updDETAILED ACTION
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 / Arguments
The response, filed 08/25/2026, has been entered. Claim 2 is cancelled. Claims 1 and 3-7 are pending. The previous objection to claim 4 is withdrawn due to amendment. The previous 112b rejection of claim 2 as it relates to “0.02” is withdrawn due to persuasive arguments directing the examiner to [0061] of the instant specification. Applicant’s arguments regarding the 112 rejections of claims 1 and 3-7 have been fully considered but are unpersuasive. Applicant’s arguments regarding the prior art rejections of claims 1 and 3-7 have been fully considered and are persuasive. Specifically, applicant argues that the art is so unpredictable that even using the exact same materials/filler/additive/etc. (the rationale relied upon by the examiner) would fail to inherently yield “a distortion difference between the resin molded member and the resin coating is 0.02 or less, the distortion difference being a dimensionless value representing a difference between a distortion of the resin molded member and a distortion of the resin coating when a temperature changes from 90°C to 20°C”. As such, the prior art rejections are withdrawn. The 112 rejections of the claims remain.
On pages 5-6 of the response, applicant argues that the examiner mischaracterized the instant specification as disavowing the sufficiency of disclosure. Specifically, applicant argues that the sections cited by the examiner were merely the disclosure’s description of the technical problem the present invention solves. Applicant further argues that the instant specification sets forth a method for computing W (adhesion work) and that one of ordinary skill in the art “can apply these disclosed equations to candidate material pairs and determine whether a given pair satisfies W ≥ 45 mJ/m2. In response, the examiner directs applicant to the 112a written description rejection (below and presented in the previous Office action) once more in which the factors and reasoning were applied. Specifically, the paragraphs the examiner cited of the instant specification combined with the fact that applicant does not disclose the materials and process(es) with sufficient specificity (needed by applicant’s own admission), leads the examiner to conclude that applicant disavows the sufficiency of the instant disclosure to yield the claimed invention. Merely reciting a large number of equations and constants that can be permutated through to potentially yield a combination that satisfies W ≥ 45 mJ/m2 does not convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. On page 6 of the response, applicant directs the examiner to the disclosed “samples” as somehow meeting the written description requirement. In response, once again, the examiner directs applicant to the 112a written description rejection below (and presented in the previous Office action), reproduced herein for convenience. Applicant provides “examples” (e.g., [0070]-[0071], [0073], and Table 3 / [0075]); however, these examples are silent with regards to specific parameters and attributes that, per applicant’s own admission, are needed to yield the claimed invention. E.g., what is the exact type/formulation of resin? “PE resin” and “PU resin” are effectively unbounded in their exact chemical formula. What about the number of branched chains of the resin? The resin molecular weight? The type of additive in the resin? The content of the additive? The “samples” disclosed by the instant application are disclosed extremely generically. Therefore the examiner finds applicant’s aforementioned arguments unpersuasive.
On page 7 of the response, applicant argues that the examiner erred in stating that the specification provides only a “post-fabrication characterization step”. On pages 8-9 of the response, applicant argues against the examiner’s analysis of the Wands factors. In response, the examiner notes that that comment in context was directed to Wands factor “f”, specifically the quantity of experimentation needed to make or use the invention based on the content of the disclosure. In this context, applicant argues that this can be done “pre-fabrication”; however, the equations to which applicant cites discuss a large list of variables that mention liquid, solid, surface tension between solid and liquid, contact angle of “liquid droplets stationary on a surface of a solid”, etc. Further, equation [0050] is applied to a solid (i.e., a part/component is already made). Particular emphasis is given on the number of variables in equations [0046]-[0047]. Attempting to work back from, for example, equation (2) in [0056] with the assumption that W = 45 mJ/m2 or greater, one is immediately confronted with 6 unknown variables which each contribute to the functional result of W = 45 mJ/m2 or greater. In the examiner’s analysis of the Wands factors c through f: it was set forth that: c) applicant explicitly discloses that there is a very low level of predictability; d) applicant provides exceptionally generic and open-ended direction; e) the “samples” or supposed working examples provided by applicant are silent with regards to the specific parameters and attributes that, per applicant’s own admission, are needed to yield the claimed invention and these “samples” are recited exceptionally generically regarding their composition (essentially unbounded possibilities); and f) the instant invention, as claimed, in view of the instant disclosure, would require undue experimentation to make. Applicant’s arguments regarding the Wands factors are unpersuasive. Regarding “a”: the reduction of breadth by including the limitations of previous claim 2 are addressed in the minor update to the rejection below. Regarding b: this is addressed above and below as it relates to the number of materials/fillers/additives and the methodologies (e.g., how they are bonded) applied to the nearly boundless combinations of materials. Regarding c: the examiner disagrees that the instant specification provides any guidance that would resolve applicant’s own explicit and thorough admission of the unpredictability of the art (which can be as specific as dependent on the number of branched chains of the resin material, in conjunction with the large number of other explicitly disclosed factors). Regarding d: the alleged “step by step” guidance would only yield the functional result via the disclosed equations if all the other factors were already known (the exceptionally large number of factors that contribute to the variables of the disclosed equations were, and are, addressed in the 112 rejections below). Regarding e: applicants alleged “samples” have already been addressed above and below (e.g., the exceptional generality and nearly unbounded possible variations for any of the “disclosed” samples). Similarly, applicant’s argument regarding Wands factor f has already been addressed. Therefore the examiner finds the aforementioned arguments unpersuasive.
