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 .
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.
Application Status
This is a first action on the merits. This application is a continuation (CON) of application 17/274,884, now U.S. Pat. 12,116,509. Claims 1-6 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12 September 2024 and 05 November 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings received on 12 September 2024 are acceptable.
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 Rejections - 35 USC § 102/103
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over WO 2017/037525 A1. Takei (U.S. Pub. 2019/0001634) was relied upon as the translation of WO ‘525.
Regarding claim 1, Takei discloses a hot melt adhesive resin film which has an “excellent” adhesive force to various planar adherends such as metal. See abstract and p. 1, [0002]. The adhesive composition used to form film includes an acid-modified polyolefin resin (reading on Component A modified polyolefin as claimed), a phenol novolak epoxy resin which is solid at ambient temperature (reading on Component B phenol resin as claimed), see p. 5, [0087]. An additional resin can be included, see p. 6, [0105]. Using two phenol novolak epoxy resins allows one to be considered the crosslinking agent Component C and one to be considered the solid phenol resin Component B.
Takei teaches that the adhesive has “excellent” adhesive force, and tests the durability of the adhesive bond when laminated to aluminum foil, see p. 1, [0002] and p. 10, [0171] and [0177] and [0182]. Excellent results mean that peeling at an adherend surface did not occur until an aluminum foil was ruptured, see [p. 10, [0174], 0178], and [0185] as well as the Table 1 results on p. 11. Testing was performed with a pull rate of 300 mm/min in a 90° direction (see p. 10, [0172]). While Takei does not provide an objective value of the adhesive force in units of N/15 mm or equivalent, it is clear that a sufficiently high adhesive force is present since the aluminum fails before the adhesive bond fails.
An aluminum plate may be used as the adherend, see p. 3, [0049].
The limitations “in a laminate which is obtained by laminating an aluminum plate having a thickness of 100 μm on a film obtained by applying said hot-melt adhesive composition to a substrate layer having a thickness of 75 μm in a dry film thickness of 20 μm, and hot pressing them at a temperature of 170°C under a pressure of 0.4 MPa for a pressing time of 10 minutes, when said aluminum plate and film are fixed respectively, and said film is peeled at a tensile speed of 300 mm/min under the condition of a peeling angle of 180°” are limitations referring to the method of testing the adhesive , and do not determine the patentability of the product. The method of testing the product is not germane to the issue of patentability of the product itself. Cf. MPEP § 2113 in regards to products made by different processes in which the product is the same or obvious over the product of the prior art, and MPEP § 2111.02(II) regarding preamble statements reciting the purpose or intended use of a product. Using any accurate method to determine the adhesive strength of the adhesive composition can demonstrate the claimed property, unless the claimed process produces unexpected results.
Thus, the Examiner has considered the adhesives of Takei to either anticipate the claims or render them obvious.
Regarding claim 2, Takei uses a maleic anhydride-modified polypropylene as component (A), see p. 9, [0161].
Regarding claim 3, Takei teaches that the phenol novolak epoxy resin is solid at ambient temperature and can be melted at the melting temperature of the (A) component, see p. 5-6, [0090], thus the (B) component is thermally meltable as claimed.
Regarding claim 4, the (B) component of Takei is a phenol novolak epoxy resin. Commercially available products are disclosed at p. 6, [0103]. Using a blend of two or more such epoxy resins allows one of them to be considered as the (C) component of the claims, in which case the (C) component is an epoxy resin as claimed.
Regarding claim 5, Takei teaches applying the adhesive composition to a substrate layer, see p. 2, [0022].
Regarding claim 6, Takei teaches that suitable substrate layers include polyester resins including polyethylene terephthalate (PET) or polyolefin polymers or cyclic olefin polymers or methylpentene polymers, see p. 2, [0023], which are among the specified substrate resins.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
WO 2017/025787 A1 is similar to WO 2017/037525 A1.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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