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 Group I, claims 1-18 in the reply filed on August 10, 2026 is acknowledged.
Claims 19-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 10, 2026.
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 5-7, 9, 12, and 18 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.
As to claim 5, this clam recites “the matrix comprises a combination of one or more of polyolefin or polyamide…a weight content of the polyamide ranges from 0% to 20%”. This recitation is indefinite because it is unclear whether the matrix positively requires a combination of the polyolefin and the polyamide. Because, the claim first recites “the matrix comprises a combination” of polyamide and polyolefin and then recites wt% of the polyamide being 0%. For purpose of examination, if a prior art discloses a matric comprising either polyolefin or polyamide, it will meet the claim.
Further, as to claim 5, this claim recites “the matrix comprises a combination of polyolefin and polyurethane”. The claim further recites “weight content of polyurethane ranges from 0% to 30%”. It is unclear how the polyurethane content can be 0% given that the matrix positively requires combination of polyurethane and polyolefin.
As to claim 6, this claim positively requires paraffin, benzoic acid, vanillin, or azobenzene (e.g. “the matrix further comprises paraffin”). However, the lower end point of weight content of paraffin, benzoic acid, vanillin, and azobenzene include 0% in the claim. Therefore, it is unclear how the amounts of paraffin, benzoic acid, vanillin, and azobenzene can be zero when the claim positively requires at least one of the paraffin, benzoic acid, vanillin, and azobenzene.
As to claim 7, it is unclear whether the species recited “one or more of polyethylene…” are additional ingredients of the matrix or further refers to “the matrix is a mixture of one or more of polyolefin, benzoic acid…. or paraffin” as recited in parent claim 1.
As to claim 8, it is unclear whether polypropylene, propylene-acrylic acid copolymer, polyurethane, polyethylene, polyamide 6, polybutylene, polypentene, and POE elastomer are additional ingredients of the matrix or further refers to e.g. “polyolefin” and “polyamide” recited in parent claim 1. Further, as to claim 8, it is unclear what is meant by the recitation “POE elastomer”.
As to claim 12, this claim recites “the conductive non-metal oxide”. There is a lack of antecedent basis with respect to this limitation in the claim. Further, it is unclear what is meant by “non-metal oxide”. The specification does not provide any guidance as to what is meant by “non-metal oxide”.
As to claim 18, this claim recites “plurality of coating blocks”. It is unclear what is meant by this recitation. For purpose of examination, this recitation is interpreted as the conductive hot melt adhesive layer is discontinuous. See paragraph 0098 of US 20240186590 A1 of present application publication (“published application”).
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 1-5, 7, 10, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Cai et al. (US 20190085219 A1).
As to claim 1, Cai discloses an electrically conductive hot-melt adhesive (HMA) composition comprising (a) a binding agent (matrix) which comprises at least one (co) polymer selected from the group consisting of polyamide, thermoplastic polyamide, copolyimide, polyolefins, poly(meth)acrylates, polystyrene, polyurethane, polyesters, ethylene copolymers, ethylene vinyl copolymers, styrenic block copolymers, polylactic acid, silicones, epoxies, and polyols (abstract), and (b) a conductive filler comprising particles (p1) such as e.g. pure silver powder (elemental metal) (abstract and 0045), metal particle coated with silver on it surface wherein the core of the particle includes an alloy (0046), and carbon black (0050).
Further, as to claim 1, given that the Cai discloses a hot-melt adhesive, it is clear that the adhesive of Cai is inherently solid in the first state and capable of softening and flowing in the second state (also see 0034 of Cai).
Alternatively, as to claim 1 properties “Vicat softening temperature of the conductive hot melt adhesive ranges from 60°C to 130°C” and “the conductive hot melt adhesive has a first state and a second state, and the conductive adhesive is solid in the first state and capable of softening and flowing in the second state”, Cai as set forth previously discloses identical conductive HMA as claimed. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Given that the conductive HMA disclosed by Cai above is identical to the claimed conductive HMA, absent any factual evidence on the record, it is reasonable to presume that the HMA of Cai inherently has the aforementioned claimed properties. Alternatively, the claimed properties would obviously be present once the HMA of Cai is provided.
