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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/12/2026 has been entered.
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.
Claim(s) 10 and 13-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa (US 2019/0283334).
Regarding claims 10, 13-15 and 27, Ishikawa discloses dielectric welding machine, i.e. assembly, (0145) comprising a high frequency dielectric welding film, i.e. a high frequency dielectric heating adhesive, (0002, 0027, 0046) to bond plurality of adherends to each other and the adhered are bonded by the high frequency dielectric heating adhesive, i.e. three or more adherend to each other such as a first high frequency dielectric heating adhesive disposed between the first adherend and the second adherend and a second high frequency dielectric heating adhesive disposed between the second adherend and the third adherend and therefore the order would be the first adherend, the first high-frequency-dielectric-heating adhesive, the second adherend, the second high-frequency-dielectric-heating adhesive, and the third adherend, (0002, 0138), the high frequency dielectric heating adhesive comprising a thermoplastic resin such as polyolefin resin (0062) and dielectric filler such as zinc oxide configured to generate heat upon application of a high frequency electric film (0086-0088), wherein the adherends are made of polyester (0040). Given that Ishikawa discloses the same adhesive composition and the same adherend material as disclosed in present specification and claimed in present claim, it is clear that Ishikawa would intrinsically possess the same properties as claimed in present claim.
While Ishikawa fails to exemplify the presently claimed assembly nor can the claimed assembly be “clearly envisaged” from Ishikawa as required to meet the standard of anticipation (cf. MPEP 2131.03), nevertheless, in light of the overlap between the claimed assembly and the assembly disclosed by Ishikawa, absent a showing of criticality for the presently claimed assembly, it is urged that it would have been within the bounds of routine experimentation, as well as the skill level of one of ordinary skill in the art, to use assembly which is both disclosed by Ishikawa and encompassed within the scope of the present claims and thereby arrive at the claimed invention. Ishikawa discloses dielectric welding machine comprising a high frequency dielectric welding film to bond plurality of adherends to each other as explained above, they overlap present claims, it would have been obvious to one of ordinary skill in the art at the time of the invention to use the assembly which is disclosed by the reference and meets the present claims and thereby arrive at the present invention.
Regarding claim 16, Ishikawa discloses the assembly of claim 10, wherein the dielectric property of the high frequency dielectric adhesive is 0.005 or more (0035).
Regarding claim 17, Ishikawa discloses the assembly of claim 10, wherein the high frequency dielectric adhesive is in a form on a film, i.e. sheet, (0057).
Regarding claim 18, Ishikawa discloses the assembly of claim 17 but does not specifically disclose the thickness relationship between the adhesive layer and adherend. Ishikawa discloses that the thickness of adhesive layer needs to be between 10 to 2000 microns to obtain proper adhesiveness (0102-0104) and the adhesive is used in thick and large structure (0196) and therefore it is deemed that the adherends of Ishikawa have larger thickness than the adhesive and meets the present claim. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 19, Ishikawa discloses the assembly of claim 10, wherein the thickness of the high frequency dielectric adhesive is in a range of 10 to 2000 microns (0102).
Regarding claim 20, Ishikawa discloses the assembly of claim 10, wherein given that Ishikawa does not disclose any variation in the thickness of the high frequency dielectric adhesive, it is clear that the thickness of the high frequency dielectric adhesive of Ishikawa is uniform, i.e. accurate.
Regarding claims 21 and 26, Ishikawa discloses the assembly of claim 10, wherein the thermoplastic resin is polypropylene having a maleic anhydride structure (0182).
Regarding claim 22, Ishikawa discloses the assembly of claim 21, wherein the dielectric filler is zinc oxide (0041).
Regarding claims 23-24, Ishikawa discloses the assembly of claim 22, wherein
given that Ishikawa discloses the same adhesive composition and the same adherend material as disclosed in present specification and claimed in present claim, it is clear that Ishikawa would intrinsically possess the same properties as claimed in present claim.
Regarding claim 25, Ishikawa discloses the assembly of claim 10, wherein the thermoplastic resin is polyolefin resin (0039).
Claim(s) 10, 13-17 and 20-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taya et al. (US 2019/0352546).
