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 .
Response to Arguments
Applicant's arguments filed 09/17/2025 have been fully considered but they are not persuasive.
Applicant argues that Burrows and Yonekura do not disclose a laminate in which the conductive layer does not directly contact the base layer. This argument is not convincing.
In Burrows, as stated in the rejection: “a base layer that can be a fabric [0043], a polymer thick film (PTF) that comprising an electrically conductive component and a TPU medium that are deposited as pastes (i.e. a conductive ink) to make electrical circuits [0019], onto a substrate such as a TPU Bemis ST-604 [0043, 0048] which can be adhered to a polyurethane coated fabric [0048].” Bemis ST-604 is a TPU film that is a combination of a temperature resistant layer and an adhesive layer that permits bonding to fabric [see Rapp et al (US 20170100300 A1) at ¶ [0097]], so the Bemis ST-604 reads on the claimed TPU complex layer. So the laminate layers of Burrows are woven fabric (base layer), TPU adhesive layer (of ST-604), TPU heat resistant layer (ST-604), conductive TPU based paste layer, and TPU overcoat/encapsulation layer (TPU surface layer). Examiner does not understand why Applicant believes the conductive layer of Burrows is in contact with the base layer
In Yonekura, the conductive layer is stacked on the hot melt urethane sheet (first insulating layer) and then a TPU sheet (cover coat layer) is stacked thereon, and then a fabric (base) layer was stacked “so as to be in contact with the first insulating layer” [0093-0094]. Another example includes a release sheet/stretchable conductor composition/polyurethane hot-melt sheet, that is stacked on a fabric layer such that the hot-melt sheet side of the three-layer sheet was in contact with the fabric [0102-0103]. Generically, Yonekura discloses, “As a material of the insulating layer, a polymer material having a low elastic modulus is preferably used similar to the flexible resin constituting the stretchable conductor composition. When the sheet of the stretchable conductor composition is used as an electrical wiring, this insulating layer functions as an insulating layer between the stretchable conductor composition and the substrate and an adhesive layer to the substrate.”. Examiner does not understand why Applicant believes the conductive layer of Yonekura is in contact with the base layer.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4 and 7-8 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Burrows et al (US 20160130471 A1).
Burrows discloses a thick film composition for thermoplastic substrates and wearable electronics comprising a base layer that can be a fabric [0043], a polymer thick film (PTF) that comprising an electrically conductive component and a TPU medium that are deposited as pastes (i.e. a conductive ink) to make electrical circuits [0019], onto a substrate such as a TPU Bemis ST-604 [0043, 0048] which can be adhered to a polyurethane coated fabric [0048]. The same TPU medium for the conductive layer can also be used to make non-conductive overcoat or encapsulation layer to protect the circuits [0019], i.e. the TPU surface layer of the claims. Bemis ST-604 is a TPU film that is a combination of a temperature resistant layer and an adhesive layer that permits bonding to fabric [see Rapp et al (US 20170100300 A1) at ¶ [0097]], so the Bemis ST-604 reads on the claimed TPU complex layer. So the laminate layers of Burrows are woven fabric, TPU adhesive layer (of ST-604), TPU heat resistant layer (ST-604), conductive TPU based paste layer, and TPU overcoat/encapsulation layer.
Regarding claim 4, Burrows discloses that the Bemis ST-604 used was 5 mil thick, i.e. 0.127 mm [0052]. When Bemis ST-604 has an overall gauge of 0.089 mm, it has an adhesive gauge of 0.044 mm [see Bemis Selection Guide], so the thickness is split about half and half between TPU and adhesive layers. So for 5 mils, the thickness of TPU heat resistant layer is 0.0635 mm.s
The specification is silent as to the meaning of a “polar functional group bond”, and it is the opinion of the Office that a urethane bond reads on the broadest reasonable interpretation thereof.
Claim(s) 1-3 and 7-8 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Yonekura et al (US 20190013111 A1).
Yonekura discloses an article wherein a conductive composition is affixed to a fabric and wherein the structure includes conductor composition sheet, an insulating layer sheet, and an adhesive sheet [0057]. The insulating and adhesive sheet are both formed from polyurethane hot-melt sheets [0102-0103, 0108]. The laminate may also include a cover coat layer composed of urethane resin [0107]. Each layer preferably has thermoplastic properties [0057]. The conductive composition may be applied as a paste (i.e. a conductive ink) [Table 4-1]. An exemplified fabric is made of yarn, i.e. woven [0094]. Each of the layers may be formed together by melt extrusion either sequentially stacking or simultaneously extruded by using a multi-layer die [0054].
The specification is silent as to the meaning of a “polar functional group bond”, and it is the opinion of the Office that a urethane bond reads on the broadest reasonable interpretation thereof.
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(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burrows et al (US 20160130471 A1).
As discussed above, Burrows discloses Bemis ST-604 as an example of the complex TPU layer of the film. Bemis ST-604 has an overall gauge of 0.089 mm and an adhesive gauge of 0.044 mm [see Bemis Selection Guide] which is a thickness to TPU heat resistant layer of 0.045 mm and a thickness of TPU melting layer of 0.044mm. These values are slightly below the claimed ranges, but Burrows discloses that they perform the same function in the same art as the claimed film.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Furthermore, regarding claim 6, it would have been obvious to one having skill in the art to have used a similar film thickness for the overcoat/encapsulation layers of Burrows as the other TPU based layers therein, since one would expect the same level of structural integrity and insulating properties.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burrows et al (US 20160130471 A1) in view of Wolfe et al (US 20180132350 A1).
While the above 102 rejection of claims 7-8 is maintained, should Applicant disagree, the following rejection applies concurrently. Additionally, this combination makes obvious the claim 16.
Burrows does not explicitly disclose the polar group bond of the claims.
Wolfe discloses articles of circuits printed with PTF pastes onto substrates of thermoplastic polyurethane film (including the Bemis ST-604 [0040]) with a water-based dispersion of a thermoplastic polyurethane coating [abstract, 0013-0017] which are intended to be applied to fabrics [0035], similar to Burrows. Wolfe discloses that the coating onto which the PTF will be printed may undergo a plasma treatment to improve adhesion to the PTF [0030, 0041] and lower the resistivity of the circuit [0047-0048].
It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have used the claimed plasma treatment and make the polar group bonds in Burrows because Wolfe teaches that the plasma treatment improves adhesive to the PTF film and lowers the resistivity of the circuit.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yonekura et al (US 20190013111 A1) in view of Wolfe et al (US 20180132350 A1).
While the above 102 rejection of claims 7-8 is maintained, should Applicant disagree, the following rejection applies concurrently.
Yonekura does not explicitly disclose the polar group bond of the claims.
Wolfe discloses articles of circuits printed with PTF pastes onto substrates of thermoplastic polyurethane film (including the Bemis ST-604 [0040]) with a water-based dispersion of a thermoplastic polyurethane coating [abstract, 0013-0017] which are intended to be applied to fabrics [0035], similar to Yonekura. Wolfe discloses that the coating onto which the PTF will be printed may undergo a plasma treatment to improve adhesion to the PTF [0030, 0041] and lower the resistivity of the circuit [0047-0048].
It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have used the claimed plasma treatment and make the polar group bonds in Yonekura because Wolfe teaches that the plasma treatment improves adhesive to the PTF film and lowers the resistivity of the circuit.
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 MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm M-F.
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MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/ Primary Examiner, Art Unit 1766