UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/886,417
`
`02/01/2018
`
`Tomoki Shiozaki
`
`P180076US00
`
`4110
`
`WES TERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`S UITE 7500
`
`TYSONS, VA 22182
`
`V0~ JIMMY
`
`1723
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/ 14/2020
`
`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
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`following e—mail address(es):
`
`patentmai1@ whda.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`15/886,417
`Examiner
`JIMMY K vo
`
`Applicant(s)
`Shiozaki et al.
`Art Unit
`1723
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from 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, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 1/24/2020.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) D This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`
`4):] 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`8)
`Claim(s 1_—21Is/are rejected
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible 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 PPeredback@uspto.gov.
`
`Application Papers
`
`10)|:I The specification is objected to by the Examiner.
`
`is/are: a)[] accepted or b)l:] objected to by the Examiner.
`11)[:] The drawing(s) filed on
`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)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:] Some**
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`c)l:I None of the:
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`1C] Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3D Copies of the certified copies of the priority documents have been received in 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) [3 Notice of References Cited (PTO-892)
`
`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20200130
`
`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 2
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`DETAILED ACTION
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`Response to Amendment
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`In the amendment dated 1/24/2020, the following has occurred: Claim 1 has been amended;
`
`and new Claim 21 has been added.
`
`Claims 1-21 are pending. This communication is a Final Rejection in response to the
`
`"Amendment" and "Remarks" filed on 1/24/2020.
`
`The text of those sections of Title 35, U.S. Code not included in this action can be found in a
`
`prior Office action.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) IN GENERAL—The specification shall contain a written description of the invention, and
`of the manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to
`make and use the same, and shall set forth the best mode contemplated by the inventor orjoint
`inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the
`same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
`
`Claims 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as
`
`failing to comply with the written description requirement. The claim(s) contains subject matter which
`
`was not described in the specification in such a way as to reasonably convey to one skilled in the
`
`relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the
`
`application was filed, had possession of the claimed invention.
`
`Claim 1 recites ”the substrate material layer is free of adhesive”. Applicant recites paragraph
`
`[0039] to [0041] to talk about the substrate material layer.
`
`In paragraph 0041 specifically, the paragraph
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`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 3
`
`talks about the uses of polyimide in the substrate material layer. None of the paragraph describes
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`polyimide as an adhesive and neither does it not describe polyimide/polyamide as not an adhesive.
`
`Applicant appears to suggest that the paragraph inherently teaches polyimide/polyamide is not an
`
`adhesive and furthermore that the substrate material layer also does not contain an adhesive.
`
`|f
`
`polyamide/polyimide is not an adhesive/binder as inherently suggested by the instant specification,
`
`then prior art such as Yamafuku that teaches polyimide/polyamide in the intermediate layer 6 is not an
`
`adhesive with respect to the instant specification. For the reasons above, it is not clear what the
`
`applicant’s intention is and claims 1-21 are interpreted with respect to the interpretation as stated
`
`above.
`
`Other claims are rejected for depending on rejected Claim 1.
`
`Claim Rejections - 35 USC § 102
`
`Claims 1, 3, 4, 6, 10, 13, 15, 18, 19, and 21 are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Yamafuku et al., US 20150147624 (hereinafter, Yamafuku).
`
`As to Claim 1:
`
`Yamafuku discloses a secondary battery ([0004, 0021, 0059], Fig. 8-9) comprising:
`
`a positive electrode having a positive-electrode current collector and a positive-electrode active-
`
`material layer disposed on the positive-electrode current collector ([0061, 0077], Fig. 1-3);
`
`a negative electrode having a negative-electrode current collector and a negative-electrode
`
`active-material layer disposed on the negative-electrode current collector ([0060, 0077], Fig. 1-3);
`
`an electrolyte ([0137, 0138]); and
`
`an insulating tape covering a portion of the positive electrode (see "intermediate layer 6” and
`
`"insulating layer 7”, [0043], Fig. 1-6),
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`

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`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 4
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`wherein the positive-electrode current collector has an exposed section that the positive-
`
`electrode active-material layer is not disposed (Fig. 1-6 — see the exposed section of the current
`
`collector 33 on the right side of the figures),
`
`at least a portion of the exposed section is covered with the insulating tape (Fig. 1-6 — see the
`
`exposed section of the current collector 33 on the right side of the figures),
`
`the insulating tape has a substrate material layer ("intermediate layer 6”, Fig. 1-6, [0043]) and
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`an adhesive layer ( "insulating layer 7”, [0043], Fig. 1-6), and
`
`the adhesive layer includes an adhesive agent (see "styrene butadiene rubber (SBR)", [0067],
`
`Abstract) and an insulating inorganic material (see "oxide particles... Si02, Al203...", [0127-0130]),
`
`wherein the substrate layer is free of adhesive (see "nonaqueous binder include... polyamide,
`
`polyimide, polyamideimide...", [0070] — also see 112 rejection above).
