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 .
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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments.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.
NEW REJECTIONS: NECESSITATED BY AMENDMENT
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:
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Shouji et al. (JP 2019127606 A ).
Re claims 1-9 and 11-18, As shown in FIG. 1, Shouji teaches the anticorrosion tape 10 is provided with a conductive pressure-sensitive adhesive layer 11, and the conductive pressure-sensitive adhesive layer 11contains a metal 12 having a potential lower than that of iron and a conductive material 13 other than the metal 12. It is blended (page 2, First embodiment heading). The metal 12 may be dispersed in the conductive pressure-sensitive adhesive layer 11 (page 5, of acrylic under heading) in any form as a filler, but preferably has a particle shape. The metal 12 is easily dispersed in the conductive pressure-sensitive adhesive layer 11 and conductive carbon nanotube (page 3, Metal with a lower potential heading). Base material 14, the conductive pressure-sensitive adhesive layer 11 attached to the adherend is protected by the base material 14 and has better anticorrosion performance. Among these, as a base material, it is preferable to be selected from a polyacrylic resin film, a polyethylene terephthalate resin film, and a non-woven fabric. The substrate 14 may be used alone or in combination of two or more (satisfying the coating film of claim 8). For example, a multilayer resin film in which a plurality of resin films are laminated, or a laminate of resin films and nonwoven fabrics (page 11, mid page). Shoji teaches see page 3 (Metal with a lower potential than iron) Examples of the metal 12 having a potential lower than that of iron include cadmium, chromium, zinc, manganese and aluminum (either meets claim 13). Among these, zinc is preferable, by using zinc, sacrificial corrosion resistance is excellent. The reference is anticipatory.
Further re claims 1, and 3-7, Shouji doesn’t teach properties having the properties and testing methods. However, as the same structure and materials are present as set forth above, the same or similar properties are expected absent evidence to the contrary.
Re claim 10, Shouji teaches the claimed invention but not exactly the range thickness of 25 microns or more. Shouji teaches the carbon nanotubes are present in the adhesive in an amount of 0.1 – 23 wt.% (1/101 – 30/130) [17].
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.
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 page 3 teaches by increasing the thickness the conductivity is improved over 1 micron.
In view of the forgoing, the above claims have failed to be patently distinguishable over prior art.
Response to Applicant’s Arguments
Applicant argues that Shouji discloses amount of carbon nanotubes outside the amount presently claimed.
However, as noted by applicant, Shouji discloses the carbon nanotubes are present in an amount of 1 to 30 parts per 100 parts of the adhesive composition. Therefore, it is calculated that the adhesive comprises 0.1 – 23 wt.% (1/101 – 30/130) carbon nanotubes which overlaps the amount presently claimed. 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).
Applicant argues that based on the examples Shouji suggests using a large amount of conductive material or carbon nanotubes. Applicant argues that Example 1 shows that if the amount of conductive material is less than 4 mass%, the resistance would exceed 10^8 Ω and therefore using amounts of carbon nanotubes as presently claimed would render Shouji unsatisfactory for its purpose.
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). As set forth above, the fact remains that Shouji teaches amount of carbon nanotubes that overlaps that presently claimed. Additionally, Example 1 does not use carbon nanotubes; rather the example uses graphite powder. Also, paragraph 0018 of Shouji pointed to be applicant discloses that it is not only the amount of carbon nanotubes but also the amount of metal 12 having a lower potential than iron that affects the resistance. Therefore, one of ordinary skill in the art would select amounts of carbon nanotubes, including that presently claimed, as well as zinc in Shouji that would result in desired resistance, absent evidence to the contrary. There is no evidence that using carbon nanotubes in Shouji in amount as presently claimed would render Shuji unsatisfactory for its purpose.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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