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 amendments to the claims filed on 02/24/2026 are acknowledged and entered. According to the Amendments to the claims, claims 1 and 5 has /have been amended. Accordingly, claims 1-10 are pending in the application. An action on the merits for claims 1-10 are as follow.
The previous Objection to the Specification and 112 (b) Claim Rejections are withdrawn in accordance with applicant's amendment to the specification and the claims with no new matter added.
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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation the information “the metal wire” in line 8. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction/ clarification is required.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-3, 5 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over MURAKAMI et al. (JP 2009 218173 A).
Regarding Independent Claim 1, MURAKAMI et al. discloses a sheet-shaped heat generator (see Title) comprising a pseudo sheet structure comprising a plurality of metal wires (electric heating wires 13, Abstract, Figs 1-8) arranged at an interval (Figs 2-3), the metal wires each comprising a core comprising a first metal (core wire 10, Abstract, Fig 4) and a metal film provided on an exterior of the core (a base plating layer 11, a black-color plating layer 12, [0021-0022], Fig 4), the metal film comprising a second metal (layer 11… is preferably nickel, chromium, gold, or silver, [0021]; this black plating layer 12… black nickel electroplating, black electroless nickel plating, black chrome plating, chromate plating, black ternary alloy plating, and black rhodium plating are desirable, [0022]) different from the first metal (core wire 10 is preferably made of a tungsten wire, a molybdenum wire, or a nichrome wire, [0020]), wherein
a volume resistivity of the first metal at 25 degrees C is in a range from 1.0 x 10-5 [Ω.cm] to 5.0 x 10-4 [Ω.cm] (core wire 10 is preferably made of a tungsten wire, a molybdenum wire, or a nichrome wire having a high electrical resistance, [0020]),
a standard electrode potential of the second metal is +0.34 V or more (layer 11… is preferably nickel, chromium, gold, or silver, [0021]).
the metal film comprising the second metal is formed on an outermost surface of the metal wire (11and 12 is formed on an outermost surface of 13, Fig 4), and
the second metal comprises, as a main component, at least one metal selected from the group consisting of gold, platinum, palladium, silver, and copper (layer 11… is preferably nickel, chromium, gold, or silver, [0021]).
MURAKAMI et al. do not explicitly disclose that a volume resistivity of the first metal is in a range from 11.0 x 10-5 [Ω.cm] to 5.0 x 10-4 [Ω.cm], and a standard electrode potential of the second metal is +0.34 V or more; however, it would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange a volume resistivity of the first metal is in a range from 11.0 x 10-5 [Ω.cm] to 5.0 x 10-4 [Ω.cm], and a standard electrode potential of the second metal is +0.34 V or more, since such a configurations of the volume resistivity of the first metal and the standard electrode potential of the second metal are depends on the temperature range, which is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237; also, applicant has not disclosed that this kind of design solves any stated problem or is for any particular purpose (see Spec. [0023, 0029 and 0038]).
Therefore, it would have been obvious before the effective filling date of the claimed invention to one of ordinary skill in the art to modify MURAKAMI et al. and further teaching of a volume resistivity of the first metal is in a range from 11.0 x 10-5 [Ω.cm] to 5.0 x 10-4 [Ω.cm], and a standard electrode potential of the second metal is +0.34 V or more; because MURAKAMI et al. teach, in Abstract, of providing an excellent structure capable of stably enhancing electric conductivity of an electric heating wire during operation.
Claim 2, wherein the interval between the metal wires is in a range from 0.3 mm to 30 mm (a plurality of heating wires 13 arranged parallel to one another, [0029], Fig 5). MURAKAMI et al. do not explicitly disclose that the interval between the metal wires is in a range from 0.3 mm to 30 mm; however, it would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange an interval between the metal wires, since such a configuration would have involved a mere change in interval; a change in interval is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237; also, applicant has not disclosed that this kind of design solves any stated problem or is for any particular purpose (see Spec. [0036]).
Claim 3, wherein a diameter of each of the metal wires is in a range from 5 μm to 150 μm (The smaller the diameter of the heating wire 13, the more transparent the window glass for a vehicle becomes (the heating wire does not get in the way), which is preferable, [0030]). MURAKAMI et al. do not explicitly disclose that a diameter of each of the metal wires is in a range from 5 μm to 150 μm; however, it would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange an diameter of the metal wires, since such a configurations would have involved a mere change in diameter; a change in diameter is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237; also, applicant has not disclosed that this kind of design solves any stated problem or is for any particular purpose (see Spec. [0028]).
Claim 5, wherein the second metal comprises, as the main component, at least one metal selected from the group consisting of silver and gold (11 is preferably… gold, or silver, [0021]).
Claim 7, wherein the sheet-shaped heat generator is usable for reducing adhesion of snow and ice on a surface (effective to attach a heater element to the glass and apply electricity as needed to evaporate and remove water droplets and ice with heat, [0002]).
Claim 8, A heat generating device comprising:
the sheet-shaped heat generator according to claim 1; and electrodes (electrode part 17, Abstract; electrode part 17 is composed of a pair of conductive metal strips 15, 16 sandwiching a plurality of heating wires 13, [0026]).
Claim 9, wherein the second metal of the metal wires is brought into contact with the electrodes in use (see Fig 4).
Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over MURAKAMI et al. in view of Rose (US 2019/0380387 A1).
Regarding Claim 4, MURAKAMI et al. discloses the invention as claimed and as discussed above; except does not disclose Claim 4.