`
`As to Claim 3:
`
`Yamafuku discloses the insulating inorganic material includes a metal compound in the form of
`
`particles or fibers (see "oxide particles... Si02, Al203...", [0127-0130]).
`
`As to Claim 4:
`
`Yamafuku discloses the substrate material layer contains at least one of a polyimide, a
`
`polyamide or a poly(amide imide) [0070].
`
`As to Claim 6:
`
`Yamafuku discloses that the combination of the insulating layer and the electrode achieve the
`
`desired electrical resistance [0073, 0124, 0125]. Regarding the specific electric resistance, it is
`
`contended that such a property or characteristic is inherently taught in the disclosed insulating layer
`
`disclosed by the Yamafuku. Accordingly, products of identical chemical composition cannot have
`
`mutually exclusive properties, and its properties are inseparable. Therefore, if the prior art teaches the
`
`identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In
`
`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 5
`
`re Spada, 911 F.2d 705, 709,15 USPQ2d 1655,1658 (Fed. Cir. 1990). See MPEP 2112.01 [R-3]
`
`Composition, Product, and Apparatus Claims. See also In re Papesch, 315 F.2d 381,391,137 USPQ 43,51
`
`(CCPA 1963) "From the standpoint of patent law, a compound and all its properties are inseparable."
`
`As to Claim 10:
`
`Yamafuku discloses different orientation of the insulating layer 7 above the intermediate layer 6
`
`as shown in Figures 5 and 6. Note that the insulating layer 7 can have several steps where each step is a
`
`layer. Thus, the first layer is the longer that is on top of the second and third insulating layers.
`
`Furthermore, the second layer is between the insulating layer 7 and the intermediate layer 6. Yamafuku
`
`further discloses that the insulating layer 7 comprises an insulating filler ([0067], Abstract).
`
`As to Claim 13:
`
`Yamafuku discloses the insulating inorganic material contains at least one of a metal oxide, a
`
`metal nitride, or a metal carbide (see "oxide particles... Si02, Al203...", [0127-0130, 0134-0136]).
`
`As to Claim 15:
`
`Yamafuku discloses the substrate material layer is formed from a polymer alloy between a
`
`polyimide and a resin other than the polyimide [0070].
`
`As to Claim 18:
`
`Yamafuku discloses the adhesive layer includes at least one of an acrylic resin, a natural rubber,
`
`a synthetic rubber, a silicone, an epoxy resin, a melamine resin, or a phenol resin (see "styrene
`
`butadiene rubber (SBR)", [0067], Abstract).
`
`As to Claim 19:
`
`Yamafuku discloses the adhesive layer includes at least one of a tackifier, a cross-linking agent,
`
`an anti-aging agent, an antioxidant, a chain transfer agent, a softening agent, a surfactant, or an
`
`antistatic agent [0067, 0128, 0136].
`
`As to Claims 21:
`
`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 6
`
`Yamafuku discloses the substrate material layer contains at least one of a polyimide, a
`
`polyamide or a poly(amide imide) [0070].
`
`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 7
`
`Claim Rejections - 35 USC § 103
`
`Claims 1, 3, 4, 6, 10, 12-13, 15-16, 18, 19, and 21 are rejected under 35 U.S.C. 103 as being
`
`unpatentable by Yamafuku et al., US 20150147624 (hereinafter, Yamafuku).
