DETAILED ACTION
Response to Amendment
The amendment and response filed on May 28, 2026 has been entered. Claims 1-15 are pending.
The terminal disclaimer filed on May 28, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Application Numbers 18/871,881 and 18/875,281 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 12-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint regards as the invention.
In claim 12, lines 1 and 2, and claim 13, line 1, the term “the film” lacks antecedent basis. This rejection can be overcome by changing the dependency of claims 12 and 13 to claims 10 and 11, respectively.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7 and 10-15 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Takahashi et al. (WO2018/124215). US2021/0129488 is relied upon as the English language equivalent.
Regarding claims 1 and 5, Takahashi discloses a joined body produced by the method comprising the steps of (a) pre-joining a base material A, a solid joining agent containing an amorphous thermoplastic resin, such as a phenoxy resin, and a base material B to form a laminated body; and (b) melting the solid joining agent by heating and pressurizing the laminated body to join the base material A and the base material B ([0094]-[0101, Figures 6a-6b, Figures 7a-7b). With respect to the limitation that the amorphous thermoplastic resin has a heat of fusion of 15 J/g or less, this property would be inherent to the amorphous thermoplastic resin of Takahashi, since both Takashi and the present invention use identical resins for the solid joining agent material. See MPEP 2112.
Regarding the newly added limitations to claim 1, lines 11-14, Takahashi details an embodiment wherein the base material A, the solid joining agent, and base material B are superposed on each other as independent members and the solid joining agent is not initially joined to either the base material A or base material B in paragraphs [0094]-[0101], which is depicted in Figures 6a and 7a.
Regarding claims 2 and 6, Takahashi discloses that the thermocompression temperature is not particularly limited, but it is, for example, in a range of 100-400°C, and preferably in a range of 150-300° C [0104], and the pressure is preferably 3-5 MPa [0105].
Regarding claims 3, 10, and 11, Takashi discloses that the solid joining agent can be in the form of a film before melting ([0095], Figure 6a-ref # 110A).
Regarding claim 4 and 7, Takashi discloses the use of a fiber-reinforced plastic (resin) as base material A and a metal as base material B (claim 1, Figures 1 and 6a-6b).
Regarding claim 12 and 13, Takashi discloses the phenoxy bonding resin can be obtained by using a conventionally known method in a solution [0062], i.e., solvent. Takashi further discloses that the bonding resin is solidified into a bonding sheet shape [0097]. The process of solidifying the bonding resin into a bonding sheet would necessarily include the process of removing the solvent from the resin composition.
Regarding claim 14 and 15, Takashi discloses that the solid joining agent covers an overlapping region of the base material A and base material B ([0095], [0097]).
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.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (WO2018/124215) in view of JP 2001-354936. An English language machine translation of JP ‘936 is attached to this Office action and is relied upon in the below rejection.
Takahashi does not disclose using an amorphous resin comprising a thermoplastic epoxy resin having an epoxy equivalent of 1,600 or more. JP ‘936 discloses an adhesive for circuit boards that contains a thermoplastic elastomer having an epoxy equivalent of 400-2500 [0007], which overlaps with the presently claimed range. As set forth in MPEP 2144.05, “ 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). JP ‘936 discloses that use of such an adhesive material provides for excellent flexibility [0007]. It would have been obvious to one of ordinary skill in the art to have used an amorphous thermoplastic resin containing a resin having an epoxy equivalent of 1,600 or more, as taught in JP ‘936, in the bonding sheet in Takahashi, motivated by the desire to obtain a bonding sheet that exhibited excellent flexibility.
Response to Arguments
Applicant's arguments filed May 28, 2026 have been fully considered but they are not persuasive.
The provisional non-statutory double patenting rejections set forth in the February 23, 2026 Office action have been overcome for the reasons set forth on pages 6-8 of the present response. Additionally, the previous claim objections have been overcome by the present claim amendments.
The argument that Takahashi discloses that the bonding resin is applied to a surface of the base materials during the pre-joining step is not persuasive. While the embodiment depicted in Figure 5a does show that the bonding material is coated onto the base materials, Figures 6a and 7a depict embodiments wherein the bonding sheet is independent from the base materials in the pre-joining step.
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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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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