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 .
DETAILED ACTION
Claim Rejections - 35 USC § 112
2. 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 4-6 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.
Regarding claim 4, it is not clear what is meant by a cross section being “substantially” polygonal.
Regarding claim 5, it is not clear what constitutes a “coarse” aggregate.
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.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (KR 2018/0127833 A, published 30 Nov. 2018).
Regarding claims 1 and 7, Kim teaches bonding of parts by forming grooves on one surface of the first material with depths of 150-200 µm (corresponding to claimed roughness) and molding a second part (bracket) onto this grooved surface (Abstract, paragraph 0023, and Figure 2 [reproduced below, see original Korean patent document]). Kim teaches the first surface is metal, and the second part is a synthetic resin material (claim 4).
It is the examiner’s position that the corrugated surface taught by Kim is a concavo-convex shaped surface.
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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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Tomogami and Itagaki (WO 2019/035395 A1, published 21 Feb. 2019, hereinafter Tomogami).
Regarding claims 1-2 and 7, Tomogami teaches a power transmission shaft comprising a metal shaft member and a resin shaft member (resin bracket), in which the metal shaft member and resin shaft member (resin bracket) are joined via a fastening structure formed by the plastic flowing onto and solidifying on a fine corrugated (that is, a concavo-convex) surface (Abstract). Tomogami teaches the uneven depth W (corresponding to claimed roughness) is about 5 to 200 µm (paragraph 0033 and Figures 2-3 and 5-6 [reproduced below from original WO patent document].
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The recesses shown in the above figures form both the concavo-convex surface of claim 1 and the groove-shaped recess of claim 2.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected roughness values from the overlapping portion of the ranges taught by Tomogami because overlapping ranges have been held to be prima facie obviousness.
In light of the overlap between the claimed joining joint made of metal and that disclosed by Tomogami, it would have been obvious to one of ordinary skill in the art to use a joining joint made of metal that is both disclosed by Tomogami is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Takihana et al. (US Patent Application 2016/0303820 A1, published 20 Oct. 2016, hereinafter Takihana).
Regarding claim 1, Takihana teaches a metal-resin composite, in which the metal member has a roughened surface that has fine irregularities with depressions having concavo-convex shapes (Abstract, paragraphs 0021 and 0028, and Figures 1-2, reproduced below). Takihana teaches the metal surface has roughness Ra of 0.5-40 microns (paragraph 0035).
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As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected roughness values from the overlapping portion of the range taught by Takihana because overlapping ranges have been held to be prima facie obviousness.
In light of the overlap between the claimed joining joint made of metal and that disclosed by Takihana, it would have been obvious to one of ordinary skill in the art to use a joining joint made of metal that is both disclosed by Takihana is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Kim, Tomogami, and Takihana do not teach or disclose a recess formed in a circumferential direction of a side surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/Examiner, Art Unit 1787