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 .
Response to Amendment
This action is responsive to applicant’s amendment filed 7/23/2026.
Claims 1-3, 6-9 are pending.
The previous rejection of claims 1-3, 5-9 under 35 U.S.C. 102(a)(1) as being anticipated by Mori (US2006/0097231) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 1-4, 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Handa et al. (US6,452,476) is withdrawn in view of applicant’s amendment.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 6/23/2026 has been considered by the examiner. Initialed copies accompany this action.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office 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 § 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.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
Claim 2 recites “the composition consists of the following agent A and agent B, agent A: a composition containing the epoxy resin as component (A) and the spike-shaped electrically conductive filler as component (B); and agent B: a composition containing the curing agent for epoxy resin as component (C)”. However, claim 1, which claim 2 depends from, requires the composition comprising A, B, C and a polyfunctional radically polymerizable compound as component (D). The “consisting of” excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948). The omitted element is component D.
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.
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.
Claims 1-3 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ohsawa et al. (US20190067680).
Regarding claims 1 and 3, Ohsawa discloses an electrically conductive resin composition (nickel slurry) comprising: an epoxy resin as component (A) (CELLOXIDE 2021P, alicyclic epoxy resin); a spike-shaped electrically conductive filler as component (B) (Vale, Type 123); and a curing agent for epoxy resin as component (C) (SANAID SI-60), and a polyfunctional radically polymerizable compound as component (D) (polyfunctional epoxy resin [MARPROOF G2050M). See para 0489. In this embodiment, epoxy resin as component (A) is an alicyclic epoxy resin. However, Ohsawa discloses that liquid phase epoxy resin including glycidylamine type epoxy resin can be used (para 0130). It would have been obvious to one of ordinary skill in the art before the filling date of the invention to use glycidylamine type epoxy resin in addition to or to replace the alicyclic epoxy resin in the composition, and by using any liquid phase epoxy resin, the crosslinked epoxy resin which has impermeability to the electrolyte solution can be obtained (para 0131).
Regarding claim 6, Ohsawa discloses the electrically conductive resin composition according to claim 1, wherein the component (C) is in a liquid state at 25°C (CPI-100P”, “CPI-110P”, “CPI-101A” or the like manufactured by San-Apro Ltd, para 0135) can be used in place of other curing agents.
Regarding claim 7, Ohsawa discloses the electrically conductive resin composition according to claim 1, comprising no peroxide (whole document).
Regarding claim 8, Ohsawa discloses the electrically conductive resin composition according to claim 1, wherein 100 to 1000 parts by mass of the component (B) is comprised relative to 100 parts by mass of the component (A) (para 0106 and 0119).
Regarding claim 9, Ohsawa discloses the cured product obtained by curing the electrically conductive resin composition according to claim 1 (para 0494).
Response to Arguments
Applicant’s arguments filed 7/23/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 HAIDUNG D NGUYEN whose telephone number is (571)270-5455. The examiner can normally be reached M-Th: 10a-3p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAIDUNG D NGUYEN/ Primary Examiner, Art Unit 1761
10/14/2026
