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; species (i): a copper foil; claims 1-10, and 15-20 in the reply filed on 02/09/2026 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)).
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.
Claims 3-7 are 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.
It is unclear what is meant by a high polymer material. Does Applicant want to convey a high content or a high density of the polymer material present in a substrate layer? Appropriate correction is required.
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.
(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.
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 nonobviousness.
Claims 1-6, 9, 10, and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0155945 to Soong (hereinafter “Soong”).
Soong discloses a conductive polymer foam comprising a polymer foam layer 60 having a first surface 64, and an opposed second surface 62; and a plurality of electrically conductive particles 70 dispersed within the polymer foam layer (abstract). The electrically conductive particles continuously span the polymer foam layer with a portion of the electrically conductive particles being exposed at the first surface and the second surface of the polymer foam layer (abstract; figures 1B). The polymer foam layer has a plurality of foam cells 68 distributed therein, with an average cell size of 20 to 500 microns (figure 1B and paragraph 111).
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The electrically conductive particles form a heat conduction network structure in the polymer foam layer (figure 1B, and paragraph 20).
As to claim 2, Soong discloses that the electrically conductive particles comprise carbon fibers (paragraph 45).
As to claims 3 and 4, Soong discloses that the polymer foam layer comprises a thermoplastic resin including polyethylene terephthalate, polyvinylidene fluoride, polyolefin, or polyurethane, and each of which corresponding to the claimed high polymer material (paragraph 48).
As to claim 5, Soong discloses that the conductive polymer foam comprises 90 wt% polymer and 10 wt% electrically conductive particles (table 1).
As to claim 6, Soong discloses that the electrically conductive particles comprise copper particles (paragraph 39).
As to claim 9, Soong discloses that the polymer foam layer has a thickness of 6 to 14 mils or 0.15 to 0.36 mm (table 3B). This is within the claimed range.
As to claim 10, Soong discloses that a copper foil is arranged on a surface of the polymer foam layer (paragraph 37).
As to claim 15, Soong discloses that the polymer foam layer is a single-layer structure where foam cells are evenly distributed in the polymer foam layer, and the electrically conductive particle is evenly distributed in the polymer foam layer (figure 1B).
As to claim 16, Soong discloses that the electrically conductive particles are connected to each other to form pathways within the polymer foam layer (figure 1B; and paragraphs 20 and 108).
As to claim 17, Soong discloses that the electrically conductive particles are connected to form one integral heat conduction network structure so as to exhibit a volume resistivity of 10-3 to 103 ohm-cm at 100 psi pressure; and electromagnetic shielding in an amount of 50 dB (paragraphs 102, 103 and 108).
As to claim 18, Soong discloses that the electrically conductive particles continuously span the polymer foam layer with a portion of the electrically conductive particles being exposed at the first surface and the second surface of the polymer foam layer (abstract; figures 1B). Each column consists of a single chain of the magnetic, electrically conductive, high aspect ratio particles that are mutually isolated form the other chains of particles (paragraph 108). Hence, the magnetic, electrically conductive particles in one column are not connected with other magnetic, electrically conductive, high aspect ratio particles in other columns.
As to claim 19, Soong discloses that the electrically conductive particles continuously span the polymer foam layer with a portion of the electrically conductive particles being exposed at the first surface and the second surface of the polymer foam layer (abstract; figures 1B).
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Soong.
As to claim 5, Soong discloses that the conductive polymer foam comprises 10 to 90 wt% of electrically conductive particles and 90 to 10 wt% of a polymer (paragraph 46).
Soong does not explicitly disclose the conductive polymer foam comprises 5 to 10 wt% of electrically conductive particles, and 95 to 90 wt% of a polymer.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the contents of the polymer and electrically conductive particle will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the contents of the polymer and electrically conductive particle are critical or provide unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the contents of the polymer and electrically conductive particle in the range instantly claimed, motivated by the desire to optimize electrical conductivity, foam cell structure and processing characteristics. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
As to claim 7, Soong discloses that the conductive polymer foam comprises 10 to 90 wt% of electrically conductive particles and 90 to 10 wt% of a polymer (paragraph 46). Soong further teaches that the electrically conductive particles include copper, nickel, silver, gold, cobalt and any combinations thereof (paragraph 39). This at least indicates that copper could be used in combination with any of the metals listed, and their combined content in the range from 10 to 90 wt%. This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the contents of the copper and any of the metals listed will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the contents of the copper and any of the metals listed are critical or provide unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the contents of copper and any of the metals listed in the ranges instantly claimed, motivated by the desire to optimize electrical conductivity, foam cell structure and processing characteristics. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Soong as applied to claim 1 above, further in view of US 2022/0049064 to Merck et al. (hereinafter “Merck”).
