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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
`
`AOYA28PUSO1
`
`6940
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`MILLER, BETHANY MACKENZIE
`
`1787
`
`11/08/2021
`
`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)
`
`

`

`Application No.
`Applicant(s)
`16/970,372
`KUSUNOK etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`BETHANY M MILLER
`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 19 October 2021.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J 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.
`
`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.
`(1 Claim(s)__is/are objectedto.
`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)0) The drawing(s) filedon__ is/are: a)(J 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`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 20211028a
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 2
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`Notice of Pre-AlA or AIA Status
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`1.
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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.
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections 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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`3.
`
`The factual inquiries for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contentsof the prior art.
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`2. Ascertaining the differences between the prior art and the claims at
`
`issue.
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`3. Resolving the level of ordinary skill in the pertinentart.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`4.
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`Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Imao et al. (US 4,704,328) in view of Tani et al. (JP 2001-240953A).
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 3
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`5.
`
`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) sprayed coating. The substrate can be formed from resin (Column 3,
`
`lines 37-61). The intermediate undercoat composition comprises inorganic filler
`
`having complex irregularities in the surface thereof and an inorganic binder
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`(Column 2, lines 10-47). As used in the instant application, the terminology
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`“amorphous” means non-spherical. Given the irregularities in the surface of the
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`particles, the inorganic particles would be amorphous as used in the instant
`
`application. The content of the inorganic filler in the undercoat layer is preferably
`
`from 15 to 80 vol% (Column 3,lines 25-36). The thickness of the undercoat layer
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`is preferably at least 10 microns (Column 4, lines 8-12).
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`6.
`
`Imao does not explicitly teach the size of the inorganic particles or a specific
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`narrower rangefor the thickness of the intermediate layer.
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`7.
`
`Tani (Paragraph 9) teachesa resin base coated with an intermediate layer
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`composed of a resin and ceramic particles that is further coated with a ceramic
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`top coat. The intermediate layer provides good adhesion between the base and
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`the top coat and includesparticles having a size of from 5 to 50 microns
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`(Paragraph 16). The intermediate layer has a thickness of from 0.02 to 0.3 mm (20
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 4
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`to 300 microns) in order to ensure the continuity of the layer is maintained while
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`maintaining the shear strength of the layer (Paragraph 20).
`
`8.
`
`It would have been obvious to one of ordinaryskill in the art before the
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`effective filing date of the claimed invention to use the particle size of Tani for the
`
`particles of Imao, in order to have a specific particles size that has been shown to
`
`be effective for such an intermediate layer by Tani. It further would have been
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`obvious to use the thickness values of Tani, for the intermediate layer thickness of
`
`lmao, in order to ensure the continuity of the layer is maintained while
`
`maintaining the shear strength of the layer.
`
`9.
`
`While Imao in view of Tani does not explicitly teach limiting the size of the
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`particles and the thickness of the intermediate layer to meet the relationship set
`
`forth in claim 1, given the above ranges, the teachings of Imao in view of Tani
`
`would encompassparticle sizes and thickness values that would meet the
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`relationship.
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`10.
`
`Regarding Claims 2 and 3, lmao (Paragraph bridging Columns 4 and 5)
`
`teaches that the binder can be the same material as the substrate. The substrate
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`can be formed from an epoxyresin (Column 3, lines 47-53). Imao uses a bisphenol
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`A-type epoxy resin in the Examples. This is a biphenyl type epoxyresin.
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 5
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`11.
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`Regarding Claims 4 and 5, Imao (Column 2, lines 27-47) teaches that the
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`inorganic filler can be one or more elements,alloys or oxides of aluminum and
`
`other metals.
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`Response to Arguments
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`12.
`
` Inlight of Applicants amendments, the 35 USC 112(b) rejections of record
`
`are withdrawn.
`
`13. Applicant's argumentsfiled 10/19/2021 have been fully considered but
`
`they are not persuasive.
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`14.
`
`Applicant argues that the particles of Imao and Tani are not disclosed as
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`non-spherical.
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`15.
`
`However, Imao doesdisclose the inorganic filler may be branched or
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`columnar (i.e. non-spherical) (Column 2, lines 40-42). Regarding Tani, note that
`
`while Tani does not disclose all the features of the present claimed invention, Tani
`
`is used as teaching reference, and therefore,it is not necessary for this secondary
`
`reference to contain all the features of the presently claimed invention, /n re
`
`Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413,
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`208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept,
`
`namely the particle size and layer thickness values, and in combination with the
`
`primary reference, discloses the presently claimed invention.
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`

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`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 6
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`16.
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`Applicant argues that the modification in view of Tani would render the
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`particles of Imao unsatisfactory for its purpose. Applicant argues that the large
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`particles of Tani would not be able to yield the specific surface area required by
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`Imao.
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`17.
`
`However,it is noted that “the arguments of counsel cannot take the place
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`of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718
`
`(CCPA 1965).
`
`It is the examiner’s position that the arguments provided by the
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`applicant regarding the density of dendritic nickel must be supported by a
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`declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring
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`evidencein a declaration or affidavit form is to obtain the assurances that any
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`statements or representations made are correct, as provided by 35 U.S.C. 24 and
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`18 U.S.C. 1001”. There is no evidence or source provided for the density of
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`dendritic nickel used in the applicant’s arguments. Further, the inorganic particles
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`of Imao are not limited to dendritic nickel (Col 2, lines 27-39).
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`Conclusion
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`18.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of
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`time policy as set forth in 37 CFR 1.136(a).
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`19. Ashortened statutory period for reply to this final action is set to expire
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`
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`THREE MONTHS from the mailing date of this action. In the eventafirst reply is
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`

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`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 7
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`filed within TWO MONTHS of the mailing date of this final action and the advisory
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`action is not mailed until after the end of the THREE-MONTH shortened statutory
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`period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
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`calculated from the mailing date of the advisory action.
`
`In no event, however, will
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`the statutory period for reply expire later than SIX MONTHS from the mailing date
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`of this final action.
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`20.
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`Any inquiry concerning this communication or earlier communications from
`
`the examiner should be directed to BETHANY M MILLER whose telephone number
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`is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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`21.
`
`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
`
`22.
`
`If attempts to reach the examiner by telephone are unsuccessful, the
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`examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax
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`phone number for the organization wherethis application or proceeding is
`
`assigned is 571-273-8300.
`
`

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`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 8
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`23.
`
`Information regarding the status of published or unpublished applications
`
`maybe 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.
`
`/BETHANY M MILLER/
`Examiner, Art Unit 1787
`
`/CALLIE E SHOSHO/
`Supervisory Patent Examiner, Art Unit 1787
`
`