As to claim 2, Cai does not explicitly disclose property “the matrix is a substance capable of being transformed from a solid to liquid…130°C.” However, as set forth previously, the claimed invention and Cai disclose identical matrix (polyolefins, polyester, polyurethane, and polyamide). As such, absent any factual evidence on the record, it is reasonable to presume that the matrix of Cai is inherently has the claimed property.
As to claim 3, Cai does not explicitly disclose property “wherein a viscosity of the conductive hot melt adhesive at 130°C…and/or a resistance of the conductive hot melt adhesive…100 Ω.” However, as set forth previously, the claimed invention and Cai disclose identical conductive HMA. As such, absent any factual evidence on the record, it is reasonable to presume that the conductive HMA of Cai is inherently has the claimed property.
As to claim 4, Cai discloses conductive HMA containing 60 wt% of thermoplastic polyamide Technomelt TPX 22-547 (matrix) and 40 wt% of silver coated graphite particles conductive filler P594-5 (Example 2, 0094, 0098). Further, Cai discloses that the conductive filler (p1) constitutes from 15-70 wt% of the composition (claim 1) (therefore balance binding agent (matrix) 30-85 wt%). Given that the claimed ranges of matrix (5% to 60 wt%) and conductive filler (40% to 95 wt%) overlap or lie within the range of matrix and conductive filler disclosed by Cai, a prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claim 5, Cai discloses polyolefin as the binding agent (0056), which meets claim limitation “the matrix comprises a combination of one or more of polyolefin or polyamide….a weight content of the polyamide ranges from 0%...” and/or “the matrix comprises a combination of polyolefin and polyurethane…a weight content of the polyurethane ranges from 0%....”. The examiner submits that the weight content of polyamide is 0% and the weight content of polyurethane is 0% in the claimed matrix.
As to claim 7, Cai discloses polyurethanes (0056).
As to claim 10, Cai discloses silver powder (0047) and carbon black (0050).
As to claim 13, Cai discloses silver powder such as Agcu200C with average particle diameter of 40 microns (0096 and 0047).
As to claim 14, Cai discloses that the conductive HMA composition further includes an additive such as antioxidants and surfactants (0070).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (US 20190085219 A1) as applied to claim 1 above, and further in view of Blease et al. (US 20200107450 A1).
Cai is silent as to disclosing claim 6.
Blease discloses an electronic device and a conductive hot melt adhesive (abstract, 0105). Blease further discloses that waxes such as paraffin are used to adjust the tack, dry melt point, and adhesion properties of the adhesive (0115). Cai discloses that the HMA includes additives in the amount of 0-10 wt% based on the weight of the composition, and the additives include waxes (0070).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the wax such as paraffin wax of Blease in the amount disclosed by Cai, in the conductive HMA of Cai, motivated by the desire to adjust tack, dry melt point, and adhesive properties of the HMA., and Cai desires waxes. The examiner further submits that a person having ordinary skill in the art would recognize that the amount of wax disclosed by Cai in view of Blease (0-10 wt%) renders obvious claimed amount of paraffin of 0-80 wt%.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (US 20190085219 A1) as applied to claim 1 above, and further in view of Heucher et al. (US 20140374032 A1).
Cai is silent as to disclosing the average molecular weight of the matrix as claimed.
Heucher discloses a melt adhesive containing 20 to 90 wt% of at least one polyamide having a Mw of from 10,000 to 250,000 g/mol (abstract), wherein the polyamide imparts to the adhesive properties necessary for use thereof as a hot melt adhesive (0012). The examiner submits that a person having ordinary skill in the art would recognize that the Mw of 10,000 to 250,000 g/mol disclosed by Heucher is equivalent to 10,000 to 250,000 Da (Daltons). The claimed range of Mw of 300 Da to 20,000 Da overlaps or lies within the range disclosed by Heucher such that a prima facie case of obviousness exists. MPEP 2144.05 (I).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a polyamide (matrix) having the Mw as claimed and as rendered obvious by Heucher, motivated by the desire to form conductive HMA of Cai and Cai desires polyamide.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (US 20190085219 A1) as applied to claim 1 above, and further in view of Masuda et al. (US 3860543).
Cai is silent as to disclosing claim 9.
