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 .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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.
Claims 1-5 and 8-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2019/0031931A1 to Kitayama et al. in view of WO 2019107486 A1 to Morita et al. and further in view of US 2019/0112469 to Yoshiwara et al.
It is noted that when utilizing WO 2019107486 A1 in the above paragraph, the disclosures of the reference are based on US 20200291184 A1 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to WO 2019107486 A1 are found in US 20200291184 A1.
Note to all properties not explicitly taught:
The claimed formula property is therefore considered to be inherently present or obvious. The Office does not have the instruments to test or measure the mechanical properties, thus it is being held that it would have been within the capability of one having ordinary skill in the art to have come up with the viscosity values in order to obtain a suitable and desirable product. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Re claims 1-3, 5, and 8- 13, Kitayama discloses a tape of polysulfide and release treated film or paper of fluorine based resin [23-31], Fig. 1 and associated text. See Example 1 to a photo catalyst 2,4,6-tris(dimethylaminomethyl)phenol. Note [26], thickness. The properties not found explicitly taught by Kitayama are inherent as the same materials are taught.
Re claim 4, Kitayama discloses a tape of polysulfide and release treated film or paper of fluorine based resin [23-31]. Note [26], thickness range is overlapping.
Note to all claims of overlapping ranges:
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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Kitayama does not disclose the sealant sheet is photocurable as claimed; however, the process limitations of before photocuring and photocuring are process steps in a product claim. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Patentability of an article depends on the article itself and not the method used to produce it (see MPEP 2113). Furthermore, the invention defined by a product-by-process invention is a product NOT a process. In re Bridgeford, 357 F. 2d 679. It is the patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F. 29 531. Both Applicant’s and prior art reference’s product are the same.
Further, Morita teaches a sealant sheet as claimed ([71-72], with the exact range of storage modulus [85-86] (see MPEP 2144.05.), Examples A1-A2, a curing agent and photostabilizer is included and thus the final product sheet is cured for achieving good mechanical properties and oil resistance.
It would have been obvious to one having ordinary skill in the art to have modified the primary reference materials via substitution of Morita’s photo-cured sheet for achieving a sealant sheet with at least superior oil resistance.
Further re claims 1-2, That the sheet is able to be cured by photoirradiation is not germane since it has been held that an element that is “being able to” perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchinson, 69 USPQ 138. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation.
Re claim 14, the combination fails to teach a photobase generator such as a cationic biguanidic one.
However, Yoshiwara teaches a sealant [121-125] with [40-42] sealant composition including photobase generator [49, 55] such as WPBG 200 series that are commercially available and the same biguanidic cation as applicant’s specification, pg. 29, [0110], for being excellent in adhesiveness.
It would have been obvious to one having ordinary skill in the art to have modified the combination materials via addition, use or substitution and included the claimed photobase generator for beneficial adhesive properties.
Claims 1-5, 8-9, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al. (U.S. Pat. 6,596,200) in view of Suga et al. (US 2014/0336340) in view of WO 2019107486 A1 to Morita et al. and further in view of US 2019/0112469 to Yoshiwara et al.
It is noted that when utilizing WO 2019107486 A1 in the above paragraph, the disclosures of the reference are based on US 20200291184 A1 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to WO 2019107486 A1 are found in US 20200291184 A1.
Note to all claims of overlapping ranges:
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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Note to all properties not explicitly taught:
The claimed formula property is therefore considered to be inherently present or obvious. The Office does not have the instruments to test or measure the mechanical properties, thus it is being held that it would have been within the capability of one having ordinary skill in the art to have come up with the viscosity values in order to obtain a suitable and desirable product. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
It would have been obvious to one having ordinary skill in the art to have modified or identified the laminate of the combination to have the claimed properties for the reason it is a measurable property of the same or similar materials.
Regarding claims 1 and 7: Note pages 5-6, of the instant specification relies upon a similar composition as set forth herein below. Ogawa et al. teaches a sealant sheet/a film that is a covering body (abstract) comprising an epoxy group containing polysulfide (inherently photocurable) having a disulfide structure and an epoxy group in its molecule (fig. 1) wherein the epoxy group-containing polysulfide is a reaction product of an epoxy compound having two or more epoxy groups in one molecule and a thiol group-containing polysulfide having a disulfide structure and a thiol group in one molecule (fig. 1). Ogawa et al. also teaches that the stiffness modulus is in a range of 105 Pa to 107 Pa (col. 6 lines 1-5), which converts to 0.1 MPa to 10 MPa, and further teaches that which overlaps the claimed range. Ogawa et al. also teaches the storage modulus is the stiffness modulus (col. 24 lines 40-45).
Ogawa et al. and Suga et al. are analogous art since they are both concerned with the same field of endeavor, namely the reaction products of epoxy resins and polythiols. At the time of the invention a person having ordinary skill in the art would have found it obvious to control the ratio of functional groups as in Suga et al. in the reaction of Ogawa et al. and would have been motivated to do so to control the hardness, as evidenced by Suga et al. (table 1).
