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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
In response to the amendment received on 07/09/2026:
Claims 1 and 16 have been amended.
Claim 9 has been canceled.
The previous prior art has been applied. All changes made are necessitated by the amendment. Thus the action is final.
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.
Claims 1-3, 7, 10-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2016/0152872 to Furuta et al.
With respect to claim 1, Furuta et al. teach a pressure-sensitive adhesive layer (a thermally conductive acrylic sheet), which is prepared from a thermally conductive acrylic composition comprising an acrylic resin, a tackifying resin, thermally-conductive particles (an inorganic filler), and a photoinitiator, wherein the tackifying resin comprises a hydrogenated rosin ester (Furata et al.: Sections [0037], [0062]-[0065], [0069]-[0079] and [0111]-[0115]).
Furuta et al. teach the same thermally conductive acrylic sheet, therefor, lacking of any clear distinction between the claimed thermally conductive acrylic sheet and those disclosed by Furuta et al., it would be inherent for the thermally conductive acrylic sheet of Furuta et al. to have the adhesive strength of the thermally conductive acrylic sheet is 1 kgf/cm or more.
Furuta et al. further teach the pressure-sensitive adhesive layer (the thermally conductive acrylic sheet) comprising the thermally-conductive particles (the inorganic filler) and a silane coupling agent (Furata et al.: Sections [0118]-[0121]).
With respect to the limitation, “the inorganic filler is surface-modified with a silane coupling agent,” it would have the same functionality or purpose as the claimed limitation. Accordingly, in a product-by-process claim, the patentability of a product does not depend on its method of production. In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113.
With respect to claim 2, Furuta et al. teach the thermally conductive acrylic sheet, wherein the hydrogenated rosin ester comprises a compound having no unsaturated bond, comprising two or more bonded 6-membered ring structures, and having one or more functional groups (Furata et al.: Sections [0111]-[0115]).
With respect to claim 3, Furuta et al. teach the thermally conductive acrylic sheet, wherein the hydrogenated rosin ester has a softening point of 95 to 105°C (80 to 110°C) (Furata et al.: Sections [0111]-[0115]).
Furuta et al. teach the same hydrogenated rosin ester, therefor, lacking of any clear distinction between the claimed hydrogenated rosin ester and those disclosed by Furuta et al., it would be inherent for the hydrogenated rosin ester of Furuta et al. to have an acid value of 2 to 20 mg KOH/g.
With respect to claim 7, Furuta et al. teach the thermally conductive acrylic sheet, wherein the content of the tackifying resin is 3 to 30% by weight based on the total weight of the acrylic resin and the tackifying resin (Furata et al.: Sections [0111]-[0115]).
With respect to claim 10, Furuta et al. teach the thermally conductive acrylic sheet, wherein the inorganic filler is a mixture in which an inorganic filler having an average particle size of 1 to 40 µm and an inorganic filler having an average particle size of greater than 40 to 80 µm are mixed (Furata et al.: Section [0078]).
With respect to claim 11, Furuta et al. teach the thermally conductive acrylic sheet, wherein the content of the photoinitiator is 0.05 to 3 parts by weight relative to the total weight of the acrylic resin, the tackifying resin, and the inorganic filler (Furata et al.: Section [0065]).
With respect to claim 12, Furuta et al. teach the thermally conductive acrylic sheet, wherein the thermally conductive acrylic composition further comprises a dispersion agent (an anti-settling agent) (Furata et al.: Sections [0090] and [0127]).
With respect to claim 13, Furuta et al. teach the thermally conductive acrylic sheet, wherein the content of the anti-settling agent is 0.2 to 0.7 parts by weight relative to the total weight of the acrylic resin, the tackifying resin, and the inorganic filler (Furata et al.: Section [0090]).
With respect to claim 14, Furuta et al. teach the same thermally conductive acrylic sheet, therefor, lacking of any clear distinction between the claimed thermally conductive acrylic sheet and those disclosed by Furuta et al., it would be inherent for the thermally conductive acrylic sheet of Furuta et al. to have the thermally conductive acrylic sheet shows one endothermic peak in the first differential scanning calorimetry (DSC) curve obtained when the temperature is raised from -100° C. to 300° C. at a temperature elevation rate of 20° C./minute by DSC, and the temperature showing the endothermic peak is 95 to 105° C.
With respect to claim 16, Furuta et al. teach a battery module, which comprises a housing; a battery cell; and a thermally conductive acrylic sheet, wherein the thermally conductive acrylic sheet is prepared from a thermally conductive acrylic composition comprising an acrylic resin, a tackifying resin, an inorganic filler, and a photoinitiator, the tackifying resin comprises a hydrogenated rosin ester (Furata et al.: Sections [0037], [0062]-[0065], [0069]-[0079] and [0111]-[0115]).
Furuta et al. teach the same thermally conductive acrylic sheet, therefor, lacking of any clear distinction between the claimed thermally conductive acrylic sheet and those disclosed by Furuta et al., it would be inherent for the thermally conductive acrylic sheet of Furuta et al. to have the adhesive strength of the thermally conductive acrylic sheet is 1 kgf/cm or more.
