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 .
Examiner’s Comments
Applicants’ response filed on 6/9/2025 has been fully considered. Claims 2-6, 8-10 and 14 are cancelled, and claims 1, 7, 11-13 and 15-17 are pending.
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 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.
Claims 1, 7, 11-13 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Okada (JP 2007-208121 A) in view of Gimm et al (KR 100548737 B1).
Machine translations are being used as the English translations for Okada (JP 2007-208121 A) and Gimm et al (KR 100548737 B1).
Regarding claim 1, Okada disclose an electromagnetic-wave absorbing sheet (a radio wave absorption sheet; pg. 1 of Okada translation) comprising:
an electromagnetic-wave absorbing layer (rubber composite; pg. 1 of Okada translation) that contains a magnetic iron oxide that magnetically resonates in a frequency band equal to or higher than a millimeter-wave band as an electromagnetic-wave absorbing material (magnetic powder comprises M-type ferrite; pg. 6 of Okada translation);
a rubber binder (rubber component comprising acrylic rubber and silicone rubber; pg. 5 of Okada translation), and
a dispersant,
a volume content of the rubber binder in the electromagnetic-wave absorbing layer (160.1 parts or 300 parts of magnetic powder based on 100 parts of rubber component; pg. 6 of Okada translation), and
the electromagnetic-wave absorbing sheet is not provided with a reflective layer (radio wave absorption sheet does not have a reflective layer; pgs. 8-9 of Okada translation).
The endpoint of rubber binder of 38.4% (100/260.1) for the volume content of rubber binder in the electromagnetic wave absorbing layer is sufficient close to the claimed endpoint of 40% that is would meet it.
The only deficiency of Okada is that Okada disclose the endpoint of 38.4% (100/260.1) for the volume content of rubber binder in the electromagnetic wave absorbing layer while the present claims require the endpoint of 40% for the volume content of rubber binder in the electromagnetic wave absorbing layer.
It is apparent, however, that the instantly claimed amount of 40% for the volume content of rubber binder in the electromagnetic wave absorbing layer and that taught by Okada are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 38.4% disclosed by Okada and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of 40% for the volume content of rubber binder in the electromagnetic wave absorbing layer, it therefore would have been obvious to one of ordinary skill in the art that the amount of 40% for the volume content of rubber binder in the electromagnetic wave absorbing layer disclosed in the present claims is but an obvious variant of the amounts disclosed in Okada, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Okada does not disclose the electromagnetic-wave absorbing sheet comprising a dispersant.
However, Gimm discloses an electromagnetic-wave absorbing sheet (electromagnetic wave absorber; pg. 2 of Gimm translation) comprising a dispersant (ethoxylated nonylphenol phosphate; pg. 3 of Gimm translation).
Since the electromagnetic wave absorbing sheet of Okada and Gimm comprises acrylic rubber or silicone rubber, which are Applicant’s preferred materials for the rubber binder, M-type ferrite, which is one of Applicant’s preferred materials for the magnetic iron oxide and a phosphate dispersant; the electromagnetic wave absorbing sheet of Okada and Gimm would inherently have a maximum elongation percentage of an elastic region in one in-plane direction of 20% to 200%, be capable of converting electromagnetic waves into heat energy and absorbing the electromagnetic waves and be used in a stretched state within the maximum elongation percentage and the elastic region.
It would have been obvious to one of ordinary skill in the art to modify the electromagnetic wave absorbing sheet of Okada to include the ethoxylated nonylphenol phosphate dispersant of Gimm in the radio wave absorption sheet of Okada because having the required dispersant facilitates the process of dispersing the pulverized raw particles evenly in water to form a suspension (pg. 3 of Gimm translation).
Regarding claim 7, Okada and Gimm disclose the electromagnetic wave absorbing sheet of claim 1 as noted above and Okada discloses the electromagnetic wave absorbing sheet having a thickness of 5 mm or less (pg. 4 of Okada translation).
