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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/19/2026 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) 12, 15-21 and 23-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taya et al. (US 2019/0352546).
Regarding claims 12, 15-19 and 25-29, 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 (0010, 0022) 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 20, Taya discloses the assembly of claim 18, wherein the dielectric property of the high frequency dielectric adhesive is 0.005 or more (0102).
Regarding claim 21, Taya discloses the assembly of claim 12, wherein the high frequency dielectric adhesive is in a form on a film, i.e. sheet, (0010).
Regarding claim 23, Taya discloses the assembly of claim 21, wherein the thickness of the high frequency dielectric adhesive is in a range of 10 to 2000 microns (0098).
Regarding claim 24, Taya discloses the assembly of claim 21, 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) 12, 15-21 and 22-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa (US 2019/0283334).
Regarding claims 12, 15-19 and 25-29, 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, 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) and the adhered are bonded by the high frequency dielectric heating adhesive (0002, 0138). 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 20, Ishikawa discloses the assembly of claim 18, wherein the dielectric property of the high frequency dielectric adhesive is 0.005 or more (0035).
Regarding claim 21, Ishikawa discloses the assembly of claim 12, wherein the high frequency dielectric adhesive is in a form on a film, i.e. sheet, (0057).
Regarding claim 22, Ishikawa discloses the assembly of claim 21 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 23, Ishikawa discloses the assembly of claim 21, wherein the thickness of the high frequency dielectric adhesive is in a range of 10 to 2000 microns (0102).
Regarding claim 24, Ishikawa discloses the assembly of claim 21, 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.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taya et al. (US 2019/0352546).
Regarding claim 22, Taya discloses the assembly of claim 21 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 02/19/2026 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 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 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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