Rose teaches Claim 4, wherein the first metal (heating coil is constructed of single wire, [0078]. Note: “the first metal” taught by MURAKAMI et al. already) comprises, as a main component, at least one metal selected from the group consisting of titanium, stainless steel, and iron-nickel (constructed out of any conductive material such as… stainless steel, nickel, titanium, [0078]).
Therefore, it would have been obvious before the effective filling date of the claimed invention to one of ordinary skill in the art to modify MURAKAMI et al. and further teaching of Claim 4; because Rose teaches, in Abstract, of providing an excellent heating coil is constructed of single wire and may be constructed out of stainless steel suitable to vaporize substances applied directly to the heating coil at regulated temperatures.
Claims 6 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over MURAKAMI et al. in view of HAGIWARA et al. (JP 2018 039226 A).
Regarding Claims 6 and 10, MURAKAMI et al. discloses the invention as claimed and as discussed above; except does not disclose Claims 6 and 10.
HAGIWARA et al. teach a sheet-shaped heat generator (see Title), and Claim 6, wherein the sheet-shaped heat generator comprises an adhesive agent layer (an adhesive layer 40, [0022], Figs 1-2) and the pseudo sheet structure is in contact with the adhesive agent layer (40 arranged between the substrate 20 and the heating element 30, [0022], Figs 1-2. Note: “the pseudo sheet structure” taught by MURAKAMI et al. already). Claim 10, wherein the metal wires are fixed to the electrodes using the adhesive agent layer in use (32 are fixed to electrodes 42 using 40 in use, [0109], Fig 4. Note: “the metal wires”, and “the electrodes” taught by MURAKAMI et al. already).
Therefore, it would have been obvious before the effective filling date of the claimed invention to one of ordinary skill in the art to modify MURAKAMI et al. and further teaching of 6 and 10; because HAGIWARA et al. teach, in Abstract, of providing an excellent ice and snow attachment prevention sheet that has a high light transmittance, and allows the ice and snow dissolved with a heating element to slide down with ease.
Response to Arguments
Applicant’s arguments filed 02/24/2026 have been fully considered but they are not persuasive. The same prior art used under the Non-Final Rejection been able to cover all the limitations of the amended claims.
A. The applicant's argument on Remarks, namely “Murakami fails to teach, the metal film comprising the second metal is formed on an outermost surface of the metal wire, and the second metal comprises, as a main component, at least one metal selected from the group consisting of gold, platinum, palladium, silver, and copper, as required by claim 1”, and “As disclosed in paragraph [0023] of the present application, when the volume resistivity RMI of the first metal is 1.0 x 10-s [!!·cm] or more, heat generation is promoted while preventing overheating, even for applications requiring a large output. When the volume resistivity RMI is 5.0 x 10-4 [!!·cm] or less, resistance between electrodes is reduced, preventing excessive resistance increases even when the electrode distance is increased for large-area applications such as signs or signboards. Further, as disclosed in paragraph [0029] of the present application, the claimed configuration suppresses abnormal heat generation during attachment to electrodes and reduces formation of oxide films on the metal wire surfaces over time, thereby reducing secondary abnormalities associated with oxidation”.
The examiner’s response: MURAKAMI et al. teach exactly a sheet-shaped heat generator as claimed, fully discloses all the recited limitations of Claim 1 as set forth in this office action shown above; in specification paragraph [0023] mentioned: “The volume resistivity RM1 of the first metal is in a range from 1.0 x 10-5 [Ω cm] to 5.0 x 10-4 [Ω cm], preferably in a range from 3.0 x 10-5 [Ω cm] to 1 .5 x 10-4 [n-cm], more preferably in a range from 4.0 x 10-5 [Ω cm) to 9.0 x 10-5 [Ω cm]”; however, it is unclear 1. what kind of output is “a large output”? 2. what kind of application is “large-area applications such as signs or signboards”? Paragraph [0029] mentioned: “The standard electrode potential EM2 of the second metal is +0.34 V or more, preferably +0.5 V or more, more preferably +0.7 V or more, further preferably +1.0 V or more. An upper limit of the standard electrode potential EM2 of the second metal is +2.0 V or less, more preferably +1.6 V or less… the sheet-shaped heat generator 10 is attached to the electrode. In addition, the formation of an oxide film on the surfaces of the metal wires 22 with time can be reduced”; however, it is unclear 1. how long this “time” are in order to form an oxide film? And 2. how to arrange the sheet-shaped heat generator 10 to attach to an electrode? Clearly, it would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange the volume resistivity of the first metal at 25 degrees C and the standard electrode potential of the second metal at 25 degrees C are design choice as claimed. Also, during “examination, a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. Because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)”. “Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention” (MPEP 2173.01(I)). Therefore, the examiner maintains the rejection.
Conclusion
10. 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is advised to refer to the Notice of References Cited for pertinent prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUANGYUE CHEN whose telephone number is 571/272-8224. The examiner can normally be reached on M-F 9:00-5:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, supervisor Ibrahime Abraham can be reached on 571/270-5569, supervisor Kosanovic Helena can be reached on 571/272-9059, supervisor Steven Crabb can be reached on 571/270-5095, or supervisor Edward Landrum can be reached on 571/272-5567. The fax phone number for the organization where this application or proceeding is assigned is 571/273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866/217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800/786-9199 (IN USA OR CANADA) or 571/272-1000.
/KUANGYUE CHEN/
Examiner, Art Unit 3761
/EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761