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 .
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 4/10/2025 and 8/7/2026 have been considered by the examiner. Initialed copies accompany this action.
Drawings
The Drawings filed 1/29/2025 are approved by the examiner.
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 1-6, 8-10, 12-20 are rejected under 35 U.S.C. 103 as obvious over Bieber et al. (US2021/324244).
Regarding claims 1-3, Bieber discloses a conductive adhesive comprising: a pressure sensitive adhesive matrix comprising at least one non-linear block copolymer comprising aromatic end blocks and aliphatic elastomeric blocks (para 0071 multi-arm star block copolymer; Kraton D1340 Polymodal asymmetric SIS star block copolymer; Table 4); at least one hydrocarbon-based tackifying resin (para 077-78); at least one aromatic reinforcing resin (Novares, para 0083, Table 4); and electrically conductive particles dispersed within the matrix (filler, para 0114). See Table 4, Skin 1 and Skin 2.
Bieber does not disclose when disposed on a 50-micrometer thick polyethylene terephthalate backing has a 180° Peel Adhesion of at least 15.0 Newtons/decimeter at Room Temperature, and when disposed on a copper foil backing has a DC Resistance of less than 0.4 ohms as measured by ETM-7, and wherein the 1800 Peel Adhesion changes by 25% or less after aging on a conductive fabric substrate for at least 1 week at 85° C. and 85% Relative Humidity. However, given that the conductive adhesive of Bieber comprises of all the claimed elements, a person having an ordinary skill in the art would reasonably expect the conductive adhesive to have the claimed properties because it has been held that "products of identical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established." When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claim 4, Bieber discloses the non-linear block copolymer comprises a star copolymer with styrene end blocks and isoprene elastomeric blocks wherein the styrene end blocks comprise 9-10% by weight of the total polymer (Kraton D1340, Table 4 has 9.2% styrene content, see US10626268).
Regarding claim 5, Bieber discloses at least one hydrocarbon tackifying resin comprises a hydrogenated or partially hydrogenated hydrocarbon resin (Escorez 5615).
Regarding claim 6, Bieber discloses at least one aromatic reinforcing resin comprises a thermoplastic aromatic co-polymer with a Tg of greater than 100° C (Novares TN 170 or T140M, Table 4).
Regarding claim 8, Bieber discloses the conductive adhesive comprising: a pressure sensitive adhesive matrix comprising: 40-70 parts by weight of at least one non-linear block copolymer (para 0059 and 076); 30-60 parts by weight of hydrocarbon-based tackifying resin (para 0089 and 0100 and Table 4); 2-8 parts by weight aromatic reinforcing resin (Table 4); and 15-30 parts by weight electrically conductive particles (para 0117-118).
Regarding claims 9 and 10, Bieber discloses conductive adhesive of claim 1, wherein the conductive adhesive further comprises at least one additive comprising conductive nanoparticles, wherein the conductive nanoparticles comprise carbon nanotubes, metallic nanowires, metallic nanoflakes, metallic nanograins, and metallic nanospheres (para 0115).
Regarding claim 12, the limitation “the conductive adhesive can be tested for passive intermodulation by forming a tape, the tape comprising a layer of the conductive adhesive and an electrically conductive layer, and placing the tape in a test fixture comprising gold conductive surfaces, and wherein when first and second electrical signals propagate in the thickness direction of the conductive adhesive layer between the gold surfaces at respective frequencies F1 and F2, any intermodulation signal generated from the first and second electrical signals having a frequency F3 equal to nF1+mF2, m and n positive or negative integers, has a power of less than about −95 dBm relative to a total power of the first and second signals” recites an intended use and/or properties of the conductive adhesive. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Additionally, the composition of prior art is identical or substantially identical that set forth by applicant. Therefore, the composition of prior art would possess the same properties as claimed.
Regarding claims 13, Bieber discloses an electrically conductive article (assembly, para 0023-24, 0218) comprising: a substrate with a first major surface and a second major surface; and an electrically conductive adhesive layer disposed on at least a portion of the second major surface of the substrate; wherein the electrically conductive adhesive comprises: a pressure sensitive adhesive matrix comprising at least one non-linear block copolymer comprising aromatic end blocks and aliphatic elastomeric blocks; at least one hydrocarbon-based tackifying resin; at least one aromatic reinforcing resin; and electrically conductive particles dispersed within the matrix; wherein the conductive adhesive is a pressure sensitive adhesive and when disposed on a 50-micrometer thick polyethylene terephthalate backing has a 180° Peel Adhesion of at least 15.0 Newtons/decimeter at Room Temperature, and when disposed on a copper foil backing has a DC Resistance of less than 0.4 ohms as measured by ETM-7, and wherein the 1800 Peel Adhesion changes by 25% or less after aging on a conductive fabric substrate for at least 1 week at 85° C. and 85% Relative Humidity.
Regarding claim 14, Bieber discloses the substrate comprises an electrically conductive substrate (para 0218).
Regarding claim 15, Bieber discloses the electrically conductive substrate comprises a non-woven layer comprising metal coated polymer fibers, a woven fabric layer comprising metal coated polymer fibers, a film layer with a metal coated surface, or a metal foil (para 0218).
Regarding claim 16, Bieber discloses the article further comprises a second layer of conductive adhesive disposed on the first major surface of the electrically conductive substrate (para 0029-30, Fig. 1 and 2).
Regarding claim 17, Bieber discloses the substrate comprises a release liner (para 0029-30, Fig. 1 and 2).
Regarding claim 18, Bieber discloses the at least one non-linear block copolymer comprises a star or comb copolymer (para 0071 multi-arm star block copolymer; Kraton D1340 Polymodal asymmetric SIS star block copolymer; Table 4).
Regarding claims 19 and 20, Bieber discloses the at least one non-linear block copolymer comprises aromatic end blocks comprise styrene blocks, and the aliphatic elastomeric blocks comprise isoprene, farnesene, or a combination thereof (Kraton D1340, Table 4 has 9.2% styrene content, see US10626268).
The above claims are obvious over the teachings of the reference because selecting the conductive particles (carbon fibers, graphite fibers, electrically and/or thermally conducting particles) as the filler and selecting the overlapping range of elements to produce the conductive adhesive would have been within the purview of the skilled artisan. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). In addition, product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103, See In re Wertheim 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and MPEP 2144.05, I.
Claims 7, 9-11 are rejected under 35 U.S.C. 103 as obvious over Bieber et al. (US2021/324244) in view of Choi et al. (US2012/0295052) and Choi et al (US2019/0316008).
Bieber discloses the conductive adhesive described above and is incorporated herein by reference. Bieber discloses the electrically conductive particles comprises graphite but does not disclose the electrically conductive particles comprise particles of nickel-coated graphite and carbon nanotube. Choi ‘052 discloses pressure sensitive adhesive material comprises nickel-coated graphite dispersed within the adhesive material, wherein the adhesive material includes between about 1 and about 70% metal particles, particularly between about 2 and about 60% metal particles (para 0033). Choi ‘008 discloses pressure sensitive adhesive material comprises carbon nanotubes dispersed within the adhesive material, wherein the adhesive material includes between about 0.1 and about 50% metal particles (para 0031). It would have been obvious to one of ordinary skill in the art before the filling date of the invention to nickel-coated graphite and carbon nanotubes within the claimed ranges as the filler in the conductive adhesive of Bieber, to provide sufficient electrical properties and can be used to form electrical connection between electrical components, and also for shielding from electromagnetic radiation interference (EMI).
Conclusion
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.
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/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
9/16/2026
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