`
`As to Claim 1:
`
`Yamafuku discloses a secondary battery ([0004, 0021, 0059], Fig. 8-9) comprising:
`
`a positive electrode having a positive-electrode current collector and a positive-electrode active-
`
`material layer disposed on the positive-electrode current collector ([0061, 0077], Fig. 1-3);
`
`a negative electrode having a negative-electrode current collector and a negative-electrode
`
`active-material layer disposed on the negative-electrode current collector ([0060, 0077], Fig. 1-3);
`
`an electrolyte ([0137, 0138]); and
`
`an insulating tape covering a portion of the positive electrode (see "intermediate layer 6” and
`
`"insulating layer 7”, [0043], Fig. 1-6),
`
`wherein the positive-electrode current collector has an exposed section that the positive-
`
`electrode active-material layer is not disposed (Fig. 1-6 — see the exposed section of the current
`
`collector 3a on the right side of the figures),
`
`at least a portion of the exposed section is covered with the insulating tape (Fig. 1-6 — see the
`
`exposed section of the current collector 3a on the right side of the figures),
`
`the insulating tape has a substrate material layer ("intermediate layer 6”, Fig. 1-6, [0043]) and
`
`an adhesive layer ( "insulating layer 7”, [0043], Fig. 1-6), and
`
`the adhesive layer includes an adhesive agent (see "styrene butadiene rubber (SBR)", [0067],
`
`Abstract) and an insulating inorganic material (see "oxide particles... Si02, Al203...", [0127-0130]),
`
`wherein the substrate layer contains polyamide, polyimide and/or polyamideimide (see
`
`"nonaqueous binder include... polyamide, polyimide, polyamideimide...", [0070] — also see 112
`
`rejection above).
`
`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 8
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`Yamafuku does not explicitly disclose the substrate layer is free of adhesive.
`
`As stated in the 112 rejection above, the instant specification does not clearly teach what is an
`
`adhesive and what is not. Thus, it is unclear whether Yamafuku contains material that applicant would
`
`argue that it is an adhesive. However, the instant specification does teach that the substrate can
`
`contain polyamide, polyimide, and polyamideimide, and can also inherently free of adhesive.
`
`Thus, it would have been obvious to a person skilled in the art at the time of the invention that
`
`to choose polyamide, polyimide, and polyamideimide as the material in the intermediate layer 6 of
`
`Yamafuku as to prevent carbonaceous material from moving from the insulating layer 7 to the achieve
`
`material layers [0047, 0048, 0049].
`
`As to Claim 3:
`
`Yamafuku discloses the insulating inorganic material includes a metal compound in the form of
`
`particles or fibers (see "oxide particles... Si02, Al203...", [0127-0130]).
`
`As to Claim 4:
`
`Yamafuku discloses the substrate material layer contains at least one of a polyimide, a
`
`polyamide or a poly(amide imide) [0070].
`
`As to Claim 6:
`
`Yamafuku discloses that the combination of the insulating layer and the electrode achieve the
`
`desired electrical resistance [0073, 0124, 0125]. Regarding the specific electric resistance, it is
`
`contended that such a property or characteristic is inherently taught in the disclosed insulating layer
`
`disclosed by the Yamafuku. Accordingly, products of identical chemical composition cannot have
`
`mutually exclusive properties, and its properties are inseparable. Therefore, if the prior art teaches the
`
`identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In
`
`re Spada, 911 F.2d 705, 709,15 USPQ2d 1655,1658 (Fed. Cir. 1990). See MPEP 2112.01 [R-3]
`
`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 9
`
`Composition, Product, and Apparatus Claims. See also In re Papesch, 315 F.2d 381,391,137 USPQ 43,51
`
`(CCPA 1963) "From the standpoint of patent law, a compound and all its properties are inseparable."
`
`As to Claim 10:
`
`Yamafuku discloses different orientation of the insulating layer 7 above the intermediate layer 6
`
`as shown in Figures 5 and 6. Note that the insulating layer 7 can have several steps where each step is a
`
`layer. Thus, the first layer is the longer that is on top of the second and third insulating layers.
`
`Furthermore, the second layer is between the insulating layer 7 and the intermediate layer 6. Yamafuku
`
`further discloses that the insulating layer 7 comprises an insulating filler ([0067], Abstract).
