DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 13 October 2025.
Claim Rejections - 35 USC § 103
Claims 1, 2, and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (JP 2009-043601) in view of Arai (US 2013/0206451).
Nakamura is directed to an insulating film for a flat cable (paragraph 0001). The insulating film comprises a resin film and an adhesive layer formed from a modified polypropylene resin and a styrene-based thermoplastic elastomer (paragraph 0008). The flat cable is formed by sandwiching a conductor between insulating films such that the adhesive layers of the insulating films are adhered to the conductor (Figure 2 and paragraph 0018). The polypropylene is modified with maleic anhydride, acrylic acid, or itaconic acid (paragraph 0023), i.e., unsaturated carboxylic acids. In the embodiments of Examples 1-6, the adhesive comprises about 5 to 44 wt% of the styrene-based thermoplastic elastomer (Table 1).
Nakamura does not teach a resin film containing a resin selected from the materials now recited in claim 1. However, Nakamura does teach that any resin film used in flat cables may be used (paragraph 0020), and specifically cites polyimide as a suitable resin (paragraph 0021).
Arai is directed to a flat cable covering that excels in properties including heat resistance (paragraph 0001). As the base film of the flat cable covering, Arai teaches that a polyimide, such as polyamide-imide, may be used (paragraph 0030).
As the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (see MPEP 2144.07), it would have been obvious to one of ordinary skill in the art to use a polyamide-imide film as the resin film of Nakamura since Arai teaches that polyamide-imide films may be used as the base film in flat cables. Additionally, since Arai teaches (i) that films of polyimide and polyamide-imide are functionally equivalent in flat cable insulation and (ii) that polyamide-imide is seen as a type of polyimide in the field of flat cable insulation, one of ordinary skill in the art would have found it obvious to use a polyamide-imide film in place of, or as, a polyimide film employed as the insulating film of Nakamura.
The resin film corresponds to the heat-resistant layer of the claim since polyamide-imide is cited by the applicant as a suitable example of the aromatic ring-containing thermoplastic resin (see paragraph 0019 on page 6 of the specification).
Regarding claim 7, the limitations of this claim are taken to be met since forming the flat cable requires the adhesive layer of one insulating film to contact the adhesive layer of the other insulating film.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (JP 2009-043601) in view of Arai (US 2013/0206451) as applied to claim 1 above, and further in view of Zennyoji et al. (US 2019/0224951).
Nakamura taken in view of Arai suggests all the limitations of claim 3, as outlined above, except for the amount of unsaturated carboxylic acid incorporated into the modified polypropylene.
Zennyoji is directed to a resin composition used as an adhesive for a flat cable (paragraph 0001). The adhesive comprises an acid modified polypropylene containing 0.5 to 10 mol% acid (paragraph 0010). The acid may be maleic anhydride, acrylic acid, or itaconic acid (paragraph 0044).
It would have been obvious to one of ordinary skill in the art to polypropylene modified with 0.5 to 10 mol% acid as the modified polypropylene of Nakamura because the courts have held that the selection of a known material (e.g., polypropylene modified with 0.5 to 10 mol% acid) based on its suitability for its intended use (e.g., adhesive for forming a flat cable) supported a prima facie obviousness determination. See MPEP 2144.07. The molecular weight of propylene is ~42 g/mol; the molecular weight of maleic anhydride is ~98 g/mol; the molecular weight of acrylic acid is ~72 g/mol; the molecular weight of itaconic acid is ~130 g/mol. Therefore, a polypropylene containing 0.5 mol% of maleic anhydride, acrylic acid, or itaconic acid would contain about 0.85 to 1.5 wt% acid. That is, the mole percentages taught by Zennyoji overlaps the range recited in the claims, and the courts have held that a prima facie case of obviousness exists for overlapping ranges. See MPEP 2144.05.
Double Patenting
Claims 1 and 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of copending Application No. 18/845,250 (reference application) in view of Arai (US 2013/0206451).
Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art to combine the limitations of dependent claim(s), such as claim 2, with the independent claim to yield an adhesive film exhibiting the benefits conveyed by the limitations of the dependent claim(s).
Furthermore, the claims of copending Application No. 18/845,250 do not recite the thermoplastic resin employed in the heat-resistant layer.
Arai is directed to a flat cable covering that excels in properties including heat resistance (paragraph 0001). A polyamide-imide may be used as the cable covering's base film to which an adhesive is applied because polyamide-imide is a material that possesses good heat resistance (paragraph 0030). Polyamide-imide is cited by the applicant as a suitable example of the aromatic ring-containing thermoplastic resin (see paragraph 0019 on page 6 of the specification).
The courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (see MPEP 2144.07). Since Arai teaches that polyamide-imide may be used as a heat resistant resin in an adhesive laminate, it would have been obvious to one of ordinary skill in the art to use polyamide-imide in the heat-resistant layer recited in the claims of copending Application No. 18/845,250.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/845,250 in view of Arai (US 2013/0206451) and further in view of Nakamura (JP 2009-043601).
Claims 1-7 of copending Application No. 18/845,250 taken in view of Arai suggest all the limitations of claim 2, as outlined above, except for the amount of styrene or cyclic hydrocarbon resin present in the adhesive layer.
Nakamura is directed to an insulating film comprising a resin film and an adhesive layer formed from a modified polypropylene resin and a styrene-based thermoplastic elastomer (paragraph 0008). In the embodiments of Examples 1-6, the adhesive comprises about 5 to 44 wt% of the styrene-based thermoplastic elastomer (Table 1).
It would have been obvious to one of ordinary skill in the art to use about 5 to 44 wt% of a styrene-based thermoplastic elastomer as the resin having a styrene structure claimed in copending Application No. 18/845,250 since the courts have held the selection of a known material (e.g., about 5 to 44 wt% of a styrene-based thermoplastic elastomer) based on its suitability for its intended use (e.g., an adhesive layer containing a modified polyolefin) supported a prima facie obviousness determination. See MPEP 2144.07.
This is a provisional nonstatutory double patenting rejection.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of copending Application No. 18/845,250 in view of Arai (US 2013/0206451) and further in view of Zennyoji (US 2019/0224951).
Claims 1-7 of copending Application No. 18/845,250 taken in view of Arai suggest all the limitations of claim 3, as outlined above, except for the amount of unsaturated carboxylic acid component is used to modify the polyolefin resin.
Zennyoji is directed to a resin composition used as an adhesive (paragraph 0001) containing an acid modified polypropylene containing 0.5 to 10 mol% acid (paragraph 0010). The acid may be maleic anhydride, acrylic acid, or itaconic acid (paragraph 0044).
It would have been obvious to one of ordinary skill in the art to polypropylene modified with 0.5 to 10 mol% acid as the modified polyolefin resin modified with an unsaturated carboxylic acid since Zennyoji teaches the use of such a material as an adhesive and the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP 2144.07.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached on 571 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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