2021/0129488 is relied upon as the English language equivalent.
Regarding claims 1 and 5, Takahashi discloses a joined body produced by the method comprising the steps of (a) pre-joining a base material A, a solid joining agent containing an amorphous thermoplastic resin, such as a phenoxy resin, and a base material B to form a laminated body; and (b) melting the solid joining agent by heating and pressurizing the laminated body to join the base material A and the base material B ([0091], Figures 5a-5c). With respect to the limitation that the amorphous thermoplastic resin has a heat of fusion of 15 J/g or less, this property would be inherent to the amorphous thermoplastic resin of Takahashi, since both Takashi and the present invention use identical resins for the solid joining agent material. See MPEP 2112.
Regarding claims 2 and 6, Takahashi discloses that the thermocompression temperature is not particularly limited, but it is, for example, in a range of 100-400°C, and preferably in a range of 150-300° C [0104], and the pressure is preferably 3-5 MPa [0105].
Regarding claim 3, Takashi discloses that the solid joining agent can be in the form of a film before melting [0090].
Regarding claim 4 and 7, Takashi discloses the use of a fiber-reinforced plastic (resin) as base material A and a metal as base material B (claim 1, Figures 1 and 5a-5c).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781