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 .
Election/Restrictions
Applicant’s election without traverse of Species III, Subspecies B, claims 4-12 in the reply filed on 12/16/2025 is acknowledged.
The Office directs the Applicant’s attention to the elected claim 5, which does not read on the elected Subspecies “B”, because it recites that “the coating layer is composed of a film formed by curing of the surface of the operating flux”. The aforementioned limitations read on the nonelected Subspecies “A”, because in the elected Subspecies “B”, the “coating layer formed of material being different from an operating flux and being applied to the operating flux” (emphasis added).
Accordingly, said claim 5 has been withdrawn from further consideration on the merits along with the remaining non-elected claims 1-3.
Furthermore, regarding the independent claim 4, the claim recites that “and an operating flux provided on the fuse element; wherein the operating flux contains a curable resin component; and the operating flux has a coating layer that covers a surface of the operating flux, the coating layer being made of the curable resin component.” These limitations are not precise and may be interpreted as readable on the nonelected Subspecies “A” for similar reasons as explained above in relation to claim 5. Therefore, the claim will be interpreted accordingly in light of the elected Subspecies “B” (i.e., that the “coating layer formed of material being different from an operating flux and being applied to the operating flux” ), i.e., as “wherein the operating flux contains a curable resin component which forms a coating layer of the flux, said coating layer covers a surface of the operating flux, the coating layer being made of the curable resin component”.
In reply to the instant Office action Applicant must amend claim 4 to read clearly and explicitly on the elected Species III, Subspecies “B”.
Examiner’s Note: even though said claim 5 has been withdrawn from further consideration on the merits, nevertheless, the Office would like to direct the Applicant’s attention to the fact that said claim 5 is directed to a method of making of the device (i.e., “by curing of the surface…”), which is not germane to the issue of patentability of the device itself. Even though the claim is limited by and defined by the recited process, the determination of patentability of the product is based on the product itself, and 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. See In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Therefore, said claim 5 would not be given any patentable weight even if it were considered on the merits.
Accordingly, the Office action on the elected claims 4 and 6-12 follows.
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 4 and 6-12 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 4 recites the limitations: “and an operating flux provided on the fuse element; wherein the operating flux contains a curable resin component; and the operating flux has a coating layer that covers a surface of the operating flux, the coating layer being made of the curable resin component.” These limitations are not precise and may be interpreted as readable on the nonelected Subspecies “A” for the reasons as explained above. This creates ambiguity and indefiniteness. Therefore, the claim will be interpreted accordingly in light of the elected Subspecies “B” i.e., that the “coating layer formed of material being different from an operating flux and being applied to the operating flux”. In reply to the instant Office action Applicant must amend claim 4 to read clearly and explicitly on the elected Species III, Subspecies “B”.
Since dependent claims 6-12 inherit the aforementioned problems of the independent claim 4, they are also rejected along with said claim 4.
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 4, 6, and 7, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over US 6,566,995 to Furuuchi et al. (hereafter “Furuuchi”, of record cited in parent application No. 17/770,424) in view of the Applicant’s Admitted Prior Art (AAPA), or alternatively, in view of the JP 2000-348583 to Mitsuaki et al. (hereafter “Mitsuaki”, of record, cited in parent application No. 17/770,424).
Regarding claims 4 and 6, as best understood, Furuuchi discloses a protective element (Figs. 2A, 2B) comprising: an insulating substrate (2); a heat generation element (3) provided on the insulating substrate; at least two main electrodes (7a, 7b) provided on the insulating substrate; a current-conducting electrode (7c) provided on the insulating substrate for current conduction through the heat generation element (Fig. 1); a fuse element (5) provided on the at least two main electrodes and the current-conducting electrode; and an operating flux (8, 9) provided on the fuse element (5); and the operating flux has a coating layer (9) that covers a surface of the operating flux (Fig. 2B). Further, Furuuchi discloses that the coating layer (9) is made of a coating material that is flexible, deformable and sheet-shaped (col. 1, ll. 28-46; col. 6, ll. 20-26; Fig. 2A, 2B).
Furuuchi does not explicitly teach that the operating flux contains a curable epoxy resin component that forms a coating layer being made of the curable resin component.
AAPA teaches that curable epoxy resins have been notoriously known and widely use in related arts before the effective filing date of the claimed invention (see the “Official Notice” and the “Examiner’s Note” on p. 6 of the final Office action of 11/14/2023 in the parent application No. 17/770424 (abandoned)).
Therefore, it would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have selected any suitable material, including as claimed, for making of the coating layer in Furuuchi, in order to predictably achieve proper sealing and protection of the protective element and also in order to achieve desired electrical and physical characteristics of the protective element, while not exceeding targeted production costs thereof, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See In re Leshin, 125 USPQ 416.
Alternatively, Mitsuaki discloses that a protective element (Fig. 1) comprising an operating flux (5’, 6’), wherein the operating flux contains a sealing curable epoxy resin component (6’) that forms a coating layer being made of the curable resin component (pars. [0026]-[0027]).
