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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed October 27, 2025, with respect to the rejection(s) under 35 U.S.C. 112(b) have been fully considered and are persuasive. Applicant has amended claim 9 to remove the portion of the claim lacking antecedent basis. Accordingly, the rejection is withdrawn.
Applicant’s amendments and arguments, filed October 27, 2025, with respect to the rejection(s) under 35 U.S.C. 102(a)(1) in view of Taniguchi et al. (cited in the previous Office Action) have been fully considered and are persuasive. Applicant has amended the claims to change the scope of the claims outside the scope of the previous prior art. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in over Taniguchi et al. (JP2003238745, English translation provided for citations, hereinafter referred to as “Taniguchi”) in view of Janke et al. (WO2019048593, hereinafter referred to as “Janke”) and further in view of Gim et al. (KR101764782, English translation provided for citations, hereinafter referred to as “Gim”).
Applicant argues that the claimed combination results in unexpected synergistic effects. To the extent that Applicant’s argument applies in view of the new grounds of rejection, it is noted that “whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support” (see MPEP 716.02(d)). In this instant case, it would appear that the claimed total content ratio, dielectric filler content ratio, and dielectric heating frequency are not commensurate in scope with examples on page 43 of the instant specification. “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)” (see MPEP 716.02(d) III).
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 1-9, 11, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi et al. (JP2003238745, English translation provided for citations, hereinafter referred to as “Taniguchi”) in view of Janke et al. (WO2019048593, hereinafter referred to as “Janke”) and further in view of Gim et al. (KR101764782, English translation provided for citations, hereinafter referred to as “Gim”).
As to Claim 1: Taniguchi teaches an adhesive containing a dielectric heating resin composition ([0006]) (i.e., an adhesive agent for high-frequency dielectric heating) comprising a polyolefin resin component (A) (i.e., a thermoplastic resin) ([0018]) and further comprising a ferroelectric substance (c) (i.e., a dielectric material/filler) ([0025]). Taniguchi teaches exemplary compositions wherein said polyolefin resin component is a silane-modified polyethylene copolymer ([0034]), which reads on the claimed wherein the first thermoplastic resin (A1) is a silane-modified thermoplastic resin. Taniguchi further teaches that the composition may comprise more than one polyolefin resin ([0019]) chosen from the group comprising non-silane functionalized thermoplastic resins (e.g., polyethylene, polypropylene, see para. [0018]), the inclusion of which reads on wherein the second thermoplastic resin (A2) is a thermoplastic resin that is not silane-modified. Taniguchi teaches that the composition is heated and melted upon application of a frequency in the range of 1 to 5000 MHz ([0029]). Taniguchi further teaches that the ferroelectric substance may be present in an amount of 0.1 to 20 vol% ([0015]) and that the total polyolefin content is in the range of 70 to 99 vol%, which overlaps with the claimed range for a total content ratio of the thermoplastic resin (A) and the dielectric filler (B). In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Taniguchi suggests, that the overlapping portion is a useable range for an adhesive resin composition capable of heating upon application of a frequency such that said composition exhibits good flowability, adhesion, and melting kinetics ([0023]).
While Taniguchi teaches wherein the polyolefin resins can be used in combination of two or more kinds (including the exemplary silane-modified polyethylene copolymer ([0034]) and another polyolefin resin ([0019]) chosen from the group comprising non-silane functionalized thermoplastic resins (e.g., polyethylene, polypropylene, see para. [0018])), Taniguchi does not explicitly teach wherein both are present or relative amounts thereof.
Janke teaches a reactive hot melt adhesive composition having good adhesion on non-polar and polar substrates (Title and Abstract) comprising at least one thermoplastic silane group containing polyolefin and an additional thermoplastic polymer that does not contain any silane groups, such as an unfunctionalized polyolefin (pg. 11, para. 2). Janke teaches that the thermoplastic silane group containing polyolefin may be present in an amount of 30 to 90 wt% (pg. 10, para. 4) and further teaches that the thermoplastic polymer without silane groups may be present in an amount of 5 to 50 wt% of the composition (pg. 12, para. 1). Taniguchi and Janke are considered analogous art because they are directed towards the same field of endeavor, namely, hot melt adhesive compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine a first thermoplastic resin that is silane-modified and a second thermoplastic resin that is not silane-modified based on the teaching of Taniguchi that polyolefin resins can be used in combination of two or more kinds (including the exemplary silane-modified polyethylene copolymer ([0034]) and another polyolefin resin ([0019]) chosen from the group comprising non-silane functionalized thermoplastic resins (e.g., polyethylene, polypropylene, see para. [0018])) and further based on the explicit teaching of Janke that blends of at least one thermoplastic silane group containing polyolefin and an additional thermoplastic polymer that does not contain any silane groups are known within the art as suitable for forming hot melt adhesives capable of adhering to both polar and non-polar surfaces. Furthermore, the amounts for each of the thermoplastic polymers taught by Janke overlaps with the claimed range for a volume content ratio of the first thermoplastic resin (A1) and second thermoplastic resin (A2). It is noted that while Janke does not measure the relative amounts of said thermoplastic polymers as a volume content ratio, the difference between a weight percentage taught by Janke and the claimed volume percentage would not differ in an amount such that the ranges contemplated by Janke would not overlap with the claimed range. Specifically, the first and second thermoplastic material would reasonably be expected to have similar densities as both thermoplastics may both be based on, inter alia, poly α-olefins, resulting in a small deviation between volume percentage and weight percentage. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Janke suggests, that the overlapping portion is a useable range for an amount of a first thermoplastic resin that is silane-modified and a second thermoplastic resin that is not silane-modified within a hot-melt adhesive composition such that it exhibits good adhesion to substrates with disparate polarity.
