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 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.
Election/Restrictions
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 May 6, 2026.
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.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “low” in claim 1 is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “finely” in claim 1 is a relative term which renders the claim indefinite. The term “finely” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “high” in claim 1 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “adequate” in claim 1 is a relative term which renders the claim indefinite. The term “adequate” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 3, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 8, the phrase "and the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Regarding claim 9, the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim 4 recites the limitation "the solution polymerization" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 claims a group of possible organic solvents which represent Markush groups, as they all belong to a recognized chemical class; however, they should be claimed using proper Markush language, and may be recited as, “wherein R is a material selected from the group consisting of A, B,C, and D,” or “wherein R is (selected from) A, B, C, or D." See MPEP 2173.05(h).
Claim 1 claims “…said dispersion is selected from the group comprising dispersions of phenoxy resins…”
Claim 1 claims “…said dispersion is selected from the group comprising polyurethane dispersions…”
Claim 5 claims “at least one polyol is selected from the group comprising…”
Claim 6 claims “at least one isocyanate is selected from the group comprising…”
Claim 8 claims “the materials where the resin is applied are from the group comprising…”
Claim 9 claims “a final product which is selected from the group comprising…”
A list of specified alternatives is defined as a Markush group. A Markush group is a closed group of alternatives, i.e., the selection is made from a group “consisting of” (rather than “comprising” or “including”) the alternative members. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group comprising” or the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as “at least one member” selected from the group), or within the list of alternatives (such as “or mixtures thereof”). See MPEP 2173.05(h).
In claim 7, applicants claim “in that said composition has a viscosity not greater than 100 cps…”; however, in the specification, applicants disclose “the resin has a viscosity of no greater than 100 cps”. It is unclear as to whether applicants are claiming the viscosity of the phenoxy resin, the polyurethane resin, of the adhesive resin composition.
It is noted that since claim 2 is ultimately or directly depends from claim 1, it is rejected along with claim 1 because it incorporates all of the limitations of claim 1, including those that are indefinite.
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 1-6, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inada (US 5,965,269).
Inada exemplifies an adhesive composition comprising 10 wt% of a phenoxy resin which is mixed in methyl ethyl ketone with a beads mill to obtain a varnish which is applied to a release-treated PET film, heated at 110°C for 15 min to dry to give an insulation adhesive film in B-stage (col. 11-12, Example 1).
Inada exemplifies using the adhesive to bond a copper foil to an aluminum plate. Copper and aluminum have low thermodynamic compatibility because they possess different thermal expansion rates.
The presence of a polyurethane dispersion is not required due to the “and/or” claim language. Therefore, Inada anticipates instant claims 1-3.
Claims 4-6 can be rejected, as these claims only limit the polyurethane when it is present.
As to claim 8, the varnish is applied to a PET film.
As to claim 9, the adhesive is used in electronic devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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