Furuta et al. further teach the pressure-sensitive adhesive layer (the thermally conductive acrylic sheet) comprising the thermally-conductive particles (the inorganic filler) and a silane coupling agent (Furata et al.: Sections [0118]-[0121]).
With respect to the limitation, “the inorganic filler is surface-modified with a silane coupling agent,” it would have the same functionality or purpose as the claimed limitation. Accordingly, in a product-by-process claim, the patentability of a product does not depend on its method of production. In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113.
With respect to claim 17, Furuta et al. discloses the claimed invention except for the thermally conductive acrylic sheet is positioned at the lower end inside the battery module. It would have been obvious to one having ordinary skill in the art at the time the invention was made to the thermally conductive acrylic sheet is positioned at the lower end inside the battery module, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 (CCPA 1950).
Claim 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2016/0152872 to Furuta et al. in view of US Patent Application Publication 2018/0194975 to Yamanari et al.
With respect to claim 4, Furuta et al. do not specifically teach but Yamanari et al. teach the thermally conductive acrylic sheet, wherein the hydrogenated rosin ester comprises a first hydrogenated rosin ester and a second hydrogenated rosin ester having an acid value different from that of the first hydrogenated rosin ester (Yamanari et al.: Sections [0071], [0075]-[0092] and [0125]; Claim 1).
It would have been obvious as of the effective filing dated of the claimed invention to have modified Furuta et al. with the teaching above from Yamanari et al. with the motivation of having a means such the PSA sheet would be highly durable against repeated deformation.
With respect to claim 5, Furuta et al. in view of Yamanari et al. teach the same first and second hydrogenated rosin ester, therefor, lacking of any clear distinction between the claimed first and second hydrogenated rosin ester and those disclosed by Furuta et al. in view of Yamanari et al., it would have expected for the first and second hydrogenated rosin ester of Furuta et al. in view of Yamanari et al. to have the first hydrogenated rosin ester has an acid value of 2 to 10 mg KOH/g, and the second hydrogenated rosin ester has an acid value of 11 to 20 mg KOH/g as claimed lacking unexpected result showing otherwise.
With respect to claim 6, Furuta et al. in view of Yamanari et al. discloses the claimed invention except for the mixing ratio of the first hydrogenated rosin ester and the second hydrogenated rosin ester is a weight ratio of 1:0.5 to 1:4. It would have been obvious as of the effective filing dated of the claimed invention to have the mixing ratio of the first hydrogenated rosin ester and the second hydrogenated rosin ester is a weight ratio of 1:0.5 to 1:4, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2016/0152872 to Furuta et al. in view of US Patent Application Publication 2014/0004342 to Tojo et al.
With respect to claim 8, Furuta et al. do not specifically teach the thermally conductive acrylic sheet, wherein the content of the inorganic filler is 83% by weight or more based on the total weight of the acrylic resin, the tackifying resin, and the inorganic filler.
However, Tojo et al. teach a flame-retardant thermally-conductive pressure sensitive adhesive sheet comprising a hydrated metal compound (inorganic filler), it is preferable that the flame-retardant thermally-conductive pressure-sensitive adhesive layer contains 100 parts by weight of the (a) an acrylic polymer and 100 to 500 parts by weight of the (b) a hydrated metal compound and it is preferable that the (a) an acrylic polymer contains, as a polar group-containing monomer, a nitrogen-containing monomer and/or a hydroxyl group-containing monomer as a component (Tojo et al.: Sections [0013]).
It would have been obvious as of the effective filing dated of the claimed invention to have modified Furuta et al. with the teaching above from Tojo et al. with the motivation of having a means such the flame-retardant thermally-conductive pressure-sensitive adhesive sheet having excellent thermally conductive properties, having excellent adhesive properties to an adherend and an excellent holding force, and furthermore, having high flame retardancy.
Response to Arguments
Applicant’s arguments filed 07/09/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art did not teach the limitation, “inorganic filler is not surface-modified with a silane coupling agent.”
Examiner respectfully disagrees with Applicant's interpretation of the claim language applied to the prior art. The prior art did not specifically teach the process of having the inorganic filler is not surface-modified with a silane coupling agent, however, the pressure-sensitive adhesive layer (the thermally conductive acrylic sheet) of Furuta et al. comprising both the inorganic filler and the silane coupling agent. The comparative example 2 only shows an inorganic filler is not surface modified with a silane coupling agent. There is no example show an inorganic filler mixed with silane coupling agent. The comparative example 2 can not be used to compare with the prior art. In other words, the claim does not specify the criticality or advantage of having “inorganic filler is surface-modified with a silane coupling agent” over “inorganic filler is mixed with a silane coupling agent.”
Therefore the rejections will be maintained.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINGWEN R ZENG whose telephone number is (571)272-6649. The examiner can normally be reached 8am-5pm.
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/LINGWEN R ZENG/Examiner, Art Unit 1723 9/18/2026
