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 1-16 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.
Examiner notes Applicant frequently uses the language “at least of” coupled with the conjunction “and.” From context and in view of the instantly specification, it would appear this is an attempt to refer to alternatives that may be used together, but that does not require one from each group. Note requiring metal in Claims 9 and 15, which are dependent on Claim 8 and 14, respectively, which claim “at least one of a resin and a metal,” strongly suggests both are not required when using this claiming method. However, such language has sometimes been interpreted to require each element of the group and thus “or” has been considered clearer than “and” when referring to alternatives. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 886 (2004) (finding the term “and” connotes a conjunctive list that applies to each item of the list following “at least one of,” thus requiring “at least one value from each category”); see also Ex parte Jung, 2016-008290 (March 22, 2017) (reinforcing SuperGuide and indicating that “at least one of A and B” is reasonably interpreted as “at least one of A and at least one of B,” and to properly indicate A and B as alternatives, the language “at least one of A or B” is appropriate). Examiner asks Applicant amended “and” to “or” to make it clear one from each category is not required, or at the very least, clarify this on the record in the next response. Examiner notes Claims 1, 2, 8, and 14 use this language with Claims 1 and 2 using it multiple times.
In Claim 2, the indefiniteness of this terminology is evident. The language “the joining surface of at least one of the base materials and the solid joining agent is raised to the melting point or higher” makes it unclear if the solid joining agent AND a base material each must be melted or if the solid joining material is part of the alternative as above. Examiner notes “the joining surface” and “the base materials” do not have antecedent basis and this contributes to the indefiniteness. Examiner submits since only one “joining surface” is referenced, and using the same interpretation above that “at least one of” paired with “and” is an alternative-type phrasing in this claim set, Examiner has interpreted only one of the three materials need be melted in Claim 2. However, Examiner urges Applicant to use proper antecedent basis and define their alternatives more clearly to avoid confusion as to claim scope.
Claim 10 is unclear. The primer layer is described as “a solid joining agent.” The term “solid joining agent” is previously used as the bonding layer but here is not given antecedent basis. It is unclear if a primer is applied separately from the solid joining agent, if the solid joining agent is applied as a primer, or if a separate layer of the solid joining agent is applied as a primer before the bonding layer of the solid joining agent. Since the instant specification also does not make this clear, Examiner interprets the claim literally that a primer is applied and must be made of a solid joining agent, but need not be made of “THE solid joining agent.” As such, any solid primer satisfies Claim 10.
Claim 16 states the primer is on the joining surface of the metal, but Claim 14 never requires a metal layer and only uses metal as one possibility of base material B. Thus, it is unclear if Claim 16 requires base material B to be metal. Examiner assumes Claim 16 should be dependent on Claim 15 requiring metal.
The remaining claim are rejected as being dependent on an indefinite claim.
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/573,782 in view of Takahashi et al. (WO2018/124215, wherein US2021/0129488 is used as an English translation and all citations are directed thereto) and Ozasa et al. (US 2003/0107145) for Claims 3, 4, 5, and 11. US 18/573,782 claims a metal and resin base material bonded with a phenoxy solid joining agent such as a film exactly the same as instantly claimed in a method using heat and pressure to join the layers. For the reasons provided below in the rejections of Claims 1 and 2, Takahashi et al. teaches similar layers joined with similar material using heat and pressure to melt the joining layer and the resin layer. For Claims 10 and 16, Takahashi et al. further teaches a primer may be used on the metal with phenoxy under similar conditions, and thus these processes are not considered inventive. Examiner submits such processes are obvious when using heat and pressure to melt-join such layers as in 18/573,782 to carry out the required bonding.
For Claims 3-5 and 11, it is known molds/presses in thermocompression bonding may utilize many suitable heating methods to generate the heat in the mold/press, including radiant heating methods such as far-infrared radiation (See, for example, Ozasa et al., page 4, paragraph [0053] and page 12, paragraphs [0253]-[0255]). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to provide the required heating during thermocompression bonding such as is used in heat pressing methods to heat materials as are instantly claimed. Such methods are known to be suitable to provide heating in similar bonding methods and thus would have predictably suitably provided the required heat in US 18/573,782.
This is a provisional nonstatutory double patenting rejection.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-7 of copending Application No. 18/578,636 in view of Takahashi et al. (WO2018/124215, wherein US2021/0129488 is used as an English translation and all citations are directed thereto) and Ozasa et al. (US 2003/0107145) for Claims 3, 4, 5, and 11. US 18/573,782 claims a metal and resin base material bonded with a phenoxy solid joining agent such as a film exactly the same as instantly claimed in a method using heat to melt the film, such as in a hot press, to join the layers. Examiner notes even after being solidified on a surface as in Claim 1 of US18/578,636, the film can still be superposed between the base material layers by positioning the other base layer. For the reasons provided below in the rejections of Claims 1 and 2, Takahashi et al. teaches similar layers joined with similar material using heat and pressure to melt the joining layer and the resin layer. For Claims 10 and 16, Takahashi et al. further teaches a primer may be used on the metal with phenoxy under similar conditions, and thus these processes are not considered inventive. Examiner submits such processes are obvious when using heat and pressure to melt-join such layers as in US18/578,636 to carry out the required bonding.
