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 .
Election/Restrictions
Claim 15 has been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/24/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) were submitted on 11/02/2022 and 08/22/2023. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 7, 9-14 and 16 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by US Patent Application Publication 2016/0152872 to Furuta et al.
With respect to claim 1, Furuta et al. teach 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.
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 9, Furuta et al. teach the thermally conductive acrylic sheet, wherein the inorganic filler is surface-modified with a silane coupling agent (Furata et al.: Sections [0118]-[0121]).
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.
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.
Claim 17 is 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 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.
Conclusion
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.
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, the examiner’s supervisor, Tiffany Legette can be reached on (571) 270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LINGWEN R ZENG/Examiner, Art Unit 1723 4/6/2026