Since the electromagnetic wave absorbing sheet of Okada and Gimm comprises acrylic rubber or silicone rubber, which are Applicant’s preferred materials for the rubber binder, M-type ferrite, which is one of Applicant’s preferred materials for the magnetic iron oxide and a phosphate dispersant; the electromagnetic wave absorbing sheet of Okada and Gimm; the electromagnetic wave absorbing sheet of Okada and Gimm would inherently have an input impedance of the electromagnetic-wave absorbing sheet when stretched within a range of the elastic region to be in a range from 360 Ω to 450 Ω.
Paragraphs [0135]-[0138] of Applicant’s Specification states that electromagnetic wave absorbing layers having the claimed magnetic iron oxide and resin binder along with a specific thickness value such as 370 µm would have the input impedance matched to an impedance of air.
Regarding claim 11, Okada and Gimm disclose the electromagnetic wave absorbing sheet of claim 1 as noted above and Okada discloses the electromagnetic wave absorbing sheet having a thickness of 5 mm or less (pg. 4 of Okada translation).
Since the electromagnetic wave absorbing sheet of Okada and Gimm comprises acrylic rubber or silicone rubber, which are Applicant’s preferred materials for the rubber binder, M-type ferrite, which is one of Applicant’s preferred materials for the magnetic iron oxide and a phosphate dispersant; the electromagnetic wave absorbing sheet of Okada and Gimm would inherently have an input impedance of the electromagnetic-wave absorbing sheet matched while the electromagnetic-wave absorbing sheet is elongated.
Regarding claim 12, Okada and Gimm disclose the electromagnetic wave absorbing sheet of claim 1 as noted above and Okada discloses the electromagnetic wave absorbing sheet having a thickness of 5 mm or less (pg. 4 of Okada translation).
Since the electromagnetic wave absorbing sheet of Okada and Gimm comprises acrylic rubber or silicone rubber, which are Applicant’s preferred materials for the rubber binder, M-type ferrite, which is one of Applicant’s preferred materials for the magnetic iron oxide and a phosphate dispersant; the electromagnetic wave absorbing sheet of Okada and Gimm would inherently have an electromagnetic-wave absorption amount increase as an elongation percentage of the electromagnetic-wave absorbing sheet increases.
Regarding claim 13, Okada and Gimm disclose the electromagnetic wave absorbing sheet of claim 1 as noted above and Okada discloses the electromagnetic wave absorbing sheet having a thickness of 5 mm or less (pg. 4 of Okada translation).
Since the electromagnetic wave absorbing sheet of Okada and Gimm comprises acrylic rubber or silicone rubber, which are Applicant’s preferred materials for the rubber binder, M-type ferrite, which is one of Applicant’s preferred materials for the magnetic iron oxide and a phosphate dispersant; the electromagnetic wave absorbing sheet of Okada and Gimm would inherently have in a relationship between a thickness and an electromagnetic-wave absorption amount of the electromagnetic-wave absorption sheet, the electromagnetic-wave absorption amount having a minimum value when the electromagnetic-wave absorption sheet elongates and the thickness becomes small.
Regarding claim 15, Okada and Gimm disclose the electromagnetic wave absorbing sheet of claim 1 as noted above and Okada discloses the electromagnetic wave absorbing sheet having a thickness of 5 mm or less (pg. 4 of Okada translation).
Since the electromagnetic wave absorbing sheet of Okada and Gimm comprises acrylic rubber or silicone rubber, which are Applicant’s preferred materials for the rubber binder, M-type ferrite, which is one of Applicant’s preferred materials for the magnetic iron oxide and a phosphate dispersant; the electromagnetic wave absorbing sheet of Okada and Gimm would inherently have an input impedance of the electromagnetic-wave absorbing sheet in a state of being stretched by 5% to 75% of the maximum elongation percentage of the electromagnetic-wave absorbing sheet be matched to an impedance in the air.
Paragraphs [0135]-[0138] of Applicant’s Specification states that electromagnetic wave absorbing layers having the claimed magnetic iron oxide and resin binder along with a specific thickness value such as 370 µm would have the input impedance matched to an impedance of air.
Regarding claim 16, Okada and Gimm disclose the electromagnetic wave absorbing sheet of claim 1 as noted above and Okada discloses the electromagnetic wave absorbing sheet having a thickness of 5 mm or less (pg. 4 of Okada translation).
