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 .
This communication responds to the amended claim set and the response to Restriction Requirement filed 01/17/2025. Claims 1-2, 4-11, 18, 20-21 and 23 are current pending. Elected Claims 1-2, 4-11 and 23 are under examination.
Non-elected claims 18 and 20-21 are withdrawn.
Claims 1-2, 4-11 and 23 are rejected for the reasons set forth below.
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 (i.e., changing from AIA to pre-AIA ) 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.
Election/Restrictions
Applicant's election with traverse of Group I, claims1-2, 4-11 and 23 in the reply filed on 01/17/2025 is acknowledged. The traversal is on the ground(s) that CN108795124A, CN109401682A, or CN105038624A is longer prior art over currently amended Claim 1. This is not found persuasive because:
Instant Group I (Claims 1-2, 4-11 and 23) and Group II (Claims 18 and 20-21) require the technical feature of the composition of Claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art Li et al. (CN105419664A), see discussion below.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The disclosure is objected to because of the following informalities: formulae of the layered transition metal oxide have no oxygen atoms.
Appropriate correction is required.
Claim Objections
Claim 4 is objected to because of the following informalities: line 6 “maleyl imine” should read maleimide. Appropriate correction is required.
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-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 5, 7, 8, 10-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 2, 5, 7, 8, 10-11 recite “preferably.” A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the ranges/limitations before “preferably” are broader compared to the ranges/limitations following “preferably.” The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of compact prosecution, this Action does not consider limitations after “preferably.”
Claim 2 recites “the layered transition metal oxide is A2M12X6 or A3M2X6, wherein, A is Na or Li; Mis +2-valent metal; X is Sb, Bi, Nb or Ru,” the claimed formulae have no oxygen atoms. Therefore, it is not clear what molecules being claimed.
Claim 5 claims melt index of the ethylene copolymer, however, the specification and claim have no disclosure of the conditions, such as temperature and load, for measuring the melt index. Therefore, the claim is indefinite.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, 6-8 and 11 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Li et al. (CN105419664A)
Regarding Claims 1 and 4, Li teaches an adhesive composition comprising a film forming matter, filler and cross-linking agent. Attention is drawn to Examples (P2/ln21 – p3/ln10), Li teaches the adhesive composition comprising ethylene copolymer, filler containing zinc oxide and cross-linking agent N-methylolacrylamide. N-methylolacrylamide is one of the amide organic compound claimed in instant Claim 4.
Regarding Claim 6-8, Li teaches the film forming matter being a mixture of ethylene-propylene-1-butene copolymer and ethylene-vinyl acetate copolymer (P2/lns21-34).
Regarding Claim 11, Exemplary compositions further comprises an antioxidant (P2/lns21-34).
Claim Rejections - 35 USC § 103
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, 4, 6-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over HIDEAKI (JP2017145315A).
Regarding Claims 1 and 4, HIDEAKI teaches that an adhesive composition comprising a (meth)acrylic block copolymer (ab), a filler (p10/ln26-28), and a crosslinking agent (p10/ln41-p11/ln11). Wherein the (meth)acrylic block copolymer can contain ethylene (p3/ln31); the filler includes titanium oxide (p10/ln27); and the crosslinking agent includes acrylamide, methacrylamide, N-methylol acrylamide, N-hydroxyethyl acrylamide and N, N- (dihydroxyethyl) acrylamide, N-hydroxyethyl methacrylamide and N, N- (dihydroxyethyl) methacrylamide (p11/lns 1-11). Thus, HIDEAKI teaches adhesive composition comprising an ethylene copolymer, titanium oxide, and a crosslinking agent having the claimed structure.
Regarding Claims 6-8, HIDEAKI teaches the copolymer is an (meth)acrylic block copolymer (ab.) and the copolymer may contain propylene (p3/ln32).
Regarding claim 11, HIDEAKI teaches the composition comprising a tackifier (p6/ln27-38).
Claims 1, 4-11, are rejected under 35 U.S.C. 103 as being unpatentable over Shigenobu (JP2015005646A).