`
`As to Claim 12:
`
`Yamafuku discloses the insulating inorganic material is formed by a metal compound and
`
`discloses that the inorganic particles can be used as one kind of particles, a mixture or a composite
`
`[0128-0135].
`
`Even though Yamafuku does not disclose a range of 90 or more than one material, it would have
`
`been obvious to a person skilled in the art at the time of the invention to used solely a single type of
`
`metal compound (100 percent by mass of one metal compound) or used several of different metal
`
`compound to make a mixture as to form the insulating material having the desired insulation property.
`
`Additionally, it would have been obvious to a skilled artisan to adjust the mixture/composition
`
`of Yamafuku to achieve applicant’s claimed range as a prior art reference that discloses a range
`
`encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of
`
`obviousness. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In
`
`re Harris, 409 F.3d 1339, 74 USPQ2d 1951. Further, the court has held that in the case where the
`
`claimed ranges ”overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness
`
`exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575,16
`
`USPQ2d 1934 (Fed. Cir. 1990).
`
`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`As to Claim 13:
`
`Page 10
`
`Yamafuku discloses the insulating inorganic material contains at least one of a metal oxide, a
`
`metal nitride, or a metal carbide (see "oxide particles... Si02, Al203...", [0127-0130, 0134-0136]).
`
`As to Claim 15:
`
`Yamafuku discloses the substrate material layer is formed from a polymer alloy between a
`
`polyimide and a resin other than the polyimide [0070].
`
`As to Claim 16:
`
`Yamafuku discloses different orientation of the insulating layer 7 above the intermediate layer 6
`
`as shown in Figures 5 and 6. Note that the insulating layer 7 can have several steps where each step is a
`
`layer. Thus, the first layer is the longer that is on top of the second and third insulating layers.
`
`Yamafuku further teaches that the intermediate layer 6 can form of different binders including
`
`polyamide, polyimide, and polyamideimide [0070].
`
`Even though Yamafuku does not disclose several intermediate layers, it would have been
`
`obvious to a person skilled in the art at the time of the invention to incorporate several intermediate
`
`layer for further enhancing the adhesiveness/protection of the electrode since Yamafuku has already
`
`shown that it is within the scope of the technology to modify the shape/thickness of the layers as to
`
`achieve the desired characteristics.
`
`Moreover, it has been held that duplication of part is obvious. Succinctly stated, fact that the
`
`claimed intermediately layers are structurally duplicated is not sufficient by itself to patentably
`
`distinguish over an otherwise old feature unless there are new or unexpected results as it is a matter of
`
`choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence
`
`that the particular configuration of the claimed intermediate layers was significant. In re Japikse 86
`
`USPQ 70. In re Kuhle 188 USPQ 7. In re Gazda 104 USPQ 400. In re Harza 124 USPQ 378. (Refer to MPEP
`
`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 11
`
`2144.04 [R-1J Legal Precedent as Source of Supporting Rationale: VI. Reversal, Duplication, OR
`
`Rearrangement of Parts).
`
`As to Claim 18:
`
`Yamafuku discloses the adhesive layer includes at least one of an acrylic resin, a natural rubber,
`
`a synthetic rubber, a silicone, an epoxy resin, a melamine resin, or a phenol resin (see "styrene
`
`butadiene rubber (SBR)", [0067], Abstract).
`
`As to Claim 19:
`
`Yamafuku discloses the adhesive layer includes at least one of a tackifier, a cross-linking agent,
`
`an anti-aging agent, an antioxidant, a chain transfer agent, a softening agent, a surfactant, or an
`
`antistatic agent [0067, 0128, 0136].
`
`As to Claims 21:
`
`Yamafuku discloses the substrate material layer contains at least one of a polyimide, a
`
`polyamide or a poly(amide imide) [0070].
`
`Claims 5, 7-9, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yamafuku et
`
`al., US 20150147624 (hereinafter, Yamafuku) as applied to claim 1 above, and further in view of lwata
`
`et al., US 20120107573 (hereinafter, lwata).
`
`As to Claims 5, 7-9:
`
`Yamafuku discloses the thickness of the intermediate layer is usually 0.1 to 10 pm [0111] and
`
`the thickness of the positive active material layer 3b is 30 to 200 pm ([0144], Figs. 1-6), but does not
`
`disclose the specific layers of the intermediate layer and insulating layer.