Therefore, it would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have selected curable epoxy resin according to the teaching of Mitsuaki as material of choice for forming the coating layer in Furuuchi, in order to predictably achieve proper sealing and protection of the protective element and also in order to achieve desired electrical and physical characteristics of the protective element, while not exceeding targeted production costs thereof, since all claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Regarding claim 7, Furuuchi discloses that the current-conducting electrode (7c) is arranged between the at least two main electrodes (7a, 7b) with gap portions interposed (Fig. 2B); and the operating flux (8) is provided on a portion of the fuse element (5) that overlaps with the current-conducting electrode (7a, 7b), and a portion of the fuse element (5a, 5b) that overlaps with the gap portions extending from the current-conducting electrode (7c) to ends of the at least two main electrodes (7a, 7b).
Claims 8-12, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Furuuchi-AAPA-Mitsuaki combination as applied to claim 4 above, and further in view of the US 2015/0130585 to Nakajima et al. (hereafter “Nakajima”, of record, cited in the IDS of the parent application No. 17/770424).
Regarding claims 8-10, Furuuchi as previously modified still does not disclose that the fuse element is a composite material of a first fusible metal and a second fusible metal, wherein the first fusible metal or the second fusible metal is a tin-based alloy containing one or both of silver and copper, wherein at least one of the first fusible metal and the second fusible metal is a lead-free tin-based solder material.
Nakajima discloses (Fig. 6) the protective element (40) comprising the fuse element (10) is a composite material of a first fusible metal (11) and a second fusible metal (12), wherein the first fusible metal or the second fusible metal is a tin-based alloy containing one or both of silver and copper, wherein at least one of the first fusible metal and the second fusible metal is a lead-free tin-based solder material (par. [0011], [0057]-[0059]) for the benefits of providing a fuse element for a protection device that can be improved in production efficiency and has favorable operating characteristic (par. [0005], [0022]).
Since inventions of Furuuchi and Nakajima from the same field of endeavor (electrical protection devices / fuses), the purpose of the composite fuse element taught by Nakajima would be recognized in the invention of Furuuchi as previously modified.
It would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have further modified to the Furuuchi-AAPA-Mitsuaki combination according to the teachings of Nakajima, so the combination would have the fuse element that is the composite material of the first fusible metal and the second fusible metal, wherein the first fusible metal or the second fusible metal is a tin-based alloy containing one or both of silver and copper, wherein at least one of the first fusible metal and the second fusible metal is the lead-free tin-based solder material, for the benefits of providing a fuse element for a protection device that can be improved in production efficiency and has favorable operating characteristic (Nakajima, par. [0005], [0022]). Also, all claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Regarding claim 11, Nakajima discloses that at least one of the first fusible metal and the second fusible metal is an alloy material selected from an Sn-Ag alloy containing 3 to 4 mass% of Ag and a remainder of Sn, an Sn-Cu-Ag alloy containing 0.5 to 0.7 mass% of Cu, 0 to 1 mass% of Ag and a remainder of Sn, an Sn-Ag-Cu alloy containing 3 to 4 mass% of Ag, 0.5 to 1 mass% of Cu and a remainder of Sn, and an Sn-Bi alloy containing 10 to 60 mass% of Bi and a remainder of Sn (e.g., see par. [0057] reciting the “Sn-3Ag-0.5Cu alloy”; claims 5 and 10).
Regarding claim 12, Nakajima discloses that at least one of the first fusible metal and the second fusible metal is an alloy material selected from a 96.5Sn-3.5Ag alloy, a 99.25Sn-0.75Cu alloy, a 96.5Sn-3Ag-0.5Cu alloy, a 95.5Sn-4Ag-0.5Cu alloy, and a 42Sn-58Bi alloy (e.g., see par. [0059] reciting the “covering member 12 made of a Sn-3.5Ag alloy”; claims 5 and 10).
Alternatively, it would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have selected any optimal ranges of percentages of constituents of the claimed alloy(s) in Nakajima, including as claimed, in order to achieve desired mechanical (e.g., weight, manufacturability, rigidity, defamation resistance, melting temperature, etc.) and electrical (e.g., resistance, current rating, interruption capacity, opening characteristics, etc.) of the protective / fuse element while not exceeding targeted production costs thereof, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233; Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure, because of the teachings of various electrical fuses with fusible elements comprising metal alloys. Further, US 6452475, 10008356, 8976001, 6566995, etc. teach electrical fuses with fusible elements disposed on substrates and comprising electrical heating elements. Further, US 2864917, 4320374, 2911504, etc. teach composite fusible elements with stacked metal layers with different melting temperatures. Furthermore, the Office directs the Applicant's attention to the fact that the US 8976001, 2015/0130585, 5097247, and 6838971 could have been also used for statutory rejection of the at least independent claim of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anatoly Vortman whose telephone number is (571)272-2047. The examiner can normally be reached Monday-Thursday, between 10 am and 8:30 pm.
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/Anatoly Vortman/
Primary Examiner
Art Unit 2835