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 .
Election/Restrictions
Applicant's election with traverse of Claim 1-12 in the reply filed on 4/2/2026 is acknowledged. The traversal is on the ground(s) that the adhesive joint inherently incorporates the process. This is not found persuasive because the adhesive joint is merely two substrates with a central bonding layer. Claims 13-20 DO NOT require plasma treatment at all because they are merely a bonded product. The patentability of a product does not depend on its method of production. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The determination of patentability in product-by-process claims is based on the product itself even though product-by-process claims are limited by and defined by the process. Id. Therefore, “[i]f the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Id.
The substrates could be anything including materials mostly unaffected by plasma treatment such as gold or glass and the bonding layers could also be anything such as a thermoplastic monomer polymerized via plasma. No conditions of the plasma are recited, nor the type of plasma used. The plasma treatment could occur for 1 micro second on gold, which would leave it unaffected (gold does not oxidize, and self-heals oxide formation), thus making it identical to untreated gold. Glass could be treated with solvent, UV and ozone, which would have a similar effect as certain air generated plasma, i.e. oxidization and cleaning. Further, an old oxidized metal layer plasma treated to remove oxide will look the same as a newer metal not treated. This is the point, plasma may oxidize or clean material in ways aging or not aging (i.e. newer or older substrates) could provide a similar structure. Chemical etching could clean similarly. Ozone could oxidize similarly to plasma on certain substrates under certain conditions. Or treatment of plasma could be so brief the effect is negligible.
Applicant’s rebuttal refers to a very specific plasma process under precise conditions on specific substrates, i.e. thermoplastic and metal, and with specific pressure sensitive adhesive to achieve a specific effect. These cannot possibly extend to all materials on earth exposed to all plasma conditions for any amount of time. No substrate or adhesive is claimed, and the type of plasma, the conditions used (i.e. medium, power, etc.), the time of treatment are not claimed in the process. Applicant is arguing evidence for a very specific process to impart artifacts into a very specific product, when the product, as argued above, is merely two layers of any material in the universe bonded with an inner layer that is also undefined. A paraffin wax exposed to plasma may be cured to polyethylene. The resulting polyethylene molecular backbone is chemically indistinguishable from conventional polyethylene, and any surface-level cross-linking is statistically insignificant compared to the bulk properties of the bonding layer. Such a polyethylene could be used to bond plasma treated gold in and form a product as claimed similar to any gold-polyethylene-gold laminate not plasma treated. Examiner submits the product claims are thus extremely broad and much broader than the recited method, which definitively recites plasma treatment on three substrates.
Applicant has clearly not demonstrated all substrate materials in the universe that may be used as the outer substrates with an unspecified bonding layer will always harbor unique artifacts of the recited plasma treatment regardless of conditions or process alternatives. Further, even further curing of the adhesive strip need not occur since a thermoplastic could be further cured via EB treatment, for example, or merely pre-cured and melt bonded to create a similar product. Thus, for numerous reasons, there is insufficient evidence the process is inherently inputted into the structure product, and thus the product is a distinct invention of two layers bonded via an intermediate layer that does not require all the specific of the process.
The requirement is still deemed proper and is therefore made FINAL.
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, 4, 5, and 7-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holbuka et al. (US 2010/0151236).
Regarding Claims 1, 9, and 10, Holbuka et al. teaches a method to produce an adhesive joint (See Abstract), the method comprising:
plasma treating a first substrate [20] at a first power level to form a plasma-treated first substrate surface; plasma treating a second substrate [22] at a second power level to form a plasma-treated second substrate surface; plasma treating a top surface and a bottom surface of an exposed adhesive strip [24] at a third power level to form a plasma-treated exposed adhesive strip (See page 3, paragraphs [0040] and [0046], and pages 3-4 paragraphs [0051]-[0057], wherein both substrates [20],[22] and both sides of an adhesive on a carrier, i.e. an adhesive strip, are treated with cold plasma via an APAP device, thus oxidizing the surface to increase surface energy and chemical bond density by increasing oxygen composition);
joining the plasma-treated first substrate surface and the plasma-treated second substrate surface together with the plasma-treated exposed adhesive strip (See page 3, paragraph [0051] and Fig. 3 showing joining first substrate [20] and second substrate [22] via adhesive [24]); and curing the plasma-treated exposed adhesive strip to produce the adhesive joint (See page 3, paragraph [0043], wherein the adhesive “cross-links” with the bonding substrate in a process reasonably described as “curing;” further note the adhesive may comprise well-known curable adhesives that require curing to implement the bond, such as epoxies, moisture cure urethanes and silicones, cyanic-acrylics, etc. that are understood to require curing to set the bond, see page 3, paragraph [0042]).