Since the electromagnetic wave absorbing sheet of Okada and Gimm comprises acrylic rubber or silicone rubber, which are Applicant’s preferred materials for the rubber binder, M-type ferrite, which is one of Applicant’s preferred materials for the magnetic iron oxide and a phosphate dispersant; the electromagnetic wave absorbing sheet of Okada and Gimm would inherently have no change in frequency of electromagnetic waves at which the electromagnetic-wave absorbing amount has a largest amount of electromagnetic-wave absorption when stretched within a range of the elastic region.
Regarding claim 17, Okada and Gimm disclose the electromagnetic wave absorbing sheet of claim 1 as noted above and Okada discloses the electromagnetic wave absorbing sheet having a thickness of 5 mm or less (pg. 4 of Okada translation).
Since the electromagnetic wave absorbing sheet of Okada and Gimm comprises acrylic rubber or silicone rubber, which are Applicant’s preferred materials for the rubber binder, M-type ferrite, which is one of Applicant’s preferred materials for the magnetic iron oxide and a phosphate dispersant; the electromagnetic wave absorbing sheet of Okada and Gimm would inherently have the electromagnetic-wave absorbing sheet maintaining a reflection attenuation amount of 15 dB or less at an elongation percentage of 11% to 22%.
Regarding claim 18, Okada and Gimm disclose the electromagnetic wave absorbing sheet of claim 1 as noted above.
Okada does not disclose the electromagnetic-wave absorbing sheet comprising a dispersant being a phosphate compound.
However, Gimm discloses an electromagnetic-wave absorbing sheet (electromagnetic wave absorber; pg. 2 of Gimm translation) comprising a dispersant being a phosphate compound (ethoxylated nonylphenol phosphate; pg. 3 of Gimm translation).
It would have been obvious to one of ordinary skill in the art to modify the electromagnetic wave absorbing sheet of Okada to include the ethoxylated nonylphenol phosphate dispersant of Gimm in the radio wave absorption sheet of Okada because having the required dispersant facilitates the process of dispersing the pulverized raw particles evenly in water to form a suspension (pg. 3 of Gimm translation).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Okada (JP 2007-208121 A) in view of Gimm et al (KR 100548737 B1).
Machine translations are being used as the English translations for Okada (JP 2007-208121 A), Gimm et al (KR 100548737 B1) and Kawai et al (JP 2005-280321 A).
Regarding claim 19, Okada and Gimm disclose the electromagnetic wave absorbing sheet of claim 1 as noted above.
Okada and Gimm does not disclose the electromagnetic wave absorbing sheet comprising the magnetic iron oxide being strontium ferrite magnetic powder.
However, Kawai discloses an electromagnetic wave absorbing sheet (radio wave absorbing material; pg. 1 of Kawai translation) comprising the magnetic iron oxide being strontium ferrite magnetic powder (pg. 3 of Kawai translation).
It would have been obvious to one of ordinary skill in the art to modify the electromagnetic wave absorbing sheet of Okada and Gimm to substitute the magnetic powder of Okada for the strontium ferrite magnetic powder of Kawai because having the strontium ferrite magnetic powder provides improved radio wave absorption (pg. 4 of Kawai translation).
Response to Arguments
Applicant’s arguments, see page 5, filed 11/6/2025, with respect to the 112(b) rejection has been fully considered and are persuasive. The 112(b) rejection has been withdrawn.
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicants argue that Okada does not disclose a dispersant.
This argument is moot as Okada does not disclose a dispersant and therefore the previous rejections have been withdrawn. However, new grounds of rejection have been noted above.
Applicant's arguments filed 11/6/2025 have been fully considered but they are not persuasive.
Applicants argue that Okada does not disclose the claimed volume content of the binder.
This argument is not persuasive as the Examiner is interpreting mass content and volume content to be somewhat equivalent in regard to the amount of rubber binder. The endpoint calculated by the Examiner is sufficiently close to the claimed endpoint such that it would meet it. Applicants have not shown criticality for the range of the volume content of the rubber binder. Also, the range calculated by Applicants of 34.2% to 71.4% overlaps the claimed range of the volume content.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785