`
`In the same field of endeavor, lwata also discloses a multilayer adhesive tape for adhering and
`
`insulating battery electrode together (Abstract, [0036, 0061], Figs. 3A-3C).
`
`lwata further discloses that
`
`the thickness of the adhesive tape is about 1 to 25 pm [0035, 0046] while the substrate can be between
`
`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 12
`
`10 to 50 pm [0050] as to achieve a desired volume within the battery [0050] while preventing short-
`
`circuit between electrodes and preventing deterioration from contacting with electrolyte [0046].
`
`Thus, it would have been at the time of the invention to incorporate the disclosed thickness
`
`range of |wata to the layers of Yamafuku as to achieve a desired volume within the battery [0050] while
`
`preventing short-circuit between electrodes and preventing deterioration from contacting with
`
`electrolyte [0046].
`
`As to Claim 20:
`
`Yamafuku discloses a positive-electrode lead is electrically connected to the exposed section
`
`(see ”current collecting parts 10... electrically connected to the electrode assembly 2...”, [0155], Fig. 7
`
`and 11),
`
`the positive-electrode lead has an extended section projected from the exposed section (see Fig.
`
`7 and 11) and an section overlapping section overlapping the exposed section (see Fig. 7 and 11 — the L
`
`shape is the overlapping section).
`
`However, Yamafuku does not specifically disclose that the insulating tape covers at least
`
`a portion of the overlapping section.
`
`In the same field of endeavor, |wata also discloses a multilayer adhesive tape for adhering and
`
`insulating battery electrode together (Abstract, [0036, 0061], Figs. 3A-3C).
`
`|wata further discloses that
`
`the adhesive tape cover the overlapping section of the lead 4 as to protect and adhere the lead to the
`
`electrode assembly ([0024, 0025, 0037] Figs. 3A to 3C).
`
`Thus, it would have been at the time of the invention to incorporate arrangement of |wata with
`
`respect to the adhesive tape and the lead to the electrode arrangement of Yamafuku as to protect and
`
`adhere the lead to the electrode assembly ([0024, 0025, 0037] Figs. 3A to 3C).
`
`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 13
`
`Claims 2, 11, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Yamafuku et al., US 20150147624 (hereinafter, Yamafuku) as applied to claim 1 above, and further in
`
`view of Ohura et al., US 6123799 (hereinafter, Ohura).
`
`As to Claim 2:
`
`Yamafuku discloses the insulating inorganic material but does not disclose the specific amount
`
`of the inorganic material in the adhesive layer.
`
`In the same field of endeavor, Ohura also discloses a multilayer adhesive for adhering and
`
`insulating electronics part with each other (Abstract, Col. 1, lines 8-16, lines 19-27, Col. 6, lines 53-67)
`
`similar to the adhesive layer of Yamafuku. Ohura also discloses the layer comprises inorganic material
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`such as metal oxide similar to that of Yamafuku and further teaches that inorganic material in the
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`adhesive layer can be between 10-300 parts by weight with respect to about 100 parts of weight of the
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`copolymer as the component A (Col. 5, lines 53-63). The addition of the filler in the disclosed range can
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`achieve better heat conductivity and adhesiveness (Col. 5, lines 53-63).
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`It would have been obvious to a person skilled in the art at the time of the invention to
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`incorporate the inorganic material of Yamafuku as taught in the range of Ohura as to achieve better
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`heat conductivity and adhesiveness (Col. 5, lines 53-63).
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`Additionally, it would have been obvious to a skilled artisan to adjust the range of Ohura to achieve
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`applicant’s claimed range as a prior art reference that discloses a range encompassing a somewhat
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`narrower claimed range is sufficient to establish a prima facie case of obviousness. In re Peterson, 315
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`F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74
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`USPQ2d 1951. Further, the court has held that in the case where the claimed ranges ”overlap or lie
`
`inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541
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`F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575,16 USPQ2d 1934 (Fed. Cir. 1990).
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`As to Claim 11:
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`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 14
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`Yamafuku discloses the metal compound is a particle but does not disclose the specific shape of
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`the particle.
