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 .
DETAILED ACTION
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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karube et al (previously cited in view of Furuta (previously cited).
As to claim 1 and 13, Karube discloses a protective cover member (fig 1), the protective cover member being configured to be placed on a face of an object, the face having an opening, the protective cover member comprising a laminate (combination of layers 22,11 and 21 as shown in fig 1, para 15-32), , the laminate includes: a protective membrane 11 having a shape configured to cover the opening when the member is placed on the face; and a silicone adhesive agent layer 21/22 (para 26, fig 1), and with respect to a plan view of the protective membrane, the adhesive agent layer is placed in a peripheral portion of the protective membrane, when a region where the adhesive agent layer is not formed is defined as a region P (fig 1-3, para 14-33), and a side surface of the laminate has a portion where outer peripheries of all layers included in the laminate are aligned in the thickness direction of the laminate and form the same flat surface (fig 1 shown the side surface of layer 11, 21 and 22 aligned and flat, also see para 32 – “the end faces of the housing-side adhesive layer 21, the water-proof sound transmitting membrane 11, and the support layer-side adhesive layer 22 are aligned with one another”). Note that layer 12 is NOT part of the laminate.
Karube discloses that the dimensions of a protective cover member/protective membrane and adhesive layer can be varied widely (para 23). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the protective cover disclosed above such that the protective cover member/protective membrane has an area of 20 mm2 or less, and the region P of the protective membrane has an area of 0.008 mm2 or more and 20 mm2 or less as varying the dimensions is an obvious design choice obvious to one of ordinary skill in the art as taught by Karube above. Additionally, changes in dimensions are obvious absent criticality demonstrated by the applicant. MPEP 2144.04.
Karube does not disclose the silicone adhesive agent layer includes a cured adhesive layer of a silicone adhesive agent composition including an addition-curable silicone adhesive agent. Furuta discloses an adhesive agent layer includes a cured adhesive layer of a silicone adhesive agent composition including an addition-curable silicone adhesive agent (para 52-54 65-66, 79-82). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the cover of Karube such that the silicone adhesive agent layer includes a cured adhesive layer of a silicone adhesive agent composition including an addition-curable silicone adhesive agent as taught by Furuta above as such enables crosslinking at low temperatures in less time (para 52).
As to claims 2-3, Furuta discloses the protective cover member wherein the silicone adhesive agent composition includes the addition-curable silicone adhesive agent as a main component, and the silicone adhesive agent composition does not include a peroxide-curable silicone adhesive agent (para 79-82, KR3700).
As to claim 4, Furuta discloses that the cured adhesive layer has a gel fraction of 25 to 65 weight% (para 49. 82).
As to claim 5, Karube as modified by Furuta disclose the adhesive agent layer and/or the cured adhesive layer is in contact with the protective membrane (Karube, fig 1).
As to claim 6, Karube as modified by Furuta discloses the adhesive agent layer and/or the cured adhesive layer forms a joining surface to be joined to the face of the object (Karube, fig 1).
As to claim 7, Karube as modified by Furuta discloses the adhesive agent layer includes a first adhesive agent layer 21 and a second adhesive agent layer 22 (fig 1, para 23-26 Karube), and the laminate includes the first adhesive agent layer positioned on a first principal surface side of the protective membrane and the second adhesive agent layer positioned on a second principal surface side of the protective membrane (fig 1, para 23-26).
As to claim 8, Karube as modified by Furuta discloses the adhesive agent layer includes an adhesive tape including a substrate (Furuta release layer, para 65) and the cured adhesive layer placed on at least one surface of the substrate 13 (Furuta, para 60-61, fig 3).
As to claim 9, the adhesive tape is double sided (fig 1, Karube).
As to claim 10, the substrate includes a heat resistant resin (Furuta para 65, PET).
As to claim 11 and 12,. Karube discloses a protective cover comprising a gas permeable, protective PTFE membrane 11 and (para 15-19, figs 1-3).
As to claim 14, it is not clear if Furuta or Karube disclose the exact L2/L1 ratio recited by claim 14 . Karube (figs 1-6) discloses that the adhesive agent layer is placed on a peripheral portion of the protective membrane. Additionally, Karube (figs 1-6) disclose L2 as a minimum linear dimension of a region of the adhesive agent layer that overlaps the protective membrane, and further discloses an L1 defined by a minimum linear dimension form a center of the protective membrane to the perimeter of the protective membrane. dimension as defined in the claim. Karube discloses that the dimensions of each layer of the protective cover can vary widely (para 23). Since the overlap between the adhesive agent layer and the protective membrane can comprise any number of regions, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, for the cover of to have a ratio L2/L1 of 0.3 of less, wherein, with respect to the plan view of the protective member, L1 is defined by a minimum linear dimension from a center of the protective membrane to the perimeter of the protective membrane, and L2 is defined by a minimum linear dimension of a region of the adhesive agent layer that overlaps the protective membrane as the dimensions of each layer is an obvious design choice obvious to one of ordinary skill in the art as taught by Karube above. Additionally, changes in dimensions are obvious absent criticality demonstrated by the applicant. MPEP 2144.04.
As to claim 15, the cover membrane of Karube can be used to cover a MEMS device (fig 1, para 14-33).
As to claim 16, Karube discloses member supplying sheet comprising: a substrate sheet 12; and at least one protective cover member placed on the substrate sheet, wherein the protective cover member is the protective cover member according to claim 1 (fig 1, para 14-33).
Response to Arguments
Applicant's arguments filed 11/26/25 have been fully considered but they are not persuasive. Applicant asserts Karube does not meet the limitations of amended claim 1 because the support layer 12 of Karube layer extends beyond the housing-side adhesive layer. Applicant’s argument is not persuasive because, as detailed in the body of the rejection above, layer 12 is NOT part of the laminate. Applicant cites figs 3 and 6 of the specifications as evidence of the alleged differences between the claimed invention and Karube. This argument is not persuasive because the claims are not commensurate with the disclosure of figs 3 and 6. The claims do not require laminate to have another layer, in addition to the protective membrane.
Applicant asserts that varying the dimensions of Karube’s membrane is not obvious because “it is common technical knowledge among those skilled in the art that reducing the size of a member makes it more prone to be detached”. This argument is not persuasive because there is no objective evidence of record to establish such. Additionally, the standard for overcoming an obvious rejection based on MPEP 2144.04 IV (A) is to demonstrate critically or show unexpected results. The examiner respectfully submits the applicant has failed to do such.
Applicant argues that the examiner has not provided a rationale for the proposed modification to the dimensions. This is not correct, as the examiner clearly cited MPEP 2144.04 which enables “legal precedent as a source of supporting rationale.”
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746