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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3 April 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 currently depends from claim 2, a currently cancelled claim. Therefore, claim 7 is of improper dependent form because claim 7 fails to contain a reference to a claim previously set forth.
To further prosecution, the examiner is going to interpret the intent of the applicant was to have claim 7 depend from claim 1. However, if the applicant changes the dependency of claim 7 to depend from claim 1, a double patenting warning/objection may be warranted as claim 7 would be a duplicate of claim 6. Please see the 6th paragraph in MPEP §608.01(m). The examiner recommends canceling claim 7.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 11 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. US 2016/0007510 (hereinafter “Cheng”).Regarding claim 1
Cheng teaches an electromagnetic interference shielding film (electromagnetic wave shielding material) 30 comprising: a first electromagnetic wave absorptive layer 31; a second electromagnetic wave absorptive layer (one magnetic layer) 35; first and second metallic layers (two or more metal layers) 34, 36; and first and second release films (two or more resin layers) 38, 39 formed by plastics (resins) (Figure 4, and paragraphs [0026] – [0032]). Cheng teaches the first and second electromagnetic wave absorptive layers 31, 35 may respectfully comprise electromagnetic wave absorptive particles 312, 352, including: (i) soft magnetic grains, e.g. ferric oxide, Fe-Si-Al alloy, permalloy or Fe-Si-Cr-Ni alloy; or (ii) alternatively, calcium carbonate, cement, natural mineral or far infrared mineral materials (paragraph [0027]), which corresponds to an embodiment where: (i) the electromagnetic wave absorptive particles 312 dispersed in the first electromagnetic wave absorptive layer 31 includes the aforementioned calcium carbonate, cement, natural mineral or far infrared mineral materials (materials not exhibiting a ferromagnetic property, thereby defining such a layer as not being a magnetic layer, as defined by the applicant (see paragraphs [0021] from the original disclosure)); and (ii) the electromagnetic wave absorptive particles 352 dispersed in the second electromagnetic wave absorptive layer (one magnetic layer) 35 includes the aforementioned soft magnetic grains, e.g. ferric oxide, Fe-Si-Al alloy, permalloy or Fe-Si-Cr-Ni alloy (materials exhibiting a ferromagnetic property), which corresponds to a total number of the magnetic layers included in the electromagnetic wave shielding material is one. Cheng teaches the second electromagnetic wave absorptive layer (magnetic layer) 35 is sandwiched between the first and second metallic layers (two metal layers) 34, 36, where the second electromagnetic wave absorptive layer (magnetic layer) 35 is also sandwiched between the first and second release films (two resin layers) 38, 39 (Figure 4). Cheng teaches the second electromagnetic wave absorptive layer (magnetic layer) 35 has a thickness (Dm) of 5-20 µm (paragraph [0027]), which overlaps the claimed range. Cheng also teaches a thickness (Dp) per one layer of the resin layer 38, 39 ranges from 7.5-50 µm (paragraphs [0031] and [0032]). These ranges give the following range for the claimed relational expression with the magnetic layer and both of the two resin layers that sandwich the magnetic layer: 0.375 (7.5 µm/20 µm) < Dp/Dm < 10 (50 µm/5 µm), which falls within the claimed range.Regarding claim 11 In addition, Cheng teaches both of the first and second metallic layers (two or more metal layers) 34, 36 included in the electromagnetic interference shielding film (electromagnetic wave shielding material) 30 that are positioned on either one outermost side and another outermost side are layers adjacent to the first and second release films (resin layers) 38, 39, respectfully (Figure 4).Regarding claim 17 In addition, Cheng teaches the electromagnetic wave absorptive layer (magnetic layer) 35 is a layer containing particles of soft magnetic grains, e.g. ferric oxide, Fe-Si-Al alloy, permalloy or Fe—Si—Cr—Ni alloy (metal particles as magnetic particles) (paragraph [0027]).Regarding claim 18 In addition, Cheng teaches the electromagnetic wave absorptive layer (magnetic layer) 35 is a layer further containing epoxy or acrylic resin (a resin) (paragraph [0027]).Regarding claims 19 and 20
In addition, Cheng teaches the electromagnetic interference shielding film (electromagnetic wave shielding material) 30 is used in circuits (abstract), which corresponds to an electronic component/apparatus comprising the electromagnetic wave shielding material according to claim 1.