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.
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 1-7 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
"The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee [inventor] was in possession of the invention that is claimed." See MPEP 2163 I. “An invention described solely in terms of…its function may lack written descriptive support where there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function” (emphasis added). See MPEP 2163 A.
The limitation at issue for all the instant claims is “a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2 or more”.
With regards to the “resin coating”, applicant discloses: polyurethane resin, polyester resin, and the vague “or the like” ([0034]). However, applicant also discloses that the “resin coating” may be a material “having a content of 50 mass% or more in the resin coating”. Applicant also discloses the resin coating “may contain an additive such as a flame retardant or filler or the like”.
With regards to the “resin member”, applicant discloses: polyamide resin, polyphenylene sulfide resin, polybutylene terephthalate resin, “or the like” ([0041]). However, applicant also appears to disclose that the “resin member” may be “50 mass% or more” of the resin. Applicant also discloses that the resin member “may contain an additive such as a flame retardant or filler or the like”.
Most of the disclosed resins have either unbounded, thousands, or many species. The most specific are for the “Resin Molded Member” which are PA6T ([0071]), PA612 ([0071]), “polybutylene terephthalate” ([0041]), and “polyphenylene sulfide” ([0041]). This is not including the variations in mass%, additives, filters, etc. The following are the two most important key facts that lead to both of the instant 112(a) rejections.
1) Applicant explicitly disavows the sufficiency of the instant disclosure to yield the claimed invention -- i.e., “a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2 or more”. Applicant states ([0035]) that “even if the same resin material for constituting the resin coating 23 is used, adhesiveness between the resin coating 23 and the resin molded member 3 changes depending on the number of branched chains of the resin material, a molecular weight, the type of additive contained in the resin coating 23 and a content of the additive. Therefore, even if the resin coating 23 is, for example, made of PU resin, it may not be possible to satisfy an adhesion work value to be described later.” Still further, for the molded member, applicant states that ([0042]) “even if the same resin material for constituting the resin molded member 3 is used, adhesiveness between the resin coating 23 and the resin molded member 3 changes depending on the number of branched chains of the resin material, a molecular weight, the type of an additive contained in the resin molded member 3 and a content of the additive. Therefore even if the resin molded member 3 is, for example, made of PA resin, it may not be possible to satisfy the adhesion work value to be described later.” Lastly, applicant also states ([0006]) “depending on the affinity of a resin constituting the resin molded member and a resin constituting the resin coating, sufficient waterproof performance may not be obtained. This affinity possibly changes depending on grades of the resins, the molecular weights of the resins, ratios of additives contained in the resins or the like.” These paragraphs combined with the fact that applicant does not disclose the materials and process(es) with the sufficient specificity (needed by applicant’s own admission), leads the examiner to conclude that applicant disavows the sufficiency of the instant disclosure to yield the claimed invention -- i.e., “a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2 or more”.
2) Applicant fails to disclose the materials and process(es) with sufficient specificity (needed by applicant’s own admission) to yield the claimed invention -- i.e., “a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2 or more”. Applicant provides “examples” (e.g., [0070]-[0071], [0073], and Table 3 / [0075]); however, these examples are silent with regards to specific parameters and attributes that, per applicant’s own admission, are needed to yield the claimed invention. E.g., what is the exact type/formulation of resin? “PE resin” and “PU resin” are effectively unbounded in their exact chemical formula. What about the number of branched chains of the resin? The resin molecular weight? The type of additive in the resin? The content of the additive?
Lastly, claim 1 defines the invention by a result rather than by structure. Claim 1 therefore reads on the entire genus of resin-coating / resin-molded-member pairings across all polymer families, grades, molecular weights, branched-chain figurations, and additive packages that satisfy the stated adhesion-work threshold (and distortion difference) of claim 1. The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus. “[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention”. See MPEP 2163 II (a) ii. A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. Further, “for inventions characterized by factors not reasonably predictable which are known to one of ordinary skill in the art, more evidence is required to show possession”. See above regarding applicant’s own admission of unpredictability as well as the lack of sufficiently specific examples.
