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 § 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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi (JP 2019/116552 A).
Regarding Claim 1, Kobayashi discloses an anionic epoxy resin identical to that recited in the present claims, having a structural unit represented by Formula (1), at least one of the structural units represented by Formula (2) and Formula (3), and at least one of the structural units represented by Formula (4) and Formula (5):
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378
168
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wherein, in Formula (1), R1 represents a structure represented by the following Formula (1a), (2a), or (3a); in Formula (2), R7 represents a structure represented by the following Formula (4a) or (5a); in Formula (3), R8 represents a structure represented by the following Formula (6a) or (7a); in Formula (4), R9 represents a structure represented by the following Formula (8a) or (9a); and, in Formula (5), R10 represents a structure represented by the following Formula (10a) or (11a):
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156
454
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186
540
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150
510
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100
438
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100
468
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wherein, in Formula (1a), R2 represents a single bond, C(CH3)2, CH(CH3), CH2, S, O, or SO2; in Formula (2a), R3 to R6 each independently represent a hydrogen atom, a methyl group, an alkylcarbonyl group, an alkoxy group, or an alkoxycarbonyl group; in Formula (5a), R17 represents a hydrogen atom or an alkyl group; in Formula (8a), R11 to R13 each independently represent a hydrogen atom, a methyl group, or an alkoxy group; and, in Formula (10a), R14 and R15 each independently represent a hydrogen atom, a methyl group, or an alkoxy group (paras 0007-0013).
Kobayashi further discloses the anionic epoxy resin or salt thereof may be used to form a film (para 0014, 0061) applied to a metal surface (paras 0055, 0057), including in electronic components (para 0062).
Kobayashi further discloses the composition applied to the surface of a metal and baked to form a film (Para 0005[6], 0055, 0061). The coated metal is baked at 180° C to cure the film (para 0079); therefore it would be able to be exposed to a high-temperature environment of 150 °C as claimed.
Regarding Claim 3, Kobayashi discloses all the limitations of the present invention according to Claim 1 above. Kobayashi further discloses a film thickness of 0.1-1000 microns (para 0061).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi as applied to claim 1 above.
Regarding Claim 5, Kobayashi discloses all the limitations of the present invention according to Claim 1 above. Kobayashi further discloses the resin film is applied to a metal plate that is 0.8 mm thick (para 0077).
The only deficiency of Kobayashi is that Kobayashi discloses the use of a metal plate that is 0.8 mm thick, while the present claims require 1 mm.
It is apparent, however, that the instantly claimed thickness and that taught by Kobayashi are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the thickness of the metal plate disclosed by Kobayashi and the thickness disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the thickness disclosed in the present claims is but an obvious variant of the thickness disclosed in Kobayashi, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Claims 2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi as applied to claim 1 above, and further in view of Lee et al. (US 2021/0284850 A1).
Regarding Claim 2, Kobayashi discloses all the limitations of the present invention according to Claim 1 above. Kobayashi further discloses the anionic epoxy resin forms a film having excellent insulation properties and edge cover properties, and which can be expected to have excellent corrosion resistance (para 0014). It can be used in electrical components for electrical insulation (para 0062).
Kobayashi does not explicitly disclose the electrical components are selected from the group as claimed.
Lee discloses an insulating heat-radiating coating composition including a coating layer-forming component including a main resin and an insulating heat-radiating filler (Abstract), where the main resin may comprise one or more glycidyl ether-type epoxy resins (paras 0050-0051). The coating composition is applied to a metal substrate (paras 0106-0107), which is an electronic component such as a bus bar (para 0129).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to use the anionic epoxy resin as one of the glycidyl ether-type epoxy resins of Lee, in a coating for a metal substrate, which is an electronic component such as a bus bar. Doing so would form a film having excellent insulation properties and edge cover properties, and which can be expected to have excellent corrosion resistance.
Regarding Claim 4, given that the claim only further limits an optional alternative embodiment, the claim is considered met by the prior art.
Regarding Claim 5, Kobayashi in view of Lee discloses all the limitations of the present invention according to Claims 1-2 above. Kobayashi in view of Lee do not explicitly disclose the major axis of the metal part as claimed.
Lee further discloses the material, size, thickness, and shape of the bus bar may be changed according to an internal design considering desired input voltage and/or output voltage of high-voltage EV relays (para 0131). Lee further discloses experiments wherein the coating is applied to a metal having a thickness of 1.5 mm (para 0148).
Therefore it would have been obvious to a person having ordinary skill in the art to choose a size and thickness of the bus bar, including a major axis as claimed, in accordance with desired input voltage and/or output voltage of high-voltage EV relays.
Response to Arguments
In light of applicant’s amendments filed 04/06/2026, the 35 USC 102 rejection of Claim 2 over Kobayashi is withdrawn.
New grounds of rejection are set forth above.
Applicant's arguments filed 04/06/2026 have been fully considered but they are not persuasive.
Applicant argues that Kobayashi does not explicitly disclose applying the anionic epoxy resin or a salt thereof to a metal part of an electronic component.
However, paragraph 0055 discloses that anionic epoxy resin or a salt thereof is applied to a metal part which disclosure alone would meet the broadly claimed “electronic component” of claim 1. Additionally, paragraph 0055 specifically discloses that the method for manufacturing a material having a coating includes bringing the anionic epoxy resin or a salt thereof into contact with the surface or onto the surface of a material having metal on its surface. Kobayashi also discloses in paragraph 0062 that the anionic epoxy resin or a salt thereof can be used in applications such as sealants for electronic components. Therefore, it is clear that the applications described in paragraph 0062, i.e. electronic component, would necessarily include the manufactured materials of the reference which include coating of anionic epoxy resin or a salt on a metal substrate.
Applicant argues against the combination of Kobayashi in view of Lee, arguing that Lee requires heat-radiating filler as an essential component, while Kobayashi does not disclose such filler.
However, the rejection of record does not replace the composition of Lee with the composition of Kobayashi, but uses the resin of Kobayashi as the resin component of the composition of Lee.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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