Claims 6, 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng as applied to claim 1, as further evidenced by an article titled “14 Poly(amide-imide)s” by Johannes Kark Fink (hereinafter “Fink”), an article titled “Raw Materials for Nonwoven Filter Media” by Irwin M. Hutten (hereinafter “Hutten”), an article titled “1 Polymeric Materials and Properties” by E. Alfred Campo (hereinafter “Campo”), and an article titled “Tg – Glass Transition Temperature for Epoxies” by epotek.com (hereinafter “Epotek”).Regarding claims 6 and 7 The limitations for claim 1 have been set forth above. In addition, Cheng teaches the first and second release films (the resin layer) 38, 39 comprise a plastic, such as, polyamideimide (PAI), polyester (PET), polyimide (PI), polyetherimide (PEI), polycarbonate (PC), epoxy resin, etc. (paragraphs [0031] – [0032]). The glass transition temperatures for these plastics are well known, as evidenced by Fink, Hutten, Campo, and Epotek. Fink teaches glass transition temperatures of polyamideimide (PAI) include 221-263°C (page 323, paragraph immediately above the “14.2 Polymerization and Fabrication” heading), and 220°C (page 325, under the 14.2.6 Unsaturated Poly(amide-imide) heading), which fall within the claimed range. Hutten teaches the glass transition temperature of polyester (PET) is 85°C (page 216 in Table 4.22), which falls within the claimed range. Hutten also teaches the glass transition temperature of polyimide (PI) is 315°C (page 222 in Table 4.28), which falls within the claimed range. Campo teaches the glass transition temperature of polyetherimide (PEI) is 215°C (pages 27-28, under the “1.14.7 Polyetherimide (PEI)” heading), which falls within the claimed range. Campo also teaches the glass transition temperature of polycarbonate (PC) is 148°C (page 27, under the “1.14.9 Polycarbonate” heading ), which falls within the claimed range. Epotek teaches the glass transition temperature of polyester resin ranges from 60°C to 100°C (page 2), which falls within the claimed range.Regarding claim 16 In addition, Cheng teaches both of the first and second metallic layers (two or more metal layers) 34, 36 included in the electromagnetic interference shielding film (electromagnetic wave shielding material) 30 that are positioned on either one outermost side and another outermost side are layers adjacent to the first and second release films (resin layers) 38, 39, respectfully (Figure 4).
Response to Arguments
Applicant's arguments filed 12 March 2026 have been fully considered but they are not persuasive.
The applicant argued the rejections should be withdrawn because Cheng teaches a total number of magnetic layers being two, which is structurally distinct from the claims. The examiner respectfully submits that Cheng teaches an embodiment where only one magnetic layer is present. This is detailed in the updated rejection of record. In summary, Cheng teaches the electromagnetic wave absorptive particles include ferromagnetic particles or, alternatively, particles which are not magnetic, which corresponds to an embodiment where the electromagnetic wave absorptive layer 31 includes the non-magnetic particles (calcium carbonate, cement, natural mineral or far infrared mineral materials), and the electromagnetic wave absorptive layer 35 includes the magnetic particles. Therefore, this embodiment results in only one electromagnetic wave absorptive layer 35 that is classified as a magnetic layer, according to the definition provided by the applicant in paragraph [0021] in the original disclosure.
The applicant argued the applicant’s electromagnetic wave shielding material provides unexpectedly superior results based on the claimed: Dm > 10 µm or more; and 0.17 < Dp/Dm < 25.00 features. The examiner respectfully submits that the applicant has failed to provide sufficient data points inside and outside the claimed ranges to establish a criticality of the claimed ranges, in combination. See MPEP §716.02(d)(II). Moreover, the applicant’s reliance on Table 1 is misguided as the data provided therein is of poor quality to the point that more than half the data is illegible. It is additionally noted that Table 1 from the Pre-Grant Publication of the instant application (US 2024/0107732) is replete with incomplete data, and is highlighted as containing such. As a further point, the applicant noted Example 4 includes a single magnetic layer. This is not supported by the instant specification, which clearly shows the presence of “magnetic layer 1” and “magnetic layer 2” in Example 4.
The applicant argued Cheng contains no suggestion of a single magnetic layer with a thickness of 10 µm or more. The examiner respectfully disagrees and submits, as admitted by the applicant, Cheng teaches a thickness of the magnetic layer ranging from 5-20 µm. The claimed range of 10 µm or more overlaps with the range (5-20 µm) disclosed by Cheng. It is well established in a case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP § 2144.05(I).
The examiner would also like to address a potential issue with regards to the definition of Dp from the claim, and the arguments provided by the applicant relevant thereto. Claim 1 defines Dp as a thickness per one layer of the resin layer, where the relational expression, as defined in the claim, is together with both of the two resin layers that sandwich the magnetic layer. It appears the applicant may interpret Dp as requiring a total thickness of both of the two resin layers, when added together. This is respectfully not the case. With regards to claim interpretation, the Dp for each of the two resin layers must satisfy the claimed relational expression separately to meet the claims. Therefore, since Cheng teaches the same thickness for each of the resin layers 38, 39, which ranges from 7.5-50 µm (paragraphs [0031] and [0032]), the determination of the Dp/Dm ratio is the same for each of the resin layers 38, 39. In summary, the scope of claim 1 requires Dp/Dm to correspond to the first release film (a first resin layer) 38 and the second release films (a second resin layer) 39, separately. This feature has been met by the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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