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 .
Examiner Note
The currently presented Non-Final is replacing the Non-Final mailed on 06/03/2026 and corrects the period for reply.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/04/2024 has been considered by the examiner.
Specification
The substitute specification filed 12/04/2024 is acknowledged and has been approved for entry by the examiner.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-2, 4-5, 7-8, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Toyouchi (JP 2006297642 A – of record), in view of at least one of Iwaya et al. (WO 2020/071022 A1), or Harada (JP 202119260 A), or Yamamoto et al. (JP 2020172448 A).
Regarding claim 1, Toyouchi discloses a transfer film for in-mold molding. The transfer film to include a base resin film 1 – (construed as a substrate film), a release layer 2, and a conductive resin layer as a vapor deposition protection layer 3 – (construed as a conductive resin layer, and the conductive layer contains a resin) disposed in this order, see at least figure 1, [0019].
While Toyouchi discloses the conductive layer is formed of conductive nickel, see [0030] – (construed as the conductive layer contains particles, and the particles being made of one or more substances selected from the group consisting of zerovalent carbon, silver, gold, copper, nickel, chromium, palladium, indium, aluminum, zinc, and platinum); it does not explicitly disclose the particle amount, the conductive resin amount or the weight average molecular weight of the resin.
Iwaya discloses a resin film formed of an acrylic resin, see page 71 paragraph 5 and conductive metal oxide particles, see page 75 paragraph 7, page 80 paragraph 5. The examiner notes the acrylic resin and conductive metal oxide particles is consistent with Toyouchi’s conductive resin layer comprising an acrylic resin and conductive filler, see at least Toyouchi [0020]. Thus, one of ordinary skill would appreciate Iwaya’s disclosure of the providing the resin in an amount of 5% to 30% by weight and where doing so, adsorption of the metal oxide particles and the acrylic resin becomes stronger and the scratch resistance of the resin film can be improved, see page 80, paragraph 3 – (corresponds to and overlaps containing resin in an amount of 9 mass% or more and 40 mass% or less).
Likewise, Harada discloses a molded film to include a conductive layer comprising an acrylic resin and conductive particles, see page 34 paragraph 3, page 39 paragraph 1. The acrylic resin is provided in an amount of 5% by mass or more with respect to the total amount of solid content contained in the conductive resin composition and 50% by mass or less. And where doing so allows for improving properties such as adhesion, flexibility and conductivity of the layer, see page 39 paragraph 3 – (corresponds to and overlaps a conductive layer also containing resin in an amount of 9 mass% or more and 40 mass% or less, by mass or less). The conductive particles are provided in an amount of 50% by mass or more and 85% by mass or less. And where doing so allows for improving properties such as adhesion, flexibility and conductivity of the layer, see page 40 paragraph 2 – (corresponds to and overlaps a conductive layer contains particles in an amount of 60 mass% or more and 91 mass% or less in 100 mass% of the conductive layer).
Yamamoto discloses film composition having conductive particles and a polyester resin, see page 44 paragraph 4, page 46 paragraph 7. The polyester resin is provided having a weight average molecular weight of 3000 – 50000, see page 47 paragraph 11 – (corresponds to and overlaps the resin having a weight average molecular weight of 5,000 or more and less than 10,000). And where doing so contributes to forming a conductive film composition having sufficient functions even when the concentration of the functional filler is relatively low, see page 39 paragraph 10.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Toyouchi’s conductive particle amount to be 50% - 85% by mass as taught by Harada; the conductive resin amount to be 5% - 50% by mass as taught by Harada or 5% to 30% by weight as taught by Iwaya; and the weight average molecular weight of the resin to be 3,000 – 50,000 as taught by Yamamoto to provide the transfer film with the abovementioned properties. Concerning the claimed ranges: The examiner takes note of the fact that the above mentioned prior art ranges completely encompasses the claimed ranges discussed. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 2, modified Toyouchi discloses the conductive layer has a thickness of 10 μm, see [0030] – (correspond to the conductive layer has a thickness of 5 μm or more and 15 μm or less). Concerning the claimed ranges: Toyouchi teaches the conductive layer thickness being 10 μm which fully encompasses the claimed conductive layer thickness of 5 μm or more and 15 μm or less. The examiner takes note of the fact that the prior art range completely encompasses the claimed range. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 4, modified Toyouchi discloses the base/substrate film 1, the release layer 2, the conductive layer 3-4, and an adhesive layer 5 disposed in this order, see at least Toyouchi figure 1.
Regarding claim 5, modified Toyouchi discloses the release layer contains silicone resin as primary component, see Toyouchi [0018].
