DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claims 1-5 and 7-15 are rejected under 35 U.S.C. 102(a)(1) as being
anticipated by JP-5332546 ("JP'546").
Claims 1-4: JP'546 teaches a flame-retardant insulating sheet comprising a
polycarbonate resin and a flame retardant, wherein the flame retardant comprises a
nitrogen-containing compound (JP'546, translation copy, pages 3-4, items (1) and (8)
With regards to the properties of the sheet, i.e. the peak curvature ("Spc"), the peak
density ("Spd") and the glossiness, JP'546 does not report these properties. However,
they are deemed inherent because as shown in the instant specification at Table 1
(page 33), when the polycarbonate resin is flame retardant is about 6 parts by mass, the
results of Spc, Spd and glossiness fall within the claimed range. Here, JP'546 teaches
that the flame retardant is present from 2 to 10 parts by weight with respect to 100 pbw
of the resin (translation copy, page 3, item (1)). In addition, the flame-retardant
insulating sheet of JP'546 comprises the same kind of resin material (i.e. polycarbonate
resin having a weight-average molecular weight from 15,000-35,000), the same specific
retardant material (i.e. melamine cyanurate) having the same particle size and present
in the same concentration (see claims 7-11 below). Therefore, it is expected that the
Spc, Spd and glossiness of the insulating sheet as claimed are met by JP'546.
Claim 5: JP546 teaches coloring agent (i.e. pigment) be present in the insulating
sheet (translation copy, page 6, 1st paragraph).
Claim 7: JP'546 teaches the weight-average molecular weight of the
polycarbonate resin is 15,000 to 30,000 (translation copy, page 6, 5th paragraph, which
is well within the claimed range of 15,000 to 35,000.
Claim 8: JP'546 teaches the flame retardant is melamine cyanurate (translation
copy, page 3, item (5).
Claim 9: JP'546 teaches the average of the flame retardant is 0.01 to 30 µm, in
particular, 1 to 10 µm (translation copy, page 5, last paragraph), which meets the
claimed range of 1 to 30 µm.
Claim 10: JP'546 teaches a flame-retardant insulating sheet, in which a
proportion of a content of the flame retardant to a content of the polycarbonate resin is
2% to 10% by mass (translation copy, page 3, item (1)).
Claim 11: JP'546 teaches an electric/electronic device using the flame-retardant
insulating sheet of claim 1 (translation copy, page 4, item (9)).
Claims 12-15: With regards to the properties recited in these claims, i.e. the peak curvature ("Spc"), the peak density ("Spd") and the glossiness, JP'546 does not report these properties. However, they are deemed inherent because as shown in the instant specification at Table 1 (page 33), when the polycarbonate resin is flame retardant is about 6 parts by mass, the results of Spc, Spd and glossiness fall within the claimed range. Here, JP'546 teaches that the flame retardant is present from 2 to 10 parts by weight with respect to 100 pbw of the resin (translation copy, page 3, item (1)). In addition, the flame-retardant insulating sheet of JP'546 comprises the same kind of resin material (i.e. polycarbonate resin having a weight-average molecular weight from 15,000-35,000), the same specific retardant material (i.e. melamine cyanurate) having the same particle size and present in the same concentration (see claims 7-11 below). Therefore, it is expected that the Spc, Spd and glossiness of the insulating sheet as claimed are met by JP'546.
Claim Rejections - 35 USC § 103
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over
JP'546 as applied to claims 1-5 and 7-11 above, and further in view of Maas (US-
2015/0361260).
JP'546 teaches the claimed insulating sheet as discussed above. JP'546
teaches coloring agent in the insulating sheet (translation copy, page 6, 1st paragraph).
However, JP'546 does not specify carbon black as the coloring agent. Maas teaches
carbon black is a known pigment in composition comprising polycarbonate resin (Maas,
para. 0080). Therefore, it would have been obvious as matter of choice to select carbon black as the coloring agent for the polycarbonate insulating sheet of JP'546.
Response to Arguments
Applicant argues that the Spc, Spd and 60o glossiness are not inherent citing the difference between Example 1 and Comparative Example 1. The Spc is lower in comparative example 1 because press plates were used to flatten protrusions of the insulating sheet. It should be noted that the press plates were set at 150 l/mm over one surface and 180 1/mm over the other surface of the insulating sheet; therefore, the resulted Spd became low because Spc is a measurement of surface curvature which had been flattened by the application of the press plates. JP’546 did not apply press plate; therefore, the Spc would necessarily be high; in other words, the Spc of the insulating sheet of JP’546 would meet the claimed range of at least 200 l/mm. The same can be said for peak density (Spd) because it is a measurement of surface roughness. Without the application of press plates, it is necessarily inherent that the Spd of the insulating sheet of JP’546 would be high and that would mean it meets the claimed range of at least 8000 l/mm2.
With regards to the 60o glossiness, because nothing is applied to alter the glossiness of the insulating sheet, it is expected that the glossiness is low and thus meets the claimed range of 25 or less.
Applicant alleges that without adjusting the sheet surface by bringing a heated press late into contact with the sheet, the insulating sheet of JP’546 would not meet the claimed values of Spd, Spc and 60o glossiness. However, as stated above, because no press plates are applied, the surface curvature and surface roughness are necessarily high because the surface has not been flattened or smoothened out by press plates, and also the glossiness is expected to be low due to the nature of polycarbonate resin and nothing was done to alter the glossiness of the film. In other words, by not applying the press plates, the insulating sheet of JP’546 would meet the all values of Spc, Spd and glossiness as claimed. Comparative Example 1 is not the same as the process taught in JP’546 because it involves applying press plates wherein the height of the plates were set low (150 l/mm and 180l/mm). In order to overcome inherency, Comparative Example 1 should be reproduced without the application of press plates.
Applicant's arguments filed April 7, 2026 have been fully considered but they are not persuasive for the reasons discussed above.
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.
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HOA (Holly) LE
Primary Examiner
Art Unit 1788
/HOA (Holly) LE/Primary Examiner, Art Unit 1788
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