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 without traverse of Group I, claims 1-14 in the reply filed on 12/03/2025 is acknowledged.
Claims 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 without traverse in the reply filed on 12/03/2025.
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.
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.
Claim(s) 1-10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et al. (JP 2016108394) in view of Nakagawa et al. (JP 2004011386).
Regarding claims 1, 3, 4, and 5, Akiyama et al. teaches a double-sided adhesive tape comprising a first adhesive layer 20, a heat conductive layer 10, and a second adhesive layer 21, in this order (See Abstract, Fig. 7) and corresponds the melt-softening layer, heat-generating element, and pressure sensitive adhesive layer; wherein the first adhesive layer 20 is softened by heat (page 13) and contains thermoplastic resin (page 5) and additives including balloons (page 10), i.e. hollow fillers and wherein the second adhesive layer 21 is a pressure sensitive adhesive (page 3). The heat conductive layer 10 is heated by a heat generation source and generates heat (page 13).
Akiyama et al. fails to teach organic hollow fillers.
However, Nakagawa et al. teaches a pressure-sensitive adhesive sheet comprising fine particles, including organic hollow particles made of polymethyl methacrylate, acrylonitrile-vinylidene chloride copolymer, etc., having average particle size of 5 to 150μm, which are dispersed in acrylic, i.e. thermoplastic resin in a volume ratio of 0.5% or more and less than 15% (See Abstract, paragraph [0023]).
It would have been obvious to one of ordinary skill in the art to include organic hollow particles in the hollow filler of Akiyama et al. in order to impart the desired flexibility, cohesive force and surface adhesiveness (N Nakagawa et al., paragraph [0023]).
Regarding claim 2, Akiyama et al. teaches wherein the first adhesive layer 20 comprises styrene-butadiene-styrene copolymer (page 5), which meets the thermoplastic resin as presently claimed.
Regarding claim 6, Akiyama et al. teaches wherein the first adhesive layer 20 has a thickness of 5 to 120 μm (page 6).
Regarding claim 7, given that Akiyama et al. in view of Nakagawa et al. teaches melt-softening layer comprising materials and structure as presently claimed, the adhesive layer would necessarily have a thermal conductivity as presently claimed, absent evidence to the contrary.
Regarding claim 8, given that Akiyama et al. in view of Nakagawa et al. teaches adhesive tape comprising materials and structure as presently claimed, the adhesive tape would necessarily have a temperature as presently claimed, absent evidence to the contrary.
Regarding claim 9, given that Akiyama et al. in view of Nakagawa et al. teaches adhesive tape comprising materials and structure as presently claimed, the adhesive tape would necessarily have a temperature as presently claimed, absent evidence to the contrary.
Regarding claim 10, that Akiyama et al. in view of Nakagawa et al. teaches adhesive tape comprising materials and structure as presently claimed, the adhesive tape would necessarily have a volume resistivity as presently claimed, absent evidence to the contrary.
Regarding claim 12, Akiyama et al. teaches further comprising third pressure sensitive adhesive layer 50 (page 9, Fig. 5).
Regarding claim 13, the recitation in the claims that the melt-softening layer is “peelable” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Akiyama et al. in view of Nakagawa et al. disclose melt-softening layer as presently claimed, it is clear that the melt-softening layer of Akiyama et al. in view of Nakagawa et al. would be capable of performing the intended use, i.e. peelable, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 14, Akiyama et al. teaches wherein the heat conductive layer 10 may be metals such as aluminum, iron, and copper, etc. (page 8) which would necessarily meet the heat-generating element as presently claimed.
Further, the recitation in the claims that the heat-generating element is “peeled off when the conducting element generates heat” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Akiyama et al. in view of Nakagawa et al. disclose heat-generating element as presently claimed, it is clear that the heat-generating element of Akiyama et al. in view of Nakagawa et al. would be capable of performing the intended use, i.e. peeled off when the conducting element generates heat, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Allowable Subject Matter
Claim 11 is 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787