DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/05/2026 has been entered.
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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.
Claim 2 is 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 2 recites the limitation "the base material". There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over
US 20050062024 to Bessette et al.
Re claims 1-7, Bessette teaches a PSA on base tape [16, 19-21], having carbon nanotubes as claimed in the amount of 0.001-50 wt% (overlapping applicant’s claimed) and the [19], Bessette teaches 0.98 mil (25 microns) overall thickness of the tape, thus it is reasonable to apply the adhesive as within the 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. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Given the same materials, the properties not explicit are inherent.
Re claim 8, see [20-21, 25].
Re claim 9, see [21].
Re claim 10, A prima facie case of obviousness may be established even though a prior art reference does not disclose any particular range, but teaches that the claimed parameters are known to affect results or properties [19] teaches by increasing the thickness the conductivity is improved over 1 micron.
Re claim 15, see [30].
Re claim 11-12, and 16-18, Bessette teaches [21] metal and alloys but not zinc having lower potential than the listed copper, aluminum, nickel.
Choi teaches [32-33] zinc and those meals of Bessette for benefits in conduction.
It would have been obvious to one having ordinary skill in the art to have modified the metal of Bessette as suggested to include zinc for conduction benefits as taught by Choi.
Re claim 19, Bessette teaches [10-11] overlapping ranges of average diameter at less than 2000 nm. The same rationale applies as above; see MPEP 2144.05.
Re claim 20, Bessette teaches [11] overlapping ranges of 5-1000 nanotubes. same rationale applies as above; see MPEP 2144.05.
In view of the forgoing, the above claims have failed to be patently distinguishable over prior art.
Response to Applicant’s Arguments
Applicant arguments are moot in view of the new references.
Conclusion
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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