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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 12/31/2025, with respect to the rejection of claims 1-6, 10-17 and 21-23 under 35 U.S.C. 112(b) as set forth in paragraph 5 of the action mailed 10/1/2025, have been fully considered and are persuasive. The rejection of claims 1-6, 10-17 and 21-23 has been withdrawn.
Rejections
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 § 103
Claim(s) 1-6, 10-16 and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kurata et al. (US 2018/014611 A1) in view of Sugimoto (JP 2011032451 A) and in further view of Boelz et al. (KR 20050086938 A). The Examiner notes that citations from the ‘451 and ‘938 references were taken from a machine translation, which are included with the current action.
Regarding claim(s) 1-3, 5-6, 10-11, 14-16 and 21-23, Kurata teaches a pressure-sensitive adhesive (PSA) sheet (1A) (adhesive tape) comprising, in order, base material (11), inorganic filler-containing resin layer (12) and PSA layer (13) (adhesive layer) (para 0024 and figure 1), or PSA sheet (1C), comprising, in order, inorganic filler-containing resin layer (12), base material (11), inorganic filler-containing resin layer (12) and PSA layer (13) (para 0026 and figure 3), which said base material (11) comprises, inter alia, a fluorine resin film (fluororesin, current claim 5) (para 0031).
The Examiner notes that the base material (11)/ inorganic filler-containing resin layer (12) combination, or the inorganic filler-containing resin layer (12)/base material (11)/ inorganic filler-containing resin layer (12) combination teach the presently claimed substrate.
Kurata continues to teach that the inorganic filler-containing resin layer(s) (12) comprise inorganic filler in adjustable proportions towards maintaining insulation properties (para 0033-0034, 0047) and comprises an adjustable thickness towards maintaining insulation properties (para 0064); and that the PSA layer may be present on one side of the laminate (1A, 1C) as in the cited figures or may be present on both sides (para 0065). The PSA layer(s) of Kurata are disclosed as comprising, inter alia, acrylic-based or silicone-based PSAs, both of which are identical to that presently disclosed for the presently claimed adhesive layer (para 0066).
Kurata is silent to the fluorine resin film comprising the base material (11) comprising PTFE or FEP (current claims 6, 14 or 21). However, the Examiner respectfully notes that
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
In addition, Sugimoto teaches an adhesive tape (20) comprising fluororesin layer (21), resin sheet (22) and adhesive layer (23) (para 0033), which said fluororesin layer (21) comprising a fluorine-based resin such as, inter alia, polytetrafluoroethylene (PTFE) or tetrafluoroethylene-hexafluoropropylene copolymer (FEP) (para 0033, 0066).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the PTFE or FEP resins for the fluorine resin film comprising the base material (11) of Kurata, and thereby arrive at the presently claimed invention from the disclosure of the cited prior art.
Kurata/Sugimoto does not specify the presently claimed relationship (i.e., Y ≤ 4.5X – 22.5) between a breakdown voltage (X) and the initial elastic modulus (Y) of the disclosed PSA sheets (1A) or (1C) (current claim 1), the specific ranges of the breakdown voltage (X) (14.0 kV or more) and the initial elastic modulus (Y) (30.0 N/mm or less, current claim 2), or the specific range of the initial elastic modulus (Y) (15.5 N/mm or less, current claims 3 and 11).
However, as noted above, Kurata is directed to PSA sheets providing insulation breakdown at voltages of 5 kV or higher (see also para 0008, 0029), and does instruct the skilled artisan as to the means for adjusting said insulation breakdown of the base material (11) and the inorganic filler-containing resin layer (12) combination. Kurata also contemplates the adjustment of the storage elastic modulus of the PSA layer (13) (para 0066) towards sufficient hardness and minimizing deformation and protrusion (para 0100) via adjusting its thickness (para 0102).
In addition, Boelz teaches that the thickness of a film is proportional to the breakdown voltage of said film (para 102), with the elastic modulus of the film a measure of its flexibility, conformability and elasticity (para 103).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the proportion of the inorganic filler in the inorganic filler-containing resin layer (12) and to adjust the thickness of the PSA sheet(s) (1A, 1C) of Kurata/Sugimoto towards said PSA sheet(s) (1A, 1C) demonstrating the presently claimed breakdown voltage, and to further adjust the initial elastic modulus of the PSA sheet(s) (1A, 1C) to that value presently claimed, based on the insulation properties, flexibility, conformability and elasticity required of the prior art’s intended application as in the present invention.
Regarding claim 4, as noted above via the combination of the Kurata/Sugimoto/Boelz, it would have further been obvious to the skilled artisan to provide the PSA sheet(s) (1A, 1C) of the prior art having an initial thickness that, when stretched elongated to 150%, would result in a final thickness having the presently claimed breakdown voltage (i.e., 5 kV or more) based on the breakdown voltage required of the prior art’s intended application under tensile elongation as in the present invention.
Regarding claims 12-13, as noted above via the combination of the Kurata/Sugimoto/Boelz, it would have further been obvious to the skilled artisan to adjust the flexibility and/or elasticity and/or storage modulus the PSA sheet(s) (1A, 1C) of the prior art towards said PSA sheet(s) (1A, 1C) demonstrating the presently claimed elongation at break and tensile stress based on mechanical properties required of the adhesive sheets as in the present invention.
