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 .
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 4 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.
Claim 4 recites the limitation " the adhesive layers" in the first and second lines. There is insufficient antecedent basis for this limitation in the claim as claim 1 does not recite the plurality “adhesive layers.” For purposes of compact prosecution, the examiner will consider this term to be singular “adhesive layer.”
Claim Objections
Claim 5 objected to because of the following informalities: the term "the compounds" on the first and second line should be singular: "the compound".. Appropriate correction is required. For the purposes of compact prosecution, the examiner will consider this term to be singular.
Claim 15 recites the terms “ɸm” (phi) instead of “µm” (mu) as the term description for the factor “micrometer” or “micron.” Appropriate correction is required. For the purposes of compact prosecution, the examiner will consider this term µm” (mu) as the term description for the factor “micrometer” or “micron.”
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 11, 13 and 16 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Landerer (US 2016/0322679 A1).
Regarding Claim 1, Landerer discloses a combination (abs, a method for producing an assembly) comprising a motor-vehicle heat-generating unit (Fig. 1 abs, paragraphs [0003] [0004] [0044] energy storage module – 12 transfers a sufficient amount of heat used in electrically operated vehicles);
a support adapted to carry the unit (Figs. 1, 2 paragraph [0050] continuous high-voltage protective film – 26);
an adhesive tape between the unit and the support (Figs. 1, 2 paragraph [0050] heat-conducting layer – 24 has a continuous layer – 28 of a heat-conducting adhesive where the continuous layer is tape-like) and including
a core film substrate band having a face turned toward the unit and a face turned away from the unit and toward the support (Figs. 1, 2 paragraph [0049] heat-conducting layer – 24 has a flat design and covers the entire contact side – 20 of the energy storage module – 12 where the continuous layer – 28 faces the unit and the high-voltage protective film – 26 faces away from the unit that are both part of the heat-conducting layer),
a thermally conductive adhesive layer between one of the faces and the unit and adhesively securing the band to the unit (Fig. 2 paragraph [0053] where the heat-conducting adhesive – 28 is applied in a predetermined pattern can be a zigzag pattern), and
etching on the other face in heat-conducting engagement with the support (Figs 1, 2 paragraph [0053] the upper side of the high-voltage protective film – 26 is cleaned and active in a plasma process in order to improve the adhesion of the heat-conducting adhesive – 28, where plasma cleaning and activation implies etching being involved).
Regarding Claim 11, Landerer anticipates all the limitations of claim 1 and further anticipates that the film substrate band has one or more plies (paragraph [0025] High-voltage protective films which are adhesive on one side are preferably used together with a layer of a heat-conducting adhesive)
Regarding Claim 13, Landerer anticipates all the limitations of claim 1 and further anticipates a layer of thermally conductive adhesive or gel between the other face and the support (paragraph [0026] in a preferred variant a high-voltage protective film which is adhesive on one side is used, the respective surface facing the adhesive side of the high -voltage film is intended to remain free from the heat-conducting adhesive (other side)).
Regarding Claim 16, Landerer anticipates all the limitations of claim 1 and further anticipates the support is part of a cooler for the unit, whereby heat is drawn from the unit and taken up by the support for cooling the unit (Fig. 1 paragraph [0048] energy storage module – 12 connected to the cooling element – 14 such that an extensive and uniform transfer of heat occurs between a contact side – 20 of the module- 12 and a contact side – 22 of the upper side of the cooling element – 14).
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.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Landerer (US 2016/0322679 A1) in view of Muessig (US 2011/0104488 A1).
Regarding Claims 2 and 3, Landerer anticipates all the limitations of claim 1 but does not anticipate that the etching is acetic acid etching and wherein the acetic acid is trichloroacetic acid.
However, Muessig teaches in a teaching from a disclosure of a pressure-sensitive adhesive construction (abs) and having high heat-aging and stability (paragraph [0008]) and that it routinely uses in its embodiments the use of an acetic acid for etching purposes: (Examples 1, 3, 7, 12, 14,1517, 19, and 21) and where one would be motivated to use this etching method to improve the adhesion of the heat conducting adhesive as with the plasma etching recited in claim 1).
