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 .
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) 1-5 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murata et al. (US 2015/0061173) in view of Takamori (US 2021/0292605).
Regarding claim 1, Murata discloses a hot melt magnetic tape (0032) for a foam molded body (0003), the tape comprising a magnetic layer formed from hot melt magnetic material (0011-0013), wherein the hot melt magnetic material includes a thermoplastic resin containing an ethylene vinyl acetate copolymer (0013, 0028) and magnetic powder (abstract), wherein the magnetic resin material contains 10 to 80 % by weight of magnetic material powder (0026) and therefore the ethylene vinyl acetate copolymer is present in an amount of 20 to 90% by weight. Further, Examples in Murata does support the ethylene vinyl acetate copolymer amount in a range of 20 to 90 % by mass (examples 1-7).
Murata does not disclose the amount of vinyl acetate monomer.
Takamori discloses hot melt adhesive comprising ethylene vinyl acetate copolymer such as Ultrasen 633 or 710 (0039, 0092) to obtain reduced thread formation (0039). Given that ethylene vinyl acetate copolymer of Takamori is the same as disclosed in the present specification, it is clear that the ethylene vinyl acetate copolymer of Takamori would have the same monomer content as claimed in present claim.
It would have been obvious to one of ordinary skill in the art to use the specific ethylene vinyl acetate of Takamori in the hot melt magnetic material to obtain reduced tread formation. Given that Murata in view of Takamori discloses the same hot melt magnetic material and its amount as claimed in present claim, it is clear that the hot melt magnetic material of Murata in view of Takamori would have the same properties as claimed in present claim.
Regarding claim 2, Murata in view of Takamori discloses the hot melt magnetic tape of claim 1, wherein Murata in view of Takamori discloses the copolymer and magnetic particles as claimed, it is clear that the magnetic material of Murata in view of Takamori would have the same properties as claimed in present claim.
Regarding claim 3, Murata in view of Takamori discloses the hot melt magnetic tape of claim 1, further comprising use of the hot melt tape for application obtaining a nonwoven fabric for foam molding, containing the hot melt magnetic material fixed therein by placing hot melt magnetic tape extending in a longitudinal direction on nonwoven fabric, impregnating and fixing the hot melt magnetic material in a part of a surface of the nonwoven fabric through heating and dividing the part of the nonwoven fabric in which the hot melt magnetic material has been fixed from the part thereof in which the hot melt magnetic material has not been fixed (fig. 2, 0031-0033).
Regarding claims 4-5, Murata discloses nonwoven fabric material, i.e. cloth like material, for foam molding (abstract), formed by impregnating and fixing a hot melt magnetic material on a part of a surface of a nonwoven fabric (fig. 2, 0031-0033) wherein the hot melt magnetic material includes a thermoplastic resin containing an ethylene vinyl acetate copolymer (0013, 0028) and magnetic powder (abstract), wherein the magnetic resin material contains 10 to 80 % by weight of magnetic material powder (0026) and therefore the ethylene vinyl acetate copolymer is present in an amount of 20 to 90% by weight. Further, Examples in Murata does support the ethylene vinyl acetate copolymer amount in a range of 20 to 90 % by mass (examples 1-7).
Murata does not disclose the amount of vinyl acetate monomer.
Takamori discloses hot melt adhesive comprising ethylene vinyl acetate copolymer such as Ultrasen 633 or 710 (0039, 0092) to obtain reduced thread formation (0039). Given that ethylene vinyl acetate copolymer of Takamori is the same as disclosed in the present specification, it is clear that the ethylene vinyl acetate copolymer of Takamori would have the same monomer content as claimed in present claim.
It would have been obvious to one of ordinary skill in the art to use the specific ethylene vinyl acetate of Takamori in the hot melt magnetic material to obtain reduced tread formation. Given that Murata in view of Takamori discloses the same hot melt magnetic material and its amount as claimed in present claim, it is clear that the hot melt magnetic material of Murata in view of Takamori would have the same properties as claimed in present claim.
Regarding claim 10, Murata in view of Takamori discloses the hot melt magnetic tape of claim 1, but Murata fails to disclose wax and its amount.
Takamori discloses hot melt adhesive comprising ethylene vinyl acetate copolymer such as Ultrasen 633 or 710 (0039, 0092) and wax in an amount of 5 to 30 parts by weight to obtain improved thermal resistance and thermal stability (0071-0072).
It would have been obvious to one of ordinary skill in the art use the wax and its amount of Takamori in the hot melt magnetic material of Murata to obtain improved thermal resistance and thermal stability.
Response to Arguments
Applicant's arguments filed 02/04/2026 have been fully considered but, with the exception of argument relating to Murata et al. (US 2019/0308347), they are not persuasive.
Applicant argues that Takamori relates strictly to hot melt adhesive and it does not disclose the inclusion of magnetic powder, nor does it consider the unique material design requirements for magnet adsorption and mold followability. However, note that while Takamori does not disclose all the features of the present claimed invention, Takamori is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely ethylene vinyl acetate copolymer such as Ultrasen 633 or 710 to obtain reduced thread formation, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that Takamori’s ranges are optimized for adhesive tackiness not for complex balance of impregnability, magnetic adsorption, and mold followability required by the present invention. While this motivation may not be the same motivation as in the present invention, it is noted that obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant’s motivation. In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990), In re Tomlinson, 150 USPQ 623 (CCPA 1996).
Applicant argues that the specific combination of a 105 to 140 C softening point and 15 to 30 % VA content ensures that the material does not soften prematurely during steam heating in three dimensional molding. However, it is noted that Takamori discloses the same EVA resin as disclosed in the present specification as explained above. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. 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.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Applicant argues that there is no evidence that a PHOSITA would seek out Takamori’s adhesive tackiness parameters to solve the mold contamination problems address by the applicant’s specific softening point and vinyl acetate ranges. While this motivation may not be the same motivation as in the present invention, it is noted that obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant’s motivation. In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990), In re Tomlinson, 150 USPQ 623 (CCPA 1996).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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