Further regarding claims 1-6, 8-9, and 12: Ogawa et al. teaches a release lined sealant sheet comprising the claimed sealant sheet and a release liner/releasable film in contact with the sealant sheet (col. 29 lines 25-30).
Regarding claims 1-4: Ogawa et al. teaches a thickness of 0.2 mm (col. 29 lines 25-30), 0.2 mm is close to claim 3 of 0.1 mm and thus while not exact, presents an expectation of similar properties. It is apparent, however, that the instantly claimed amount of fluoropolymer and that taught by Ogawa 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 thickness disclosed by Ogawa and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the thickness disclosed in the present claims is but an obvious variant of the amount disclosed in Ogawa, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Also regarding claim 1: Ogawa et al. teaches the epoxy group-containing polysulfide is a reaction product of an epoxy compound having two epoxy groups in one molecule and a thiol terminated polysulfide having a disulfide structure in the main chain (fig. 1) and has a weight average molecular weight of 1000 to 22000 (col. 13 lines 15-20).
Further re claim 1, Ogawa doesn’t teach a photo catalyst.
Suga teaches a photo catalyst [32-34] for curing purposes or as taught in Mortia [60, 71].
It would have been obvious to one having ordinary skill in the art to have modified or identified the laminate of the combination at the time of the effective filing date to have included a photo catalyst for curing.
Further, the combination does not disclose the sealant sheet is photo-reaction curable as claimed; however, the process limitations of before photocuring and photocuring are process steps in a product claim. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Patentability of an article depends on the article itself and not the method used to produce it (see MPEP 2113). Furthermore, the invention defined by a product-by-process invention is a product NOT a process. In re Bridgeford, 357 F. 2d 679. It is the patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F. 29 531. Both Applicant’s and prior art reference’s product are the same.
Further, Morita teaches a sealant sheet as claimed ([71-72], with the exact range of storage modulus [85-86] (see MPEP 2144.05.), Examples A1-A2, a curing agent and photostabilizer and base catalyst 2,4,6-triaminomethylphenol [60, 74] is included and thus the final product sheet is cured for achieving good mechanical properties and oil resistance.
It would have been obvious to one having ordinary skill in the art to have modified the primary reference materials via substitution of Morita’s photo-cured sheet for achieving a sealant sheet with at least superior oil resistance.
Further re claims 1-2, That the sheet is able to be cured by photoirradiation is not germane since it has been held that an element that is “being able to” perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchinson, 69 USPQ 138. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation.
Re claim 14, the combination fails to teach a photobase generator such as a cationic biguanidic one.
However, Yoshiwara teaches a sealant [121-125] with [40-42] sealant composition including photobase generator [49, 55] such as WPBG 200 series that are commercially available and the same biguanidic cation as applicant’s specification, pg. 29, [0110], for being excellent in adhesiveness.
It would have been obvious to one having ordinary skill in the art to have modified the combination materials via addition, use or substitution and included the claimed photobase generator for beneficial adhesive properties.
Claims 10-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al. (U.S. Pat. 6,596,200) in view of Suga et al. (US 2014/0336340) in view of WO 2019107486 A1 to Morita et al. and further in view of US 2019/0112469 to Yoshiwara et al. as applied to claims 1 and 11 set forth above and in view of Gorodisher (US 2014/0010983).
It is noted that when utilizing WO 2019107486 A1 in the above paragraph, the disclosures of the reference are based on US 20200291184 A1 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to WO 2019107486 A1 are found in US 20200291184 A1.
Regarding claims 10-11 and 13: Ogawa et al. teaches the basic claimed sealant sheet as set forth above. Not disclosed is a fluroresin film as claimed.
Gorodisher discloses fluororesin film [89] cured to a tack-free state as an adhesive sheet or tape [92]. Gorodisher teaches a similar sealant sandwiched between two release liners (para. 107). Ogawa et al. and Gorodisher are analogous art since they are both concerned with the same field of endeavor, namely polyepoxy and polythiol compositions. At the effective filing time of the invention a person having ordinary skill in the art would have found it obvious to use the second release liner of Gorodisher for the composition of Ogawa et al. and would have been motivated to do so to aide in positioning the resultant product in the application of an adhesive or tape functionality.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection includes the photo catalyst as amended. The previous references are used but differently as set forth above.
Regarding arguments to process limitations of photocuring; one, the claims are directed to the product and two, no process limitations are claimed, the end result is a cured sealant sheet and thus the argument is moot. Applicant argues [51], spec.; however, the reliance on the process is based in capability, not the curing agent. Also note, there is not a specific photo catalyst used [107], spec. other than the mention of the photo generator which is taught already and appears only a basic catalyst 2,4,6-triaminomethylphenol, etc. is used [82], spec.; and this catalyst is also not novel. See the rejection above.
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.
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/TAMRA L. DICUS/Primary Examiner, Art Unit 1787