Taniguchi teaches that the composition may comprise a ferroelectric substance (c) (i.e., a dielectric material/filler) (e.g., barium titanate ([0025])) for the purpose of heating the composition upon application of a frequency ([0016]). However, Taniguchi does not teach wherein the ferroelectric substance is zinc oxide.
Gim teaches a polymer resin-based induction heating adhesive ([0001]-[0002]) wherein said adhesive comprises metal particles ([0009]) which may be selected from the group comprising zinc oxide and barium titanate ([0026]). Taniguchi and Gim are considered analogous art because they are directed towards the same field of endeavor, namely adhesive resin compositions comprising additives suitable for induction heating. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the ferroelectric substance taught by Taniguchi (which may be barium titanate) with zinc oxide and the motivation would have been that Gim teaches that both zinc oxide and barium titanate are known additives known within the art as suitable for addition to resins to achieve heating of a composition upon exposure to a frequency. Substituting equivalents known for the same purpose is prima facie obvious (see MPEP 2144.06 II).
As to Claim 2: Taniguchi teaches the adhesive agent of claim 1 (supra).
Taniguchi teaches exemplary compositions wherein said polyolefin resin component is a silane-modified polyethylene copolymer ([0034]), which reads on the claimed wherein the first thermoplastic resin (A1) is a silane-modified polyolefin.
As to Claim 3: Taniguchi teaches the adhesive agent of claim 1 (supra).
Taniguchi further teaches that the composition may comprise more than one polyolefin resin ([0019]) chosen from the group comprising non-silane functionalized thermoplastic resins that are derived from polyolefins (e.g., polyethylene, polypropylene, see para. [0018]), which reads on wherein the second thermoplastic resin (A2) is a polyolefin resin that is not silane-modified.
As to Claims 4-6: Taniguchi teaches the adhesive agent of claim 1 (supra).
Taniguchi further teaches that the polyolefin resin may comprise a monomer containing a carboxylic acid anhydride group ([0021]) which reads on the claimed polyolefin resin that comprises a polar site that is an acid site that is an acid anhydride structure.
As to Claim 7: Taniguchi teaches the adhesive agent of claim 1 (supra).
Taniguchi teaches exemplary compositions wherein said polyolefin resin component is a silane-modified polyethylene copolymer ([0034]), which reads on the claimed wherein the first thermoplastic resin (A1) is a silane-modified thermoplastic resin. Taniguchi teaches the polyolefin resin component may be polyethylene or polypropylene ([0018]) which may form copolymers with non-olefin comonomers ([0020]), but further teaches that said comonomers should not exceed 50 mol% of the resulting copolymer ([0020]), which is construed to read on the claimed wherein a “main composition” is polyethylene or polypropylene (i.e., the majority of the monomer units of the resin).
As to Claim 8: Taniguchi teaches the adhesive agent of claim 1 (supra).
Taniguchi further teaches that the composition may comprise more than one polyolefin resin ([0019]) chosen from the group comprising non-silane functionalized thermoplastic resins (e.g., polyethylene, polypropylene, see para. [0018]), which reads on wherein the second thermoplastic resin (A2) is a thermoplastic resin that is not silane-modified. Taniguchi teaches the polyolefin resin component may be polyethylene or polypropylene ([0018]) which may form copolymers with non-olefin comonomers ([0020]), but further teaches that said comonomers should not exceed 50 mol% of the resulting copolymer ([0020]), which is construed to read on the claimed wherein a “main composition” is polyethylene or polypropylene (i.e., the majority of the monomer units of the resin).
As to Claim 9: Taniguchi teaches the adhesive agent of claim 1 (supra).
Taniguchi further teaches that the composition may comprise more than one polyolefin resin ([0019]) chosen from the group comprising non-silane functionalized thermoplastic resins (e.g., polyethylene, polypropylene, see para. [0018]), which reads on wherein the second thermoplastic resin (A2) is a thermoplastic resin that is not silane-modified. Taniguchi teaches the polyolefin resin component may be polyethylene or polypropylene ([0018]) which may form copolymers with non-olefin comonomers ([0020]), but further teaches that said comonomers should not exceed 50 mol% of the resulting copolymer ([0020]).
It is also noted that Janke teaches wherein the at least one thermoplastic silane group containing polyolefin and an additional thermoplastic polymer that does not contain any silane groups may both be based on poly-α-olefins (pg. 10, para. 1; pg. 11, para. 3).
As to Claim 11: Taniguchi teaches the adhesive agent of claim 1 (supra).
Taniguchi is silent towards the melt flow rate of the composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. melt flow rate, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 15: Taniguchi teaches the adhesive agent of claim 1 (supra).
Taniguchi further teaches that the ferroelectric substance (c) which reads on the claimed dielectric material (see above) may have an average particle size in the range of 0.1 to 500 µm ([0026]). While Taniguchi does not disclose the method used to measure the particle size of the dielectric material (i.e., in accordance with JIS Z 8819-2: 2001). However, Taniguchi does explicitly contemplate a range of average particle size that is construed to overlap with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Taniguchi suggests, that the overlapping portion is a useable range for the particle size of a dielectric material (e.g., barium titanate) within a resin composition with properties amenable for dielectric heating applications having a sufficient size for blending into the polyolefin resin ([0026]) while maintaining a balance of heating properties and adhesive strength of the composition ([0027]).
As to Claim 16: Taniguchi teaches the adhesive agent of claim 1 (supra).
Taniguchi further teaches that the composition may be molded into a form of an adhesive “plate” having the dimensions 100 x 100 x 1 mm ([0035]), which reads on the claimed sheet according to the instant specification para. [0082] (i.e., a sheet-shaped object having a uniform thickness of 1 mm or less).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767