Masuda discloses a hot-melt adhesive (column 1, lines 5-6). Further, the hot-melt adhesive of Masuda includes 120 grams of amorphous polypropylene and 80 grams of paraffin wax (Example 4). The claimed weight ratio of polypropylene to paraffin of 1: (0.5-0.8) equals to (1/0.5 = 2 to 1/0.8 = 1.25). The weight ratio of polypropylene to paraffin in Example 4 of Masuda is 120/80 or 1.5, which is within the claimed range.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the combination of polypropylene and paraffin in the weight ratio as claimed and as rendered obvious from Masuda, given that Cai desires polyolefin (0017) and waxes (0070) in the formation of the conductive HMA.
Claims 11, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (US 20190085219 A1) as applied to claim 1 above.
As to claim 11, Cai discloses that the HMA includes particles of conductive filler (p1) in the amount of from 15-60 wt% by weight of the composition (0040). Further, Cai discloses that the conductive filler (p1) includes pure silver powder (0045). Moreover, Cai discloses that the HMA composition comprises from 15-50 wt% of the composition, of particles of conductive filler (p1b) consisting of carbon fibers (0048). Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a combination of carbon and the elemental metal, wherein the sum of the weights of the carbon and the elemental metal accounts for 50% or more, motivated by the desire to form the conductive HMA of Cai and Cai desires such combination of the carbon and elemental metal.
As to claim 13, Cai discloses that the conductive filler has a mass median diameter (D50) of less than or equal to 100 microns (0040). The claimed average crystal particle diameter Dv10 overlaps or lies within the range disclosed by Cai (less than 100 microns) such that a prima facie case of obviousness exists.
As to claim 15, Cai discloses that one or more additive such as antioxidant and surfactant is/are present in the HMA in the range of from 0-10 wt% based on the weight of the composition (0070), which overlaps with the claimed range of 5-50 parts by weight er 100 parts by weight of a total weight of the matrix and the conductive filler.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (US 20190085219 A1) as applied to claim 1 above, and further in view of Shimada et al. (US 20130245160 A1).
Cai is silent as to disclosing claim 16.
Shimada discloses an adhesive composition with high thermal conductivity (abstract). The adhesive composition of Shimada further comprises silane coupling agent in the amount of from 0.5 to 10 wt% (0052).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a silane coupling agent in the amount disclosed by Shimada in the conductive HMA of Cai, motivated by the desire to enhance the adhesion of the HMA.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (US 20190085219 A1) as applied to claim 1 above, and further in view of Husemann et al. (US 20050282002 A1).
As to claim 17, Cai discloses that the conductive HMA is disposed on a given substrate (0083). As such, Cai suggests a conductive tape.
As to claim 17, Cai is silent as to disclosing the substrate being an insulating substrate.
Husemann discloses an adhesive sheet for bonding electrical modules in card bodies comprising at least a layer of an adhesive system based on heat-activable adhesive and electrically conductive particles admixed with the adhesive system (abstract). Husemann further discloses that backing materials (substrate) used for the adhesive are the customary materials familiar to the skilled person, such as films (polyesters, PET, PE, PP, BOPP, PVCC polyimide) etc. (0047). The examiner submits that Huseman and applicant disclose identical material as insulating substrate e.g. polyolefin and polyester (see 0078 of the published application). As such, Husemann suggests insulating substrate.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select any of the backing materials disclosed by Husemann including insulating substrate and use it in the tape of Cai, because Cai desires that hot melt adhesive is deposited on a substrate and doing so would have been obvious for the purpose of forming an adhesive tape of Cai.
As to claim 18, Cai discloses that the adhesive is deposited on a substrate by printing the adhesive composition as one or more lines (coating blocks) (0083). Cai does not explicitly disclose an interval between the coating blocks as claimed. However, absent any criticality, a person having ordinary skill in the art would have found it obvious to select a suitable interval between the coating blocks in the invention of Cai, motivated by the desire to deposit the adhesive of Cai on a substrate so it can form conductive features such as traces, contacts, wires, electrodes, lines having electrical conductivity so that the adhesive tape can be bonded to a desired surface.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Peter G. Pape “Adhesion Promoters: Silane Coupling Agents” discloses silane coupling agents.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 October 8, 2026
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