Claims 1-7 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.
Specifically, the specification does not enable a person skilled in the art to make the invention commensurate with the scope of the claims -- i.e., to obtain a wire assembly having a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2 or more across the claimed genus -- without undue experimentation.
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 (note the Wands factors below are assessed based on the disclosure) is "reasonable" or is "undue." Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024). The primary factors applied by the examiner are:
Breadth of the claims. The resins of the claims to yield the claimed invention encompass all qualifying pairings of the open polymer genera of [0034] and [0041]. Note that this includes ([0006], [0035], [0042]) nearly unbounded versions of “polyurethane resin”, “polyester resin”, various fillers and additives in differing amounts, the number of branched chains of the resin material, and a molecular weight. Claim 1 reads on the entire genus of resin-coating / resin-molded-member pairings across all polymer families, grades, molecular weights, branched-chain figurations, and additive packages that satisfy the stated adhesion-work threshold (and distortion difference) of claim 1.
The nature of the invention. The invention is merely recited as a result (i.e., a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2”).
The level of predictability in the art. Applicant explicitly sets forth that there is a very low level of predictability. Applicant states ([0035]) that “even if the same resin material for constituting the resin coating 23 is used, adhesiveness between the resin coating 23 and the resin molded member 3 changes depending on the number of branched chains of the resin material, a molecular weight, the type of additive contained in the resin coating 23 and a content of the additive. Therefore, even if the resin coating 23 is, for example, made of PU resin, it may not be possible to satisfy an adhesion work value to be described later.” Still further, for the molded member, applicant states that ([0042]) “even if the same resin material for constituting the resin molded member 3 is used, adhesiveness between the resin coating 23 and the resin molded member 3 changes depending on the number of branched chains of the resin material, a molecular weight, the type of an additive contained in the resin molded member 3 and a content of the additive. Therefore even if the resin molded member 3 is, for example, made of PA resin, it may not be possible to satisfy the adhesion work value to be described later.” Lastly, applicant also states ([0006]) “depending on the affinity of a resin constituting the resin molded member and a resin constituting the resin coating, sufficient waterproof performance may not be obtained. This affinity possibly changes depending on grades of the resins, the molecular weights of the resins, ratios of additives contained in the resins or the like.”
The amount or direction provided by the inventor. The amount of direction provided by the inventor is exceptionally open-ended as it relates to the resin compositions and parameters that might possibly yield the result. The examiner holds that this has been addressed exhaustively above.
The existence of working examples. As set forth above applicant provides “examples” (e.g., [0070]-[0071], [0073], and Table 3 / [0075]); however, these examples are silent with regards to specific parameters and attributes that, per applicant’s own admission, are needed to yield the claimed invention. E.g., what is the exact type/formulation of resin? “PE resin” and “PU resin” are effectively unbounded in their exact chemical formula. What about the number of branched chains of the resin? The resin molecular weight? The type of additive in the resin? The content of the additive? Also see [0006], [0034]-[0035], and [0041]-[0042] of the instant specification. Any “examples” are so vague as to preclude one of ordinary skill in the art from replicating them without undue experimentation.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure. The instant disclosure reduces the practice of the claimed invention to essentially undirected trial-and-error and the quantity of experimentation required is undue. The specification provides guidance on how to measure the adhesion work (e.g., [0044]-[0058]); however, this measurement is a post-fabrication characterization step. It only provides for measurement to determine if the result was achieved, not how to achieve the result. Most of the disclosed resins have either unbounded, thousands, or many species. The most specific are for the “Resin Molded Member” which are PA6T ([0071]), PA612 ([0071]), “polybutylene terephthalate” ([0041]), and “polyphenylene sulfide” ([0041]). The disclosure of potential materials for the resin coating are near-infinite. They are “50 mass% or more” of “a polyurethane (PU) resin, a polyester (PE) resin or the like.” Each of the PU resin and PE resin are a nearly unbounded genus with thousands of species in each. Still further, the mass% can be 50-100. Still further, any of these thousands of species may “contain an additive such as a flame retardant or filler or the like”. The quantity of experimentation is already undue based on what is set forth above in this paragraph. Yet, still further, applicant explicitly discloses that the results are highly unpredictable ([0006], [0035], [0042]) and may depend on “the number of branched chains of the resin material, a molecular weight, the type of an additive contained in the resin coating 23 and a content of the additive.”
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Herbert Keith Roberts whose telephone number is (571)270-0428. The examiner can normally be reached 10a - 6p MT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HERBERT K ROBERTS/Primary Examiner, Art Unit 2855
Prosecution Insights