While Kurata/Sugimoto/Boelz does not disclose the presently recited functional language in connecting power lines comprising a connection member (current claim 10) and an insulating member (current claim 15) composed of another adhesive tape (current claims 22-23), the Examiner submits that the presently claimed invention is limited to an adhesive tape as recited in current claims 1-6, 11-14, 16, and 21.
The noted functional language is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the Examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that the cited prior art discloses an adhesive tape as presently claimed, it is clear that the PSA sheet(s) (1A, 1C) of the prior art would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kurata et al. (US 2018/014611 A1) in view of Sugimoto (JP 2011032451 A) and in further view of Boelz et al. (KR 20050086938 A) and Mitsuya et al. (JP 2012184396 A). The Examiner notes that citations from the ‘396 reference were taken from a machine translation, which is included with the current action.
Regarding claim(s) 17, Kurata/Sugimoto/Boelz teaches the PSA sheet(s) (1A, 1C) as in the rejection of at least current claims 1 and 15 set forth above. Kurata also teaches that the release sheet (14) may not be required (para 0103).
While Kurata/Sugimoto/Boelz is silent to PSA sheet(s) (1A, 1C) having an own-backside adhesive strength of 3 N/25 mm or more, Mitsuya teaches an adhesive tape (1) in a roll form and comprising tape substrate (10) and adhesive layer (20) adhered to a surface of the substrate (10) (para 0016 and figure 1) with an adhesive strength of 4 N/15mm or less (i.e., ~ 6.7 N/25 mm or less) (para 0036), which overlaps that presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to exclude the release sheet (14) from the PSA sheet(s) (1A, 1C) and protect the adhesive surface of said PSA sheet(s) (1A, 1C) until use via rolling the PSA sheet(s) (1A, 1C) upon itself with the outer surface of the PSA layer (13) adhered to the backside surface of the base material (11) with the presently claimed own-backside adhesive strength based on the adhesion required of the prior art’s intended application as in the present invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 12/31/2025, with respect to the rejections of claims 1-6, 10-17 and 21-23 over Kurata/Sugimoto/Boelz/ under 35 U.S.C. 103 claim 17 over Kurata/Sugimoto/Boelz/Mitsuya under 35 U.S.C. 103 as set forth in paragraphs 8-9 of the action mailed 10/1/2025, have been fully considered but they are not persuasive.
Initially, the Examiner respectfully submits that all of the Kurata, Sugimoto, Boelz and Mitsuya disclosures are directed to PSA articles such as PSA sheets, tapes, etc., and thus contrary to the Applicant’s assertions of a disparity across the respective disclosures, said disclosures contained in each of Kurata, Sugimoto, Boelz and Mitsuya are analogous and would commend themselves to each other in remedying manner posture in the previous action and repeated above.
Also, Kurata is conspicuously directed to the insulation properties (i.e., the insulation breakdown) of the disclosed PSA sheet(s), and accomplishes this via adjusting the proportions of the inorganic filler in the inorganic filler-containing resin layer(s) (12) of the PSA sheet(s). Complimenting the disclosure of Kurata, the analogous Boelz invention instructs the skilled artisan that the thickness of a film is proportional to the breakdown voltage of a film, which is a consideration that is not positively excluded from the presently claimed invention’s attempt to attain the recited breakdown voltages such as those present in dependent claims 2 and 5.
It is significant to note that stretching a film to 150% its native length as provided in current claim 4 would necessarily result in a reduction in thickness, and a commensurate reduction in the breakdown voltage, as compared to the higher breakdown voltage recited in current claim 2, as discussed in Boelz. Thus, while the presently claimed invention provides no specific illustration of the thickness-dependency of the breakdown voltage, it does further demonstrate that the breakdown voltage would have an inherent reliance upon the thickness of the adhesive tape, as would the presently claimed relationship between the initial elastic modulus and the breakdown voltage.
MPEP 2123(I) instructs that “The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they contain.” In re
Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one
having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989).
The Examiner acknowledges the Applicant’s assertion concerning the alleged differences between the presently recited “initial elastic modulus” and that provided by the Kurata invention. However, given that a storage modulus is a specific property, it is unclear how the Applicant’s submission in this regard is intended to distinguish the presently claimed invention from the obvious of said invention over the cited prior art.
Turning now to the Applicant’s arguments beginning with citation of presently disclosed paragraph 0010, the Examiner submits that there is nothing in the presently claimed language reciting winding properties as necessary towards accomplishing the claimed invention, nor is there anything in the cited prior art references that positively exclude its consideration therein.
Further, the Applicant is respectfully reminded that,
case law provides that “[T]he discovery of a previously unappreciated property of a prior
art composition, or of a scientific explanation for the prior art’s functioning, does not
render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco
Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
Indeed, it would have been obvious to the skilled artisan to adjust the storage modulus, initial or otherwise depending on the applications conditions under consideration, and breakdown voltage of the invention as provided in the combination of the analogous cited prior art inventions towards the presently claimed breakdown voltage, initial elastic modulus, and the relationship therebetween, based on the insulation properties, flexibility, conformability and elasticity as required by the prior art’s intended application as in the present invention.
Conclusion
THIS ACTION IS MADE FINAL. 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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 2/27/2026