Regarding claims 10, 13-15, and 21-27, Taya discloses dielectric welding machine, i.e. assembly, (0132) comprising a high frequency dielectric welding film, i.e. a high frequency dielectric heating adhesive, (0010, 0012) to bond three or more adherends to each other (0126), the high frequency dielectric heating adhesive comprising a thermoplastic resin such as polyolefin resin such as ethylene vinyl acetate copolymer or maleic anhydride modified polypropylene (0010, 0022, 0046) and dielectric filler such as zinc oxide configured to generate heat upon application of a high frequency electric film (0072-0077), wherein the adherends are made of polyester (0128) and the adhered are bonded by the high frequency dielectric heating adhesive (0010). Given that the adhesive is used to bond three or more adherends to each other, it is clear that when three adherends are next to each other with adhesive between them such as a first high frequency dielectric heating adhesive disposed between the first adherend and the second adherend and a second high frequency dielectric heating adhesive disposed between the second adherend and the third adherend, it meets the claimed limitation of the first adherend, the first high-frequency-dielectric-heating adhesive, the second adherend, the second high-frequency-dielectric-heating adhesive, and the third adherend. Further, given that Taya discloses the same adhesive composition and the same adherend material as disclosed in present specification and claimed in present claim, it is clear that Taya would inherently have the same properties as claimed in present claims.
Regarding claim 16, Taya discloses the assembly of claim 10, wherein the dielectric property of the high frequency dielectric adhesive is 0.005 or more (0102).
Regarding claim 17, Taya discloses the assembly of claim 10, wherein the high frequency dielectric adhesive is in a form on a film, i.e. sheet, (0010).
Regarding claim 20, Taya discloses the assembly of claim 17, wherein given that Taya does not disclose any variation in the thickness of the high frequency dielectric adhesive, it is clear that the thickness of the high frequency dielectric adhesive of Taya is uniform, i.e. accurate.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taya et al. (US 2019/0352546).
Regarding claims 18-19, Taya discloses the assembly of claim 17 but does not specifically disclose the thickness relationship between the adhesive layer and adherend. Taya discloses that the thickness of adhesive layer needs to be between 10 to 2000 microns to obtain proper adhesiveness (0098-0100) and the adhesive is used in thick and large structure (0145) and therefore it is deemed that the adherends of Taya have larger thickness than the adhesive and meets the present claim. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed 03/12/2026 have been fully considered but they are not persuasive.
Applicant argues that Taya is fundamentally different where the second adherend and the first adherend are arranged side by side so as to face the first adherend, rather than being stacked sequentially. However, it is noted that Taya only discloses one of the embodiments in 0126. There is nothing in 0126 of Taya that restricts three adherends to be in a sequence as presently claimed.
Applicant argues that the claimed laminated structure is absent from Taya. However, given that the adhesive is used to bond three or more adherends to each other, it is clear that when three adherends are next to each other with adhesive between them such as a first high frequency dielectric heating adhesive disposed between the first adherend and the second adherend and a second high frequency dielectric heating adhesive disposed between the second adherend and the third adherend, it meets the claimed limitation of the first adherend, the first high-frequency-dielectric-heating adhesive, the second adherend, the second high-frequency-dielectric-heating adhesive, and the third adherend.
Applicant pointed to table 1 and argues that value of TF2-TF1 is far outside the claimed range. However, it is noted that the data is not persuasive given that the data is not commensurate in scope with the scope the claim. The examples disclose specific type and amount of adherends and adhesives while present claim broadly recite any type of adherend and any amount and type of thermoplastic resin and dielectric filler for adhesive layer. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range.
Applicant argues that the claimed properties are not inherent in Taya. However, it is noted that Taya discloses the same materials for adherends and adhesive as disclosed in present specification and claims. The Patent and Trademark Office can require Applicant to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on Applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 U.S.P.Q. 431 (CCPA 1977).
Applicant pointed to table 1 and argues that value of TF2-TF1 is far outside the claimed range. However, it is noted that the data is not persuasive given that the data is not commensurate in scope with the scope the claim. The examples disclose specific type and amount of adherends and adhesives while present claim broadly recite any type of adherend and any amount and type of thermoplastic resin and dielectric filler for adhesive layer. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range.
Applicant argues that examples of Ishikawa consistently involve bonding only two adherends with a single adhesive layer. However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Applicant’s attention is drawn to paragraphs 0138-0139 of Ishikawa which discloses plurality of adherends as explained above.
Applicant argues that the claimed properties are not inherent in Ishikawa. However, it is noted that Ishikawa discloses the same materials for adherends and adhesive as disclosed in present specification and claims. The Patent and Trademark Office can require Applicant to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on Applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 U.S.P.Q. 431 (CCPA 1977).
In light of applicant’s filing of a proper terminal disclaimer on February 19, 2026, the double patenting rejection of record is overcome.
Conclusion
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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