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 of Group I, claims 1-6 in the reply filed on April 3, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 in the reply filed on April 3, 2026.
Claim Objections
Claim 4 is objected to because of the following informalities:
At line 1, before “comprising”, insert “further” in order to better characterize the claimed invention.
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.
Claim 2 is 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 2, this claim recites “dicyclopentadiene-type epoxy resin”. The addition of the word “type” extends the scope of the claims so as to render them indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955).
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.
Claim(s) 1-3, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Sawada et al. (US 20150373838 A1).
As to claim 1, Sawada discloses an electrically conductive film having attachability (0001, 0014, 0015) obtained by forming a metal layer on one surface of a resin substrate (0020). The resin substrate of Sawada is formed of a resin composition (adhesive composition) comprising a thermosetting resin (epoxy resin), curing agent for the thermosetting resin (epoxy resin curing agent), and a polyrotaxane compound (0036-0037, and 0047).
Further, as to claim 1, Sawada discloses that as the thermosetting resin, epoxy resins are preferred (0047). Moreover, Sawada discloses that the epoxy resins can be used singly or in a combination of two or more thereof (0050). Furter, Sawada discloses that epoxy resin includes e.g. naphthalene type epoxy resins, dicyclpentadiene type epoxy resins (0048), and YP50 (manufactured by Nippon Steel & Sumikin Chemical Co. Ltd) (0049). The examiner submits that naphthalene type epoxy resins, dicyclpentadiene type epoxy resins of Sawada meet claimed epoxy resin having fused ring structure. Further, the examiner submits that YP50 epoxy resin of Sawada meets claimed polymer component, because YP50 resin of Sawada is identical to the polymer component D disclosed in Example 1 of the present application (phenoxy resin).
Based on the above, a person having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to select any one or two or more epoxy resins of Sawada including an epoxy resin having fused ring structure and a polymer component, motivated by the desire to form the resin composition of Sawada that can then be used to form the resin substrate and Sawada discloses that the resin composition is formed using more than one epoxy resin. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness. See MPEP 2144.07.
Further, as to claim 1, 5 to 15 parts by mass of polyrotaxane compound per 100 parts by mass of epoxy resin and polymer component converts to 4.76 wt% to 13.04 wt%. Sawada discloses 10 to 80 parts by mass of polyrotaxane and 10 to 89.9 parts by mass of the thermosetting resin (which includes epoxy resin and polymer component). Therefore, wt% of polyrotaxane of Sawada converts to (10/(10+89.9)) * 100 = 10 wt% to (80/(80+10)) * 100 = 88.89 wt%. The claimed range of polyrotaxane compound overlaps with the range disclosed by Sawada such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claim 2, Sawada discloses dicyclopentadiene epoxy resin (0048).
As to claim 3, Sawada discloses YP50 (manufactured by Nippon Steel & Sumikin Chemical Co. Ltd) (0049), which is identical to YP50 resin disclosed by present application. As such, Sawada discloses phenoxy resin.
As to claim 5, Sawada discloses an electrically conductive film having attachability (0001, 0014, 0015) obtained by forming a metal layer on one surface of a resin substrate (film adhesive) (0020).
As to claim 6, Sawada discloses that the resin substrate has a thickness for example 10-200 micrometers (0077), which overlaps with the claimed range of 1-80 micrometers such that prima facie case of obviousness exists.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sawada et al. (US 20150373838 A1) as applied to claim 1 above, and further in view of Sawada et al. (US 20170271043 A1) (“US1043A1”).
Sawada discloses that the resin composition includes additives (0071) but does not explicitly disclose presence of inorganic filler.
US1043A1 discloses a conductive film including a film substrate and a conductive layer formed on at least one surface of the film substrate (abstract). The film substrate is formed of a resin composition including a polyrotaxane, thermosetting resin, and curing agent (0052). Further, US1043A1 discloses that the film substrate includes an inorganic filler in order to improve thermal resistance, thermal expansion, moisture resistance (0127).
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 inorganic filler and use it in the resin composition of Sawada, motivated by the desire to improve thermal resistance, thermal expansion, and moisture resistance of the resin substrate.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sirawit Prukswan et al. “Homogeneously Dispersed Polyrotaxane in Epoxy Adhesives and Its Improvement in the Fracture Toughness”, Akutsu (US 20150271918 A1) discloses YP-50 resin by Nippon Steel & Sumikin is phenoxy resin (Table 1).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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 May 26, 2026
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