Regarding Claims 1 and 4, Shigenobu teaches a solar battery-sealing sheet which enables the suppression of the occurrence of Potential Induced Degradation, wherein the battery-sealing sheet comprising a first sheet and a second sheet (ab.). Shigenobu further teaches each of the first sheet and the second sheet comprising ethylene copolymer (Id.), acid acceptor, such as magnesium oxide, calcium oxide, magnesium hydroxide, calcium hydroxide, barium hydroxide, or magnesium hydroxide (p15/lns7-23), colorant, such as titanium oxide (P18/ln26-P19/ln11). Shigenobu furthermore teaches each of the first sheet and the second sheet comprising a crosslinking aid (p20/lns 36-40), wherein maleimide is one of the preferable crosslinking aids. Therefore, Shigenobu teaches an adhesive composition comprising an ethylene copolymer, metal oxide/hydroxide, and a crosslinking compound reading on the claimed structure.
Regarding Claim 5, Shigenobu teaches the first sheet comprising ethylene-α-olefin copolymer and the second sheet comprising ethylene-polar monomer copolymer (ab.). Both the first and second copolymers an MFR of 0.1 to 50 g/10min (p5/lns 39-41; p11/lns14-22).
Regarding Claims 6-8, Shigenobu teaches the first sheet comprising ethylene-α-olefin copolymer and the second sheet comprising ethylene-polar monomer copolymer (ab.).
Regarding Claim 9, the ethylene / α-olefin copolymer used for the first sealing sheet may be an ethylene copolymer with 5-ethylidene-2-norbornene (ENB), 5- vinyl-2-norbornene (VNB), cyclopentene, cycloheptene, or norbornene (p5/lns1-11).
Regarding Claim 10, Shigenobu teaches the first/second sheet comprising the crosslinking aid, relative to 100 parts by weight of the ethylene copolymer, in the amount of from 0.05 to 5 parts by weight ([0111] of the JP language document), overlapping with the claimed 0.05~1.5 parts. Shigenobu further teaches the acid acceptor, relative to 100 parts by weight of the ethylene copolymer, in the amount of from 0.6 to 2 parts by weight (p13/lns 37-40) and the colorant from 2 to 10 parts (p18/lns 31-42). Shigenobu furthermore teaches the first sheet may or may not contain the acid acceptor or the colorant. Therefore, the first sheet may contain metal oxide/hydroxide from 0.6 to 2 parts, from 2 to 10 parts, or from 2.6 to 12 parts; the second sheet contains metal oxide/hydroxide from 2.6 to 12 parts by weight relative to 100 parts by weight, overlapping with the claimed 0.01 to 10 parts.
Regarding Claim 11, Shigenobu teaches the first and the second sheets each comprising an organic peroxide (p26/lns11-13).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Shigenobu (JP2015005646A), as applied to Claim 1 and Claim 10 above, and in further view of Atsushi et al. (JP2015138805A)
As discussed above, Shigenobu teaches the first/second sheet comprising ethylene copolymer and a crosslinking aid from 0.05 to 5 parts by weight relative to 100 parts by weight of the ethylene copolymer.
The difference between Shigenobu and instant claim 23 is that Shigenobu is silent on metal ion trapping agent.
However, Atsushi teaches a solar cell sealing composition comprising ethylene copolymer and inorganic ion scavenger (claim 1) which is the in the amount of 0.001 – 5 parts with respect to 100 parts of the ethylene copolymer (claim 3). One skilled artisan would have been motivated, before the effective filling date of instant application, to incorporate the inorganic ion scavenger into the composition of Shigenobu because both compositions of Shigenobu and Atsushi are used as solar cell sealing material (claim 1 of Shigenobu; claim 3 of Atsushi), further, Shigenobu is concerned to suppress Potential Induced Degradation (ab.), and Atsushi teaches the inorganic ion scavenger suppresses Potential Induced Degradation (p4/lns17-26).
Allowable Subject Matter
Claim 2 would be allowable if overcoming the 35 USC 112 (b) rejection.
The following is a statement of reasons for the indication of allowable subject matter: after a complete and thorough search, Examiner did not find prior art teaching or suggesting a composition comprising an ethylene copolymer, an amide or imide compound, and a layered transition metal oxide having A2M12X group or A3M2X group, wherein X is Sb, Bi, Nb or Ru.
Conclusion
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763