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`Ohura further disclose that the particle can be a spherical form, a circular form, a flake form,
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`and a star form depending on the theological property of the copolymer as the component A and the
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`rheological property of the final pressure-sensitive adhesive (Col. 5, lines 19-34).
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`It would have been obvious to a person skilled in the art at the time of the invention to
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`incorporate the particle form of Ohura to the metal compound of Yamafuku as to achieve the desired
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`theological property of the copolymer as the component A and the rheological property of the final
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`pressure-sensitive adhesive (Col. 5, lines 19-34).
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`As to Claim 14:
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`Yamafuku discloses the insulating inorganic material containing metal compound particles but
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`does not disclose the specific particle size/diameter.
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`Ohura further discloses that the filler mean particle diameter can be 2 to 10 pm as to achieve
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`the desired adhesive sheet with the desired characteristics such as volume, thickness and
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`conductivity/insulation (Col. 6, line 59 — Col. 7, line 19).
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`It would have been obvious to a persons skilled in the art at the time of the invention to
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`incorporate the mean particle diameter of Ohura to the inorganic material of Yamafuku as to achieve
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`the desired adhesive sheet with the desired characteristics such as volume, thickness and
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`conductivity/insulation (Col. 6, line 59 — Col. 7, line 19).
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`Additionally, it would have been obvious to a skilled artisan to adjust the range of Ohura to achieve
`
`applicant’s claimed range as a prior art reference that discloses a range encompassing a somewhat
`
`narrower claimed range is sufficient to establish a prima facie case of obviousness. In re Peterson, 315
`
`F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74
`
`USPQ2d 1951. Further, the court has held that in the case where the claimed ranges ”overlap or lie
`
`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 15
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`inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541
`
`F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575,16 USPQ2d 1934 (Fed. Cir. 1990).
`
`As to Claim 17:
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`Yamafuku discloses that the substrate material layer contains a polyimide [0070, 0072], but
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`does not specifically disclose that the specific range amount of polyimide being used.
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`Ohura further discloses that the layer can be just polyimide film or 100% mass amount of
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`polyimide (see Example 6, Col. 10, lines 25-48) as to achieve an adhesive layer with the desired
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`characteristics better heat conductivity and adhesiveness (Col. 5, lines 53-63).
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`It would have been obvious to a person skilled in the art at the time of the invention to
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`incorporate a substrate material layer of Yamafuku with the specific amount of polyimide as taught by
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`Ohura as to achieve an adhesive layer with the desired characteristics better heat conductivity and
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`adhesiveness (Col. 5, lines 53-63).
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`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 16
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`Response to Arguments
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`Applicant's arguments filed 1/24/2020 have been fully considered but they are not persuasive.
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`Applicant’s main contention is that Yamafuku does not disclose the new limitation ”substrate
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`material layer is free of adhesive”. As explained above, applicant recites paragraph [0039] to [0041] to
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`talk about the substrate material layer.
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`In paragraph 0041 specifically, the paragraph talks about the
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`uses of polyimide in the substrate material layer. None of the paragraph describes polyimide as an
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`adhesive and neither does it not describe polyimide/polyamide as not an adhesive. Applicant appears
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`to suggest that the paragraph inherently teaches polyimide/polyamide is not an adhesive and
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`furthermore that the substrate material layer also does not contain an adhesive.
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`|f
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`polyamide/polyimide is not an adhesive/binder as inherently suggested by the instant specification,
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`then prior art such as Yamafuku that teaches polyimide/polyamide in the intermediate layer 6 is not an
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`adhesive with respect to the instant specification. For the reasons above, it is not clear what the
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`applicant’s intention is and claims 1-21 are interpreted with respect to the interpretation as stated
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`above.
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`For the reasons above, Claims 1-21 are still being rejected under Yamafuku.
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`

`

`Application/Control Number: 15/886,417
`Art Unit: 1723
`
`Page 17
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHS of the mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory 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 calculated from the mailing
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the date of this final action.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to JIMMY K VO whose telephone number is (571)272-3242. The examiner can
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`normally be reached on Monday - Friday, 8 am to 6 pm EST.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Milton Cano can be reached on 5712721398. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent Application
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`through Private PAIR only. For more information about the PAIR system, see https://ppair-
`
`

`