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 .
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0326547 Sunaga et al.
Regarding claim 1, Sunaga teaches a laminate 100 comprising:
a channel-equipped substrate 180 (figure 2A, channel 240) having a cycloolefin polymer as a material (paragraph 0046); and
a cover material 120 having a cycloolefin polymer as a material (paragraph 0035)
that are joined via a joining agent 160 (paragraph 0010) having a mixture of two or more cycloolefin polymers as a material (paragraph 0041, “resins composing second film 160” where “resins” is plural),
wherein a glass-transition temperature (100°C) of the mixture of cycloolefin polymers that is a material of the joining agent 160 is more than 20°C lower than both a glass-transition temperature (156°C) of the cycloolefin polymer that is a material of the channel-equipped substrate and a glass-transition temperature of the cycloolefin polymer that is a material of the cover material (paragraph 0048),
wherein the glass-transition temperature of the mixture of cycloolefin polymers that is a material of the joining agent is 100°C (paragraph 0048), and
wherein a thickness of the joining agent is 200 microns (paragraph 0041).
Sunaga does not explicitly teach that the joining agent is 0.1 to 50 microns thick. However, Sunaga does teach that the thickness of the joining agent is based on the stiffness of the joining agent (paragraph 0041), such that while the embodiment shown has a thickness of 200 microns, other thicknesses would be suitable if the material or stiffness of the material were to be altered.
Since the instant specification is silent to unexpected results, the specific thickness of the joining agent is not considered to confer patentability to the claims. As the physical and optical characteristics are variables that can be modified, among others, by adjusting the parameters of the method, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the invention, would have optimized, by routine experimentation, the thickness of the joining agent to obtain the desired physical characteristic (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). See MPEP 2144.05 Section II.
Furthermore, “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (MPEP 2144.04 Section IV Part A). Therefore, without a showing of criticality, the claimed thickness does not impart patentability to the claims.
Response to Arguments
Applicant's arguments filed June 3, 2026, have been fully considered but they are not persuasive.
Applicant argues that Sunaga does not teach the claimed thickness. However, as discussed above, this has been rendered obvious. Applicant argues that this feature cannot be obvious because it provides a specific improvement. However, Applicant’s assertion is not sufficient in this case. If Applicant believes that the claimed thickness is critical, Examiner would like to see data supporting this. Applicant’s currently provided data is insufficient to establish criticality as the thickness value for all examples is 3 microns.
Conclusion
THIS ACTION IS MADE FINAL. 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 Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781
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