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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/970,372
`
`08/16/2020
`
`Tomokazu KUSUNOKI
`
`AOYA.28PUSO01
`
`6940
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`ROBINSON,ELIZABETH A
`
`1787
`
`07/20/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-5 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-5 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11){¥}) The drawing(s)filed on 16 August 2020 is/are: a){¥] accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.2 Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.4 Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 8-16-2020, 12-3-2020, 4-28-2021, 6-18-2021.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210715
`
`Application No.
`Applicant(s)
`16/970,372
`KUSUNOK| etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`Elizabeth A Robinson
`1787
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 16 August 2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`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
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103)is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
`
`Claims 1-5 are currently pending.
`
`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-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`second paragraph, as being indefinite for failing to particularly point out and
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`distinctly claim the subject matter which the inventor or a joint inventor (or for
`
`applications subject to pre-AlA 35 U.S.C. 112, the applicant), regards as the
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`invention.
`
`Regarding claim 1, it is unclear what is encompassedbythe terminology “central
`
`particle diameter” of the inorganic filler. While the instant Specification (Paragraph 13)
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`

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`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 3
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`discusses this as the volume average particle diameter at which the cumulative volume
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`calculated from the small diameter side is 50%in the particle diameter distribution
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`(volume basis) measured by laser diffraction method, there is no discussion of whatis
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`considered to be the small diameter side or a discussion of what calculating from this
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`side entails. It is unclearif this is meant to be a smallest average dimension of the
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`particles or a dimension on the surface perpendicular to the smallest dimension when
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`observing from the smallest diameter side. In order to further prosecution, the Examiner
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`is interpreting the limitation to be metif the particles have an average diameter as
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`claimed.
`
`Further regarding claim 1, it is unclearif the inorganic filler content is meant to be
`
`a ratio or percent, since both are claimed in describing the content. In order to further
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`prosecution, the Examiner is interpreting the value as a volume percentage.
`
`Claims 2-5 all depend from clam 1 and thus, are also rendered indefinite.
`
`Regarding claim 3, this claim sets forth that the organic resin binder in the
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`intermediate layer comprises specific types of epoxy resins, for example, “a phenol
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`novolac type epoxy resin”. The addition of the word “type” extends the scope of the
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`claims so as to render them indefinite since it is unclear what “type” is intended to
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`convey. The addition of the word “type” to the otherwise definite expression renders the
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`definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ
`
`118 (Bd. App. 1955).
`
`Regarding claim 5, it is unclearif the aluminum materials of claim 5 are meant of
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`be elemental aluminum or metals or given the dependency from claim 4, encompass
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`

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`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 4
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`oxides of these metals. It is unclearif this is meant to require the filler to include both an
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`aluminum oxide and an aluminum metal.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections setforth 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.
`
`Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Imao etal. (US 4,704,328) in view of Tani et al. (JP 2001-240953A). A copy of the
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`abstract and the original Japanese document of Tani was provided by Applicants as
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`part of the August 16, 2020 IDS. A machine translation of this documentis provided with
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`this Office Action.
`
`Regarding claim 1, Imao (Abstract) teaches a composite molded article
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`comprising, in order, a substrate, an intermediate layer and a ceramic flame (thermal)
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`sprayed coating. The substrate can be formed from resin (Column 3, lines 37-61). The
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`intermediate undercoat composition comprises inorganic filler having complex
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`irregularities in the surface thereof and an organic binder (Column 2, lines 10-47). As
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`used in the instant application, the terminology “amorphous” means non-spherical.
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`Given the irregularities in the surface of the particles, the inorganic particles would be
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`amorphous as usedin the instant application. The content of the inorganic filler in the
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`

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`Application/Control Number: 16/970,372
`Art Unit: 1787
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`Page 5
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`undercoatlayer is preferably from 15 to 80 vol% (Column 3, lines 25-36). The thickness
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`of the undercoatlayer is preferably at least 10 microns (Column 4, lines 8-12).
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`Imao does notexplicitly teach the size of the inorganic particles or a specific
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`narrower range for the thickness of the intermediate layer.
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`Tani (Paragraph 9) teaches a resin base coated with an intermediate layer
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`composedof a resin and ceramic particles that is further coated with a ceramic top coat.
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`The intermediate layer provides good adhesion between the base and the top coat and
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`includes particles having a size of from 5 to 50 microns (Paragraph 16). The
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`intermediate layer has a thickness of from 0.02 to 0.3 mm (20 to 300 microns) in order
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`to ensure the continuity of the layer is maintained while maintaining the shear strength
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`of the layer (Paragraph 20).
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`It would have been obvious to one of ordinary skill in the art before the effective
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`filing date of the claimed invention to use the particle size of Tani for the particles of
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`lmao, in order to have a specific particle size that has been shownto beeffective for
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`such an intermediate layer by Tani. It further would have been obvious to use the
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`thickness values of Tani, for the intermediate layer thickness of Imao, in order to ensure
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`the continuity of the layer is maintained while maintaining the shear strength of the
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`layer.
`
`While Imaoin view of Tani does not explicitly teach limiting the size of the
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`particles and the thicknessof the intermediate layer to meet the relationship setforth in
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`claim 1, given the above ranges, the teachings of Imaoin view of Tani would
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`encompassparticle sizes and thickness values that would meetthe relationship.
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`

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`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 6
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`Regarding claims 2 and 3, Imao (Paragraph bridging Columns 4 and 5) teaches
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`that the binder can be the same material as the substrate. The substrate can be formed
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`from an epoxy resin (Column 3, lines 47-53). Imao uses a bisphenol A-type epoxy resin
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`in the Examples. This is a biphenyl type epoxyresin.
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`Regarding claims 4 and 5, Imao (Column 2, lines 27-47) teachesthat the
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`inorganic filler can be one or more of elements, alloys or oxides of aluminum and other
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`metals.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Elizabeth A Robinson whosetelephone number is
`
`(571)272-7129. The examiner can normally be reached on M-F 8:30 AM-5:00 PM.
`
`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:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Callie E Shosho can be reached on 571-272-1123. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`

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`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 7
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`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on accessto the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like assistance from a USPTO Customer Service Representative or access
`
`to the automated information system, call 800-786-9199 (IN USA OR CANADA)or 571-
`
`272-1000.
`
`/ELIZABETH A ROBINSON/
`Primary Examiner, Art Unit 1787
`
`July 15, 2021
`
`