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 Arguments
The following is in response to the applicant’s remarks filed 09/10/2025.
The applicant submits that the previous rejection is improper as the rejection does not teach each and every limitation of the claims. Specifically, it is argued that the cited art fails to teach the claimed relationship of ΔH1>ΔH2 and a heat of fusion ΔH3 of 70 J/g or more. Additionally, it is submitted that Muroi, which is relied upon for teaching claim 1, teaches the opposite of ΔH1>ΔH2, and fails to make obvious ΔH3 given the submission of unexpected results. Further, the rejection relying on Muroi is alleged to rely on hindsight reconstruction and selectively choosing various portions of the claimed innermost and outermost layers (41)(43) to meet the limitations of the claims.
The examiner respectfully disagrees. While it is true that the rejection relies on an interpretation of Muroi that indicates portions of layers (41)(43), this is not improper nor does it rely on hindsight reconstruction. The proposed rejection both, by the broadest reasonable interpretation, meets the limitations of the claims and does so without relying on the teachings of the instant application. Then, while the teachings of Muroi cited by the applicant indicate that the outermost layer preferably has a higher heat of fusion than the innermost layer this does not contradict the interpretation relied upon in the previous rejection.
Moreover, the citations of Muroi merely indicate a preference which does not render an embodiment outside of the preferred embodiment, such as in the instant application, nonobvious. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989) [MPEP 2123]. Then, even if the interpretation of Muroi was changed to indicate layers (41)(43) in their entirety and not include portions (40a) of the layers, it would still render the claim obvious.
Separately, the submission of unexpected results is considered unpersuasive. The instant application is submitted to achieve unexpectedly improved adhesion and flowability when the heats of fusion of the polyolefin layers of an adhesive film are arranged to have the claimed formula. Muroi teaches controlling the heats of fusion of polyolefin layers of an adhesive film to control flowability and adhesion [0073][0077]. Then, the link between the heats of fusion and the desired properties is well known and not unexpected. Additionally, Muroi teaches the heat of fusion for the claimed 3 layers to overlap with the ranges taught in the instant application. Then, even if the interpretation relied upon in the previous rejection was considered to be impermissibly broad, the claimed relationship would still be within the skill of an ordinary artisan as a matter of routine optimization of a known relationship within a known range of values. [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)[MPEP 2144.05 II A]. Lastly, the instant claimed invention is not commensurate in scope with the instant examples per MPEP 716.02.
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 (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.
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 and 7 – 10 are rejected under 35 U.S.C. 103 by Muroi, US20170005302A1.
Regarding claim 1, Muroi teaches an adhesive film (40) for metal terminal (lead (21))[fig. 1],
which is interposed between a metal terminal (31) electrically connected to an electrode of an electrical storage device element (battery and electrodes)[0143] and an exterior material for electrical storage devices that seals the electrical storage device element (packaging material (10))[fig. 1][0143],
in which the adhesive film (40) for metal terminal (31) includes a laminate (layers (41)(42)(43))[fig. 2] including, in a stated order, a first polyolefin layer disposed on the metal terminal side (innermost layer (41))[fig. 2][0060], a base material (intermediate layer (42))[fig. 2][0079], and a second polyolefin layer disposed on the exterior material for electrical storage devices side (outermost layer (42))[fig. 2][0066];
a heat of fusion ΔH1 of the first polyolefin layer and a heat of fusion ΔH2 of the second polyolefin layer which are measured in accordance with provisions of JIS K 7122: 2012 satisfy a relationship of ΔH1>ΔH2 (portion of innermost layer (41) within area (40a) being more heat resistant that the outermost layer (42) outside of (40a))[0015][0017][0076][0130]; and
a heat of fusion ΔH3 of the base material which is measured in accordance with the provisions of JIS K 7122: 2012 is 70 J/g or more (60 J/g or more taught)[0082]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists [MPEP 21440.05 I].
Regarding claim 2, Muroi teaches the adhesive film for metal terminal according to claim 1, wherein the heat of fusion ΔH1 of the first polyolefin layer, the heat of fusion ΔH2 of the second polyolefin layer and the heat of fusion ΔH3 of the base material satisfy a relationship of ΔH3≥ΔH1>ΔH2 (portion of first layer (41) within area (40a) being more heat resistant that the second layer (42) outside of (40a) and intermediate layer being the most heat resistant)[0076][0130][0083].