For Claims 3-5 and 11, it is known molds/presses in thermocompression bonding may utilize many suitable heating methods to generate the heat in the mold/press, including radiant heating methods such as far-infrared radiation (See, for example, Ozasa et al., page 4, paragraph [0053] and page12, paragraphs [0253]-[0255]). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to provide the required heating during thermocompression bonding such as is used in heat-press melting methods to heat materials as are instantly claimed. Such methods are known to be suitable to provide heating in similar bonding methods and thus would have predictably suitably provided the required heat in US18/578,636.
This is a provisional nonstatutory double patenting rejection.
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.
Claim(s) 1, 2, 6-10, 12-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takahashi et al. (WO2018/124215, wherein US2021/0129488 is used as an English translation and all citations are directed thereto).
Regarding Claims 1, 2, 6-9, and 12-15, Takahashi et al. teaches a method for producing a joined body obtained by joining a base material A [102], such as a thermoplastic resin contained in an FRP layer (See page 8, paragraphs [0082]-[0083] and Fig. 1, teach the base material A material a resin matrix that may include thermoplastic resins), a solid joining agent [103] containing an amorphous thermoplastic resin, which is a phenoxy resin, as a main component, and the amorphous thermoplastic resin that does not contain an epoxy group, and has a heat of fusion of 15 J/g or less (See page 5, paragraphs [0061]-[0065], teaches the bonding resin layer [103], i.e. the solid joining agent, is a phenoxy resin that is described as an amorphous thermoplastic; Examiner submits amorphous thermoplastics by their very nature of being “amorphous” have heats of fusion below 15 J/g, since resins above this amount are generally considered semi-crystalline, and most amorphous phenoxy thermoplastics such as are described would have been expected to have a heat of fusion close to 0), and a base material B [101], which is metal (See page 4, paragraph [0057]).
For Claim 1, Takahashi et al. teaches a step of superposing the base material A [102]/[111], the solid joining agent [103]/[110A], and the base material B [101] in this order; and a joining step (1) of joining the base material A and the base material B by pressurizing the base material A and the base material B via the solid joining agent in a state in which a temperature of the solid joining agent is raised to the melting point thereof or higher (See Fig. 6(a)-(b) and page 9, paragraph [0095], wherein the phenoxy bonding layer [110A] is superposed between the other layers as a film and bonded; also see page 10, paragraph [103]-[0105], wherein the bonding occurs in a thermocompression process with heat and pressure wherein the heat is applied to Tg+150 C for amorphous, non-crystalline polymers, which would put them in a fully melted state, i.e. above their melting point; note amorphous polymers do not strictly have a defined melting point because they have no crystal phase to melt but at 150 C over its Tg, it would have been fully liquefied and melted, i.e. understood as being above its melting point).
For Claim 2, Examiner notes the claims require melting of the solid joining agent to join to at least one of the base materials A/B, and also requires joining base material A to base material B by pressing above the Tg of one of the base materials A or B. Examiner notes any process where the joining agent melts on the surface of one layer, such as the metal layer in Takahashi et al., and then is joined during pressing to the other layer with a surface over its Tg, i.e. the FRP layer in Takahashi et al., will satisfy the claim language. Nothing in the claim language prevents both the melting in joining step (2-1) from occurring on the metal surface simultaneous with the joining of base material A and B as the FRP joining surface is softened during pressing in step (2-2). As above, Takahashi et al. clearly teaches melting the joining layer during pressing while heating to Tg+150 C, such as to 270 C, and pressurizing in the joining process (See page 10, paragraph [0104]) for up to 20 minutes (See page 10, paragraph [0106]). The matrix [104] forming the joining surface of the FRP layer [102] may be the same matrix as used for the bonding layer [103], i.e. the solid joining agent (See page 8, paragraph [0084]). Thus, since heating occurs for up to 20 minutes at 150 C over the Tg, this makes it inevitable the FRP layer (heated 150 C over Tg for 20 minutes) will be well above Tg in all locations, including on the joining surface, during the thermocompression process. Examiner notes melting of said matrix in the FRP will also occur under these conditions for the same reasons as above for the solid joining agent.
Regarding Claims 10 and 16, Takahashi et al. teach primers such as silane coupling agents, which are well-known to dry on the surface as a solid (See page 5, paragraph [0059]). As such, such silane coupling agent primer, which facilitates bonding is a solid joining agent as claimed.
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) 3-5 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. as applied to Claim 1 and 2, and further in view of Ozasa et al. (US 2003/0197145).
Regarding Claims 3-5 and 11, Takahashi et al. teaches the methods of Claims 1 and 2 above. Takahashi et al. teaches heating in thermocompression bonding but fails to teach the source of the heat. However, any known sources of heat in similar processes would have predictably been suitable to provide the heat in Takahashi et al. It is known molds/presses in thermocompression bonding may utilize many suitable heating methods to generate the heat in the mold/press, including radiant heating methods such as far-infrared radiation (See, for example, Ozasa et al., page 4, paragraph [0053] and page12, paragraphs [0253]-[0255]). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to provide the required heating during the thermocompression bonding in Takahashi et al. via far-infrared radiation. Such methods are known to be suitable to provide heating in thermocompression bonding methods and thus would have predictably suitably provided the required heat in Takahashi et al. Examiner submits far-infrared radiation is a form of radiant heat, which when used to provide the heat in Takahashi et al., will provide all heating as recited.
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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/SCOTT W DODDS/Primary Examiner, Art Unit 1746