Soong discloses that the polymer foam layer has a plurality of foam cells 68 distributed therein, with an average cell size of 20 to 500 microns (figure 1B and paragraph 111). Soong does not explicitly disclose the polymer foam layer having foam cells with an average cell diameter in a range from 1 to 10 microns.
Merck, however, discloses a micro, sub-micro or nanocellular polymer foam formed from a composition that includes a polymer and functionalized carbon nanotubes (abstract). The polymer foam layer has foam cells with an average cell diameter in a range from 10 nm to 100 microns (abstract). The polymer foam is electrically conductive and electromagnetically shielding (paragraphs 67).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the polymer foam layer disclosed in Soong having an average foam cell diameter in the range instantly claimed, because such is one of the typical average foam cell diameters of the polymer foam material having excellent electrical conductivity and electromagnetic shielding properties. Merck provides necessary details to practice the invention of Soong.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Soong as applied to claim 1 above, further in view of US 2012/0018211 to Book (hereinafter “Book”).
Soong does not explicitly disclose a copper foil provided on each surface of the polymer foam layer.
Book, however, discloses a grounding pad sequentially comprising from top to bottom: a first copper foil, a first adhesive layer, a foam layer, a second adhesive layer, a second copper foil, a third adhesive layer, and a release liner (abstract).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a second copper foil disclosed in Book on the surface of the polymer foam layer opposite the first copper foil disclosed in Soong because such is one of the typical structures of the grounding pad and Book provides necessary details to practice the invention of Soong.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 114573858 to Yang et al. (hereinafter “Yang”).
As to claims 1 and 2, Yang discloses a conductive microporous foam material electromagnetic shielding comprising three layers: 3% carbon nanotube-polymer powder, 6% carbon nanotube-polymer powder, and 9% carbon-nanotube-polymer powder (paragraph 53). The multilayer foamed material has a plurality of microporous structure distributed therein (figure 2). The carbon nanotubes form a heat conduction network structure within the multilayer foamed material (figures 1 and 2).
As to claims 3 and 4, Yang discloses that the polymer comprises polypropylene, polylactic acid, or polyurethane and each of which corresponding to the claimed high polymer material (paragraph 9).
As to claim 5, Yang discloses that the weight ratio of the polymer to the carbon nanotube is 40.5:4.5 or 9:1 within the claimed range (paragraph 36).
Claims 1-5, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 107522942 to Wang et al. (hereinafter “Wang”).
As to claims 1, and 15-17, Wang discloses a conductive microporous foam layer in the form of a single layer structure, obtained from a composition comprising 50 parts by weight of first polypropylene, 100 parts by weight of second polypropylene, 8 parts by weight of carbon black, 0.5 parts by weight of carbon nanotubes and 0.5 part by weight of dispersant (paragraph 20). The dispersant is selected to provide uniform dispersion of the conductive filler within the polymer matrix (paragraph 15). The carbon black and carbon nanotubes read on the claimed electrically and thermally conductive material. The conductive microporous foam layer has a continuous conductive network and uniform microporous structures distributed therein due to the foaming process (paragraph 53). The carbon nanotubes act as bridges connecting carbon black particles and metal powder particles, forming a conductive network within the microporous foam material (paragraph 15).
As to claim 2, Wang discloses that the conductive filler comprises carbon nanotubes, carbon black and metal powder particles (paragraph 15).
As to claims 3 and 4, Wang discloses that the conductive microporous foam layer obtained from a composition comprising 50 parts by weight of first polypropylene, 100 parts by weight of second polypropylene, 8 parts by weight of carbon black, 0.5 parts by weight of carbon nanotubes and 0.5 part by weight of dispersant (paragraph 20).
As to claim 5, given that the conductive microporous foam layer comprises 150 parts by weight of the polypropylene and 8.5 parts by weight of conductive filler (paragraph 20), the weight ratio of the polypropylene to conductive filler is 17.6 :1 (150/8.5) within the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788