Regarding claim 3, Muroi teaches the adhesive film for metal terminal according to claim 1, wherein the second polyolefin layer has a heat of fusion ΔH2 of 20 J/g or more and 70 J/g or less (30 – 100 J/g)[0015]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists [MPEP 21440.05 I].
Regarding claim 4, Muroi teaches the adhesive film for metal terminal according to claim 1, wherein the first polyolefin layer has a heat of fusion ΔH1 of 30 J/g or more and 80 J/g or less (30 – 100 J/g taught)[0015]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists [MPEP 21440.05 I].
Regarding claim 7, Muroi teaches the adhesive film for metal terminal according to claim 1, wherein the base material contains a polyolefin backbone [0079].
Regarding claim 8, Muroi teaches the adhesive film for metal terminal according to claim 1, in which the first polyolefin layer and the second polyolefin layer each have a thickness of 60 μm or less [0069][0064]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists [MPEP 21440.05 I].
Regarding claim 9, Muroi teaches the adhesive film for metal terminal according to claim 1, wherein a thickness of the base material is 120 μm or less (20 – 120 μm taught )[0081].
Regarding claim 10, Muroi teaches the adhesive film for metal terminal according to claim 1, wherein a thickness of the adhesive film for metal terminal is 220 μm or less [0064][0069][0081]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists [MPEP 21440.05 I].
Regarding claim 15, Muroi teaches the adhesive film for metal terminal according to claim 1, wherein the heat of fusion ΔH1 of an entirety of the first polyolefin layer and the heat of fusion ΔH2 of an entirety of the second polyolefin layer which are measured in accordance with provisions of JIS K 7122: 2012 satisfy a relationship of AH1> AH2 (values within the ranges wherein ΔH1>ΔH2)[0076]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists [MPEP 21440.05 I].
Claims 5 and 6 are rejected under 35 U.S.C. 103 by Muroi, US20170005302A1 as applied to claim 1 above, and further in view of Takada, US20160099447A1.
Regarding claim 5, Muroi teaches the adhesive film for metal terminal according to claim 1.
Muroi does not teach wherein a melting peak temperature mp1 of the first polyolefin layer, a melting peak temperature mp2 of the second polyolefin layer and a melting peak temperature mp3 of the base material measured in accordance with provisions of JIS K 7121: 2012 satisfy a relationship of mp3≥mp1>mp2.
Takada teaches an adhesive film (40) for a metal terminal (21) of a battery (11)[fig. 1]
wherein a melting peak temperature mp1 of the first polyolefin layer, a melting peak temperature mp2 of the second polyolefin layer and a melting peak temperature mp3 of the base material measured in accordance with provisions of JIS K 7121: 2012 satisfy a relationship of mp3≥mp1>mp2 (melting point of innermost (41) and outermost layer (42) are substantially equal and less than intermediate layer (43))[0022][fig. 4][0071][0076]. Further, Taka teaches that this melting point relationship allows for retainment of the thickness of the adhesive film while also increasing adhesiveness [0069][0076]. Then, it would have been obvious to one of ordinary skill in the art to combine the relationship of Takada into the film of Muroi to improve thickness retention and adhesiveness.
Regarding claim 6, Muroi teaches the adhesive film for metal terminal according to claim 1.
Muroi does not teach wherein a melt mass flow rate T1 of the first polyolefin layer, a melt mass flow rate T2 of the second polyolefin layer and a melt mass flow rate T3 of the base material at 230° C. satisfy a relationship of T2>T1>T3.
Takada teaches an adhesive film (40) for a metal terminal (21) of a battery (11)[fig. 1]
wherein a melt mass flow rate T1 of the first polyolefin layer, a melt mass flow rate T2 of the second polyolefin layer and a melt mass flow rate T3 of the base material at 230° C. satisfy a relationship of T2>T1>T3 [0062][0073][0076]. Further, Taka teaches that this melt flow relationship allows for retainment of the thickness of the adhesive film while also increasing adhesiveness [0073][0076]. Then, it would have been obvious to an ordinary artisan to combine the relationship of Takada into the film of Muroi to improve thickness retention and adhesiveness.
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 PATRICK M GREENE whose telephone number is (571)270-1340. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at (571)270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK MARSHALL GREENE/Examiner, Art Unit 1724
/BRIAN R OHARA/Examiner, Art Unit 1724