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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 17-20 are objected to because of the following informalities:
Claim 17, line 1, recites “the thermal blonding film.” This should read “the thermal bonding film.”
Claim 18, line 1, recites “the thermal blonding film.” This should read “the thermal bonding film.”
Claim 19, line 1, recites “the thermal blonding film.” This should read “the thermal bonding film.”
Claim 20, line 1, recites “the thermal blonding film.” This should read “the thermal bonding film.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “0.1 to 3% by weight of an initiator.” Because the copolymer in the thermal bonding film is already polymerized, it is unclear if this refers to an initiator that was used (and consumed) during polymerization, or if it is an additional initiator added to the already-polymerized copolymer composition. Based on the contents of the disclosure, it is taken to refer to an initiator added prior to polymerization.
Claims 2-20 are indefinite due to dependence on indefinite claim 1.
The term “type” in Claims 1, 6, and 8 is a relative term which renders the claim indefinite. The term “type” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is suggested to delete the word.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 3-6, 8-1, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nakada et al (US 2016/0244647 A1) in view of Koponen (US 2020/0299534) and Elarbe et al (Screening of the factors for novel pour point depressant copolymer synthesis to improve the copolymer yield, 2019, IOP Conf. Series: Materials Science and Engineering 702).
Regarding Claim 1: Nakada teaches a thermal bonding film/hot melt adhesive for use in adhesive films (para. 0001-0002) comprising at least 80 wt% of a copolymer (para. 0061). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use [an overlapping amount of the copolymer and would have been motivated to do so since Nakada teaches this amount allows for proper adhesion performance (para. 0061).
Nakada further teaches an initiator (para. 0053) but is silent to the amount.
Elarbe teaches polymerization of an acrylic copolymer, wherein the initiator is present at 0.5-2.5 wt%, wherein such an amount facilitates high reaction yield of the polymer (p.5, Figure 4). Elarbe and Nakada are analogous art because they are directed toward the same field of endeavor, namely acrylic copolymers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of initiator present during the polymerization of the copolymer of Nakada to a range of 0.5-2.5 wt% in order to achieve a high reaction yield.
Nakada is silent to the coagulant and the dispersant.
Koponen teaches an adhesive film composition (para. 0207) comprising 70-90 parts of a copolymer (para. 0162), 0.1-5 parts of a coagulant (para. 0136), and 0.1-5 parts of a dispersant/surface-active agent (para. 0156), wherein the dispersant facilitates the dispersion of the polymer during the preparation of the adhesive (para. 0083) and the coagulant improves the wet strength of the adhesive/prevents dripping (para. 0137) and promotes film formation (para. 0120). Koponen and Nakada are analogous art because they are directed toward the same field of endeavor, namely adhesive films.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a dispersant and a coagulant to the thermal bonding film of Nakada in the amounts taught by Koponen in order to prevent dripping, facilitate film formation, and keep the polymer properly dispersed during preparation of the composition.
Regarding Claim 3: Nakada teaches monomers such as an alkyl methacrylate (para. 0029) and styrene (para. 0044), which would read on the polystyrene-alkyl methacrylate copolymer.
Regarding Claim 4: Nakada teaches a monomer with a glass transition of 80 to 140°C (para. 0016) and a monomer with a glass transition of -80 to -40°C (para. 0042). These temperatures overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a high-Tg monomer with an overlapping glass transition temperature to impart the adhesive with high cohesive force, durability, and heat resistance (para. 0032) and a low-Tg monomer with an overlapping glass transition temperature to achieve a high modulus at room temperature (para. 0042).
Regarding Claim 5: Koponen teaches fumed silica as the coagulant (para. 0126).
The limitations of Claims 6, 9-10, and 18-19 are product-by-process limitations. MPEP § 2113 states that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”. However, the Applicant should note that “the Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). See MPEP § 2113(II).
Although Nakada and Koponen do not teach the claimed production method of the thermal bonding film, they in combination teach the claimed structure of the film.
Regarding Claim 8: Nakada teaches a monomer with a glass transition of 80 to 140°C (para. 0016) and a monomer with a glass transition of -80 to -40°C (para. 0042). These temperatures overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a high-Tg monomer with an overlapping glass transition temperature to impart the adhesive with high cohesive force, durability, and heat resistance (para. 0032) and a low-Tg monomer with an overlapping glass transition temperature to achieve a high modulus at room temperature (para. 0042).
Regarding Claims 11 and 14-17: Nakada teaches that the thermal bonding film is suitable for use in sealing for heat insulation and bonding to curved/irregular surfaces (para. 0095), both of which would make it suitable for use in a water tank. The selection of a known material based on its suitability for its intended use support a prima facie case of obviousness. MPEP 2144.07. It would be obvious to use the thermal bonding film of Nakada in a water tank because of its art-recognized suitability for that purpose.
Because the claims are directed toward the thermal bonding film itself, limitations regarding the structure of the water tank are not considered to further limit the thermal bonding film.
Regarding Claim 13: Nakada teaches a monomer with a glass transition of 80 to 140°C (para. 0016) and a monomer with a glass transition of -80 to -40°C (para. 0042). These temperatures overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a high-Tg monomer with an overlapping glass transition temperature to impart the adhesive with high cohesive force, durability, and heat resistance (para. 0032) and a low-Tg monomer with an overlapping glass transition temperature to achieve a high modulus at room temperature (para. 0042).
Regarding Claim 20: Koponen teaches that the dispersant is sodium dodecyl sulfate (para. 0085, sodium lauryl sulfate).
Claims 2, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Nakada et al (US 2016/0244647 A1) in view of Koponen (US 2020/0299534) and Elarbe et al (Screening of the factors for novel pour point depressant copolymer synthesis to improve the copolymer yield, 2019, IOP Conf. Series: Materials Science and Engineering 702), as evidenced by Conniff (PLA (Polylactic Acid): Definition, Applications, and Types, 2022, Xometry).
Nakada, Koponen, and Elarbe teach the limitations of claims 1, 6, and 11, as set forth above. Nakada further teaches a polymer block of polylactic acid (para. 0045), which Conniff teaches typically has a glass transition temperature of 55-65°C (p.2). Because block copolymers display distinct glass transition temperatures for each block, the presence of a PLA block would result in the block copolymer showing a glass transition temperature of 55-65°C.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim (US 2020/0347269 A1) teaches an adhesive film.
Shinoki (WO 2013/145401 A1) teaches a hot water tank comprising a thermal bonding film.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767