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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102, 103, and 112 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.
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.
Claims 4-7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
It is not clear as to whether the claimed “a placement object,” found in lines 3 and 4 of claim 4, refers to the same or to a different placement object as that of the claimed “a placement object,” found in line 2 of claim 4. If the same placement object is intended, Applicant should amend the second recitation of “a placement object” to read as either “the placement object” or “said placement object.” If a second placement object is intended, Applicant should amend the first recitation to read as “a first placement object” and the second recitation to read as “a second placement object.” For examination purposes, Examiner treats the claims as though they reference a single placement object.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by
US 2017/0341340 (“SAITO”).
Regarding claim 1, SAITO teaches an optical-fiber-embedding sheet (10) which is a sheet (12A, 12B) into which an optical fiber (16) for use as a sensor (par. [0070]) has been incorporated (FIGs. 10, 12), comprising a base material (12A), an adhesive layer (top element 14), and a bonding adhesive layer (bottom layer 14) laminated in this order (FIGs. 9-12), at least a part of the optical fiber having been embedded in the bonding adhesive layer (FIGs. 10, 12), and the adhesive layer having a width larger than that of the bonding adhesive layer (FIGs. 9-12).
Claim Rejections - 35 USC § 103
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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over SAITO.
SAITO teaches the limitations of the base claim 1. The additional limitations appear to involve the mere optimization of the widths of the adhesive layer and the bonding adhesive layer. It has been held that the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As such, it would have been obvious to one of ordinary skill in the art at the effective filing date to optimize the widths of the adhesive layer and the bonding adhesive layer of SAITO as set forth in the instant claim.
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being obvious over SAITO in view of US 2023/0115205 (“SOGABE”).
The applied reference has a common applicant and a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by:
(1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A);
(2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or
(3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claim 3, SAITO teaches the limitations of the base claim 1. SAITO does not teach a wire for sheet tearing provided to the bonding adhesive layer. SOGABE teaches a wire (16) for sheet tearing provided to a bonding adhesive layer (FIG. 9; par. [0098]). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the sheet of SAITO with the wire for sheet tearing of SOGABE provided to the bonding adhesive layer. The motivation would have been to more easily connect the optical fiber to a measuring instrument (pars. [0017], [0098]).
Regarding claim 8, SAITO teaches the limitations of the base claim 1. SAITO does not teach a placement object; a reel having the optical-fiber-embedding sheet wound thereon; and a press roller for pressing the optical-fiber-embedding sheet unwound from the reel against the placement object. SOGABE teaches a placement object (3); a reel (54) having the optical-fiber-embedding sheet (1) wound thereon; and a press roller (53) for pressing the optical-fiber-embedding sheet unwound from the reel against the placement object (FIG. 3). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the sheet of SAITO with the placement object, the reel, and the press roller of SOGABE. The motivation would have been to more tenaciously fix and more highly integrate the optical fiber to the placement object (pars. [0059]-[0064]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over SAITO in view of US 2005/0158009 (“EICHELBERGER”).
SAITO teaches the limitations of the base claim 1. SAITO does not teach adhering the optical- fiber-embedding sheet to a placement object by using the adhesive layer and the bonding adhesive layer, and then bonding the optical-fiber-embedding sheet to the placement object by using the bonding adhesive layer which is cured. EICHELBERGER teaches adhering an optical- fiber-embedding sheet to a placement object by using an adhesive layer and a bonding adhesive layer, and then bonding the optical-fiber-embedding sheet to the placement object by using the bonding adhesive layer which is cured [clms. 21, 25; sections (iii) and (iv)]. It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the sheet of SAITO by adhering an optical- fiber-embedding sheet to a placement object by using an adhesive layer and a bonding adhesive layer, and then bonding the optical-fiber-embedding sheet to the placement object by using the bonding adhesive layer which is cured, as taught by EICHELBERGER. The motivation would have been to more tenaciously fix and more highly integrate the optical fiber to the placement object.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over SAITO in view of EICHELBERGER as applied to claim 4 above, and further in view of SOGABE.
This rejection under 35 U.S.C. 103 might be overcome by:
(1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A);
(2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or
(3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claim 5, SAITO in view of EICHELBERGER renders obvious the limitations of the base claim 4. SAITO does not teach a primer for curing the bonding adhesive layer by a chemical reaction with the bonding adhesive layer is applied to the placement object and thereafter the optical-fiber-embedding sheet is applied to a portion of the placement object to which the primer has been applied. SOGABE teaches a primer (9) for curing a bonding adhesive layer by a chemical reaction with the bonding adhesive layer is applied to the placement object and thereafter the optical-fiber-embedding sheet is applied to a portion of the placement object to which the primer has been applied (FIG. 2). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the sheet of SAITO with the primer of SOGABE as set forth in the instant claim. The motivation would have been to more tenaciously fix and more highly integrate the optical fiber to the placement object (pars. [0059]-[0064]).
Regarding claim 6, SAITO in view of EICHELBERGER renders obvious the limitations of the base claim 4. SAITO does not teach a primer for curing the bonding adhesive layer by a chemical reaction with the bonding adhesive layer is applied to the bonding adhesive layer and thereafter the optical-fiber-embedding sheet is applied by bringing the bonding adhesive layer into contact with the placement object. SOGABE teaches a primer (9) for curing the bonding adhesive layer by a chemical reaction with the bonding adhesive layer is applied to the bonding adhesive layer and thereafter the optical-fiber-embedding sheet is applied by bringing the bonding adhesive layer into contact with the placement object (FIG. 2).
It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the sheet of SAITO with the primer of SOGABE as set forth in the instant claim. The motivation would have been to more tenaciously fix and more highly integrate the optical fiber to the placement object (pars. [0059]-[0064]).
Regarding claim 7, SAITO in view of EICHELBERGER renders obvious the limitations of the base claim 4. SAITO does not teach using an application device which includes a reel having the optical-fiber-embedding sheet wound thereon and a press roller and applying the optical-fiber-embedding sheet by unwinding the optical-fiber-embedding sheet from the reel and moving the application device in a direction along which the optical-fiber-embedding sheet is applied, while pressing the unwound optical-fiber-embedding sheet against the placement object with the press roller. SOGABE teaches using an application device which includes a reel (54) having the optical-fiber-embedding sheet wound thereon and a press roller (53) and applying the optical-fiber-embedding sheet by unwinding the optical-fiber-embedding sheet from the reel and moving the application device in a direction along which the optical-fiber-embedding sheet is applied, while pressing the unwound optical-fiber-embedding sheet against the placement object with the press roller (FIG. 3). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the sheet of SAITO with the reel and the press roller of SOGABE. The motivation would have been to more tenaciously fix and more highly integrate the optical fiber to the placement object (pars. [0059]-[0064]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERRY M BLEVINS whose telephone number is (571)272-8581. The examiner can normally be reached Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hollweg can be reached at 571-270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JERRY M BLEVINS/
Primary Examiner, Art Unit 2874
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