Regarding Claims 2, 7, and 8, Holubka et al. teaches the substrates may be different, such as thermoplastics and/or metals (See page 3, paragraphs [0048] and page 8, paragraph [0089]).
Regarding Claims 4 and 5, Holubka et al. teaches the treatment is designed to increase surface functional groups on the substrates, such as by creating increased hydroxyl and carbonyl functional groups (See page 2, paragraphs [0026]-[0027], teaching the adhesive itself and the surfaces of the components to be bonded may be functionalized).
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holubka et al. as applied to Claim 1, and further in view of Hehemann et al., Plasma treatment of polymers for surface and adhesive improvement, Nuclear Instruments and Method in Physics Research B, pgs. 281-286 (2003) (hereinafter “Hehemann”) and Neuhaus-Steinmetz et al. (US 2014/0154425).
Regarding Claim 3, Holubka et al. teaches the method of Claim 1, as described above. Holubka et al. further teaches plasma treat both the adhesive and substrates to functionalize these layers for crosslinking, and achieve desired reactivity (See page 2, paragraphs [0026]-[0036]). Holubka et al. fails to teach different power levels on the substrates and the adhesive. However, it is known that functionalizing different surfaces for cross-linking requires different plasma conditions to achieve the same desired effect, including by changing plasma intensity, i.e. power levels, (See, for example, Hegemann, page 281, Abstract and Introduction), and it is explicitly known in similar process to apply different plasma conditions to a substrate and adhesive surface to be bonded (See, for example, Neuhaus-Steinmetz et al., pages 4-5, paragraph [0055], teaching applying type of plasma treatment to the adhesive surface and substrate surface to be bonded). Thus, it would have been obvious to a person having ordinary skill in the art at time of invention to adapt the plasma treatment conditions, including the power level, to the surface to be treated. Doing so would have predictably allowed the treatment to be adapted to the material to be treated to increase functionally for crosslinking. When using the same substrates to be bonded to an adhesive that requires more subtle treatment conditions, it would have been obvious to use than same power conditions on the substrates that are higher than the adhesive so as to maximize functionally on each surface.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holubka et al. as applied to Claim 1, and further in view of Van Tooren et al. (US 2017/0044337).
Regarding Claim 6, Holubka et al. teaches the method of Claim 1, as described above. As described above, Holubka et al. also teaches the adhesive may be epoxy, but fails to teach any specifics with said epoxy (See page 3, paragraph [0042]). However, curing agents are well-known to be utilized with epoxy adhesive, including with plasma functionalized surfaces (See, for example, Van Tooren et al., page 5, paragraph [0059] and page 7, paragraph [0087]). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize curing agent with the epoxy. Doing so is conventional in epoxy adhesives to facilitate curing and form a strong bond.
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holubka et al. as applied to Claim 1, and further in view of Kikuchi et al. (US 2015/0151514) and/or Hosoda et al. (US 2018/0154614).
Regarding Claim 11-12, Holubka et al. teaches the method of Claim 1, as described above. Holubka et al. is silent as to bonding conditions, but it would have been apparent pressure is standard in bonding and that the conditions of bonding are generally catered to the substrates and adhesives utilized and plasma treated materials are known to be known under pressure at high temperature (See, for example, Kikuchi et al., page 7, paragraph [0146], page 8, paragraph [0189], and page 10, paragraphs [0237]-[0240] and [0263], teaching bonding processes for plasma functionalized layers wherein epoxy is bonded to substrates at pressures of 5 MPa and a temperature of 150 C; and/or Hosoda et al., page 4, paragraph [0075] and page 14, Table, teaching pressing temperatures of bonding polymer and metal to a plasma functionalized layer as being 150-240 C). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to press at high temperatures of at least 150 C. Doing so would have predictably enabled curation of the pressing conditions to the material under condition known to be suitable for similar materials in similar plasma activated system. Higher temperature further would have facilitated crosslinking by applying more energy during bonding, thus improving bond strength.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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