Claim(s) 4-10, 12 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Landerer (US 2016/0322679 A1) in view of Muessig (DE 10 2007 027 853 A1) IDS 02/25/2025 with machine translation. Evidence provided for claims 7-8 SpecialChem Adhesive ingredients/ Guide/Conductive fillers: How to select the right grade for adhesives & sealants? website https://www.specialchem.com/adhesives/guide/conductive-fillers-adhesives-sealants
Regarding Claim 4, Landerer anticipates all the limitations of claim 1 but does not disclose that the adhesive layer (see 112(b) rejection above) is formed of a compound selected from the group of natural or synthetic rubber-based adhesive compounds.
Muessig discloses in an analogous art, a halogen-free flame-retardant winding tape that can be used for multiple purposes including cable harnesses in vehicles (abs) and having an adhesive coating, which is pressure-sensitive applied to at least one side of a carrier film (paragraph [0038]). Moreover, this adhesive layer is formed of a compound selected from the group of natural or synthetic rubber-based adhesive compounds (paragraphs [0026] [0096] adhesive made of natural or synthetic rubber are essentially suitable for this purpose; common types of adhesive are suitable, especially those based on rubber).
One with ordinary skill in the art would use a natural or synthetic rubber because these materials prove sufficient unwinding force or adhesive strength on the back side in order to be applied to the object to be wrapped in a slightly stretched state (paragraph [0026]).
Regarding Claim 5, the combination of Landerer and Muessig disclose all the limitations of claim 4 and Muessig further discloses that the compounds is a UV-crosslinkable polyacrylate adhesive compound (paragraph [0103] UV adhesive compound having application-specific properties through a radiation-induced cross-linking process).
Regarding Claim 6, Landerer anticipates all the limitations of claim 1 and Muessig discloses the adhesive layer is applied with an application weight from 15 to 200 g/m2 (paragraph [0134] application weight of 18 g/m2).
Regarding Claims 7 and 8, Landerer anticipates all the limitations of claim 1 and Muessig discloses the adhesive compound layer contains a thermally conductive filler material and wherein the filler material is as graphite or a mineral (paragraph [0098] suitable fillers for the adhesive compound include carbon black and several minerals as listed which are inherently thermally conductive). See evidence: SpecialChem Adhesive ingredients/ Guide/Conductive fillers: How to select the right grade for adhesives & sealants? website https://www.specialchem.com/adhesives/guide/conductive-fillers-adhesives-sealants See section: Thermal conductivity 5th paragraph Examples include graphite powders, carbon black
Regarding Claim 9, Landerer anticipates all the limitations of claim 1 and Muessig discloses the film substrate band has a base of polyamide, polyurethane, or polyvinyl chloride (abs, a film of thermoplastic polyurethane).
Regarding Claim 10, the combination of Landerer and Muessig disclose all the limitations of claim 9 and Landerer further discloses that the base is polyethylene terephthalate (paragraph [0024] high-voltage protective film composed of a suitable plastic, for example PET).
Regarding Claim 12, Landerer anticipates all the limitations of claim 1 and Muessig discloses the film substrate band contains a flame retardant (paragraph [0097] adhesive compound can be mixed with flame retardants).
Regarding Claim 14, Landerer anticipates all the limitations of claim 13 and Muessig discloses the adhesive or gel between the other face and the support is based on silicone or aluminum oxide.
Regarding Claim 15, Landerer anticipates all the limitations of claim 1 and Muessig discloses the film substrate band has a thickness from 5 ɸm 250 ɸm (paragraph [0065] film thicknesses preferable between 55-100 µm). where the factors of ɸm appear to be the Greek letter phi rather than the Greek letter mu µ. The examiner considers the terms to be “µ”. See claim objection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE K. SWIER whose telephone number is (571)272-4598. The examiner can normally be reached M-F generally 8:30 am - 5:30 pm PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE K. SWIER/Examiner, Art Unit 1748 /JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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