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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4-7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3533848 (hereinafter, ISHIKAWA) in view of FANG et al. (U.S. Publication No. 2011/0075320, hereinafter FANG).
Regarding claims 1, 6, 7 and 12, ISHIKAWA teaches a dielectric heating bonding film including a thermoplastic resin (A) [0046-0047] and a dielectric filler (B) (Abstract). The total light transmissivity of the dielectric welding film is in a range from 5 to 99% [0096 and 0099], the total transmissivity is approximately 50% [0100] which is measured in accordance with JIS K 7361-1(1997) [0147]. The dielectric welding film is applicable to a variety of adherends, capable of providing excellent adhesiveness by a short period of dielectric heating, and capable of using dielectric fillers [0023].
A welding method uses a dielectric welding film for welding a pair of adherends of the same material or different materials through dielectric heating, the dielectric welding film includes a thermoplastic resin (A) and a dielectric filler (B) [0116]. As shown in Fig. 1, a dielectric welding machine 10 performs a dielectric heating through a dielectric welding film 13 held between a first adherend 12 and second adherend 14 and applies pressure by a first high-frequency electrode 16 and a second high-frequency electrode 18 to adhere the first adherend 12 and the second adherend 14 [0125-0126].
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Therefore, the dielectric welding film of ISHIKAWA is a high-frequency dielectric heating adhesive as claimed.
However, ISHIKAWA does not teach a high-frequency dielectric heating adhesive comprising a cyano-group containing organic compounds (B).
In the same field of endeavor of dielectric film for capacitor (Abstract; [0021 and 0041]), FANG teaches the film comprises cyanoresin which produces a cyanoresin dielectric film which includes nanostructures of a toughening material (Abstract; [0008]). The toughening materials include thermoplastic polymers [0025] which increases mechanical strength (e.g., toughness for thin film formation [0024]) of a base material (the cyanoresin) [0021]. Examples of cyanoresins include cyanoethyl pullulan, cyanoethyl polyvinyl alcohol, cyanoethyl hydroxyethyl cellulose, and cyanoethyl cellulose [0022].
The cyanoresin film has a high dielectric constant and a high breakdown strength, with improved mechanical strength over currently existing dielectric films [0007 and 0019].
Given ISHIIGAWA teaches dielectric welding film comprises a dielectric heating bonding film including a thermoplastic resin (A). It would have been obvious to a person of ordinary skill in the art to have provided the thermoplastic resin of ISHIGAWA blended with the cyanoresin(s) of FANG for the benefit of obtaining a dielectric film that has a high dielectric constant and a high breakdown strength, with improved mechanical strength over currently existing dielectric films as taught by FANG [0007 and 0019]. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 2, ISHIKAWA teaches the dielectric property of the dielectric welding film in a range of 0.08 to 0.05 [0090 and 0094]. The dielectric filler is a high-frequency wave absorbing filler having a high dielectric loss factor enough to generate heat when a high-frequency wave at 23 degrees (28 MHz or 40 MHz frequency) is applied ([0070-0072]; Claim 2). An example of dielectric filler is anastase titanium oxide [0071] which the present invention’s preferred dielectric filler (as discussed in the present specification [0062]), therefore, the dielectric filler would possess the dielectric loss tangent and relative dielectric constant as claimed. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 4, as discussed in paragraph 10 above, ISHIKAWA teaches the dielectric property of the dielectric welding film in a range of 0.08 to 0.05 [0090 and 0094]. The dielectric filler is a high-frequency wave absorbing filler having a high dielectric loss factor enough to generate heat when a high-frequency wave at 23 degrees (28 MHz or 40 MHz frequency) is applied ([0070-0072]; Claim 2). An example of dielectric filler is anastase titanium oxide [0071] which the present invention’s preferred dielectric filler, therefore, the dielectric filler would possess the dielectric loss tangent and relative dielectric constant as claimed. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Furthermore, FANG teaches the film comprises cyanoresin including cyanoethyl pullulan and cyanoethyl cellulose, therefore, the position is taken that the cyanoresin would possess the claimed dielectric property. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 5, FANG teaches the film comprises cyanoresin including cyanoethyl pullulan and cyanoethyl cellulose, therefore, the position is taken that the cyanoresin would possess the claimed MFR. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over O’CONNOR et al. (U.S. Publication No. 2019/0341696, hereinafter O’CONNOR) in view of TAN et al. (U.S. Publication No. 2011/0292566, hereinafter TAN).
Regarding claims 1 and 8-10, O’CONNOR teaches a dielectric structure that has an adhesive material disposed between the first electrode portion and the substrate (FIG. 2C) [0027].
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The adhesive layer can comprise a dielectric filler to adjust the dielectric constant thereof. The dielectric constant of the adhesive layer can be adjusted to improve or otherwise modify the performance of the electromagnetic device (e.g., DRA devices) [0055]. The dielectric structure and the dielectric layer can each independently comprise a dielectric material. The dielectric structure is secured by direct thermal melt bonding either concurrent with the structure forming (e.g., thermoplastic injection molding) or post structure forming (e.g., application of heat/pressure or ultrasonic energy/pressure) [0090].
The dielectric structure comprise a thermoplastic polymer [0058-0060] in the amount of 30 to 100 volume percent (vol %) [0056] and 0 to 70% of a filler composition. The polymer and filler can be selected to provide a dielectric material having improved dielectric constant [0056].
However, O’CONNOR does not teach a high-frequency dielectric heating adhesive comprising a cyano-group containing organic compounds (B).
In the same field of endeavor of dielectric film, TAN teaches a cyanoresin polymer wherein about 10 percent to about 60 percent of the side chains on the polymer include a cyano group (Abstract; [0008, 0011, and 0023]). The cyanoresin polymer is formed by reacting a base polymer with an olefin which includes a cyano group [0024]. The base polymer include cellulose, pullulan, polyhydroxyethyl methacrylate, and polyvinylalcohol [0025].
The cyanoresin polymers have a high dielectric constant [0029]. The cyanoresin film have good electrical properties and good mechanical properties [0007]. Thinner dielectric films exhibit higher breakdown strength value and the breakdown strength of the dielectric film can be improved by reducing the thickness of the film. The cyanoresin dielectric films has a good mechanical strength, can be processed into freestanding films, even of reduced thickness [0035].
Given O’CONNOR teaches the dielectric structure comprising dielectric fillers to adjust the dielectric constant and the cyanoresin of TAN have high dielectric constant, it would have been obvious to a person of ordinary skill in the art to have provided the cyanoresin of TAN with the dielectric structure of O’CONNOR for the benefit of obtaining a dielectric component with improved dielectric constant, good electrical and mechanical properties. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Pertinent Art
NAGANAWA et al. (U.S. Publication No. 2012/0242220, hereinafter NAGANAWA), one of the closest prior art of record, fails to teach the high-frequency dielectric heating adhesive has a total luminous transmittance of 50% or more as measured in accordance with JIS K 7361-1:1997. NAGANAWA teaches a light-emitting composition that has adhesiveness, an electroluminescent sheet [0001 and 0055] which has high luminance [0020]. The electroluminescent sheet has a dielectric material layer. The dielectric material layer is provided between the electroluminescent layer and the first electrode, or between the electroluminescent layer and the second electrode [0053].
The light-emitting composition comprising (A) a compound having a cyanoethyl group
Allowable Subject Matter
Claims 3 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The relied upon art (ISHIKAWA, FANG, O’CONNOR, and TAN) do not teach the claim limitations of the present claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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