Regarding claims 7-8, modified Toyouchi discloses the resin is a polyester resin having an acid value of 10 to 60 mgKOH/g, see Yamamoto page 47 paragraph 8 – (corresponds to and overlaps 5 mgKOH/g or more and 20 mgKOH/g or less). Concerning the claimed ranges: The examiner takes note of the fact that the above mentioned prior art ranges completely encompasses the claimed ranges discussed. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 11, modified Toyouchi discloses the base/substrate film is a polyethylene terephthalate film, see Toyouchi [0016].
Regarding claim 12, modified Toyouchi discloses the base resin film 1 is required to have heat resistance that can sufficiently withstand the temperature of the molten resin until the molten resin is injected into the mold cavity, and shapeability that can follow slight changes in the shape of the mold cavity (construed as a production method for molded articles comprising a step for placing the molding film for in-mold transfer according to claim 1 in a mold cavity and then injecting a molding resin), see Toyouchi [0015].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Toyouchi (JP 2006297642 A – of record), in view of at least one of Iwaya et al. (WO 2020/071022 A1), or Harada (JP 202119260 A), or Yamamoto et al. (JP 2020172448 A), as applied to claim 5 above, and further in view of Takehisa (JP 2005088389 A).
Regarding claim 6, modified Toyouchi does not explicitly disclose the release layer uses an alkyd modified silicone resin as a primary component. Takehisa discloses a release film. The release film includes a layer to comprise a alkyd modified silicone resin wherein its use allows for improved toughness and wettability of the release layer, see page 26 paragraph 1 – (corresponds to the release layer contains an alkyd modified silicone resin as primary component).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust modified Toyouchi’s release layer to include an alkyd modified silicone resin as a primary component as taught by Takehisa to provide the transfer film with the above mentioned benefits.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Toyouchi (JP 2006297642 A – of record), in view of at least one of Iwaya et al. (WO 2020/071022 A1), or Harada (JP 202119260 A), or Yamamoto et al. (JP 2020172448 A), as applied to claim 1 above, and further in view of Suzuki et al. (JP 2022133621 A).
Regarding claim 9, modified Toyouchi does not explicitly disclose an aspect ratio of the conductive particles. Suzuki discloses a conductive paste formable of a polyester resin and conductive particles. The particles having an aspect ratio of 1-100. In particular spherical shaped particles having an aspect ratio of 1.2 or less – (corresponds to and overlaps first type particles having an aspect ratio of 1 or more and less than 2); and non-spherical particles having an aspect ratio of 2 or more – (corresponds to and overlaps second type particles having an aspect ratio of 2 or more). And where doing so allows for improved packing density, see page 22 paragraphs 6-7; page 26 paragraph 1.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust modified Toyouchi’s conductive particles to the claimed aspect ratio as taught by Suzuki to provide the transfer film with the above mentioned benefits. Concerning the claimed ranges: The examiner takes note of the fact that the above mentioned prior art ranges completely encompasses the claimed ranges discussed. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Toyouchi (JP 2006297642 A – of record), in view of at least one of Iwaya et al. (WO 2020/071022 A1), or Harada (JP 202119260 A), or Yamamoto et al. (JP 2020172448 A), as applied to claim 1 above, and further in view of Ota et al. (JP 2004193358 A).
Regarding claim 10, while modified Toyouchi discloses its transfer film has a magnetic field shielding property of 10 dB or more at a frequency of 30 MHz measured by the Advantest method; it does not explicitly disclose a measure of the KEC method. Ota discloses it is common to a protective casing having an electromagnetic wave shielding capability of 30 dB or more in a frequency band of 30 MHz to 3000 MHz, see page 14 paragraph 1 – (corresponds to and overlaps electromagnetic wave shielding capability of 40 dB or more when the molding film for in-mold transfer is examined by the KEC method (electric field) for electromagnetic waves with a frequency of 300 MHz).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust modified Toyouchi’s transfer film to the claimed shielding capability as taught by Ota to protect the transfer film from externally generated electromagnetic waves. Concerning the claimed ranges: The examiner takes note of the fact that the above mentioned prior art ranges completely encompasses the claimed ranges discussed. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Allowable Subject Matter
Claim 3 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.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record:
Toyouchi discloses a transfer film for in-mold molding. The transfer film to include a conductive layer. However, Toyouchi does not teach or reseanably suggest forming the conductive layer wherein the conductive layer exhibits a glass transition temperature of 40°C or more and 100°C or less when heated from 20°C to 250°C at a rate of 20°C/min in a nitrogen atmosphere using a differential scanning calorimeter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEDRICK S WILLIAMS whose telephone number is (571)272-9776. The examiner can normally be reached on Monday - Thursday 8:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached on 5712705545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEDRICK S WILLIAMS/Primary Examiner, Art Unit 1749
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