DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-11 is/are pending.
Claim(s) 1-11 is/are rejected.
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 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-11 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-15 of copending Application No. 18/573,782 (US 2024/0300213) (TAKAHASHI ET AL), or
• claims 1-7 of copending Application No. 18/578,636 (US 2024/0308148) (TAKAHASHI ET AL) (allowed), or
• claims 1-16 of copending Application No. 18/723,979 (US 2025/0091297),
in view of TAGAWA ET AL (US 6,402,868).
The above copending Applications each claim a joining agent containing an amorphous thermoplastic resin, which is at least one of a thermoplastic epoxy resin or a phenoxy resin, for bonding a first base material A to a second base material B, wherein the joining agent is melted during the joining step. However, the copending Applications do not explicitly claim bonding two overlapping metal materials.
TAGAWA ET AL ‘868 discloses a continuous length-wise material (corresponding to the recited “belt-like shape” and the recited “continuous in a longitudinal direction” of claim 3) formed by overlapping and thermo-bonding the trailing end of a first sheet material (4) (corresponding to the recited “end portion A”) and the leading end of a second sheet material (6) (corresponding to the recited “end portion B”), wherein the thermo-bonding is provided by a resin bonding layer (5). The resin bonding layer (5) can be, but is not limited to, any resin layer exhibiting thermoplasticity (e.g., but not limited to, a thermoplastic resin such as thermoplastic polyimides and copolymers thereof, etc.) and has a typical thickness of about 0.1-100 microns. The first and second sheet materials (4) and (6) can be metal foils with a typical thickness of 5-500 microns, wherein at least the second sheet material (6) can be provided in the form of a roll. The resin bonding layer further comprises an adhesive tape component (7) which temporarily secures the ends of the first and second sheet materials (4) and (6) in position. The thermo-bonding of the first and second sheet materials (4) and (6) via the resin bonding layer (5) is accomplished by thermocompression (i.e., application of pressure and temperatures of 200 °C to less than 550 °C). (entire document, e.g., Figure 1-4, etc. ; line 10-61, col. 2 ; line 25-45, 50-68, col. 3 ; line 48, col. 4 to line 3, col. 5; line 14-58, col. 12; etc.)
Regarding claims 1-3, 6-8, 10-11, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the joining agents claimed in the above copending Applications as resin bonding layer (5) of TAGAWA ET AL ‘868 between the trailing end of a first sheet material (4) (corresponding to the recited “end portion A”) and the leading end of a second sheet material (6) (corresponding to the recited “end portion B”) in order to produce a continuous length-wise metal material for continuous processing operations from individual sheet material rolls.
Further regarding claims 1, 10, one of ordinary skill in the art would have subjected resin bonding layer (5) of TAGAWA ET AL to temperatures below the melting temperature of the resin bonding layer (5) in order to solidify resin bonding layer (5) and thereby provide a bond with sufficient cohesive strength to withstand subsequent process and/or manufacturing steps.
Regarding claim 4, one of ordinary skill in the art would have stored first sheet material (4) of TAGAWA ET AL in roll form in order to facilitate subsequent manufacturing at a later date and/or location.
Regarding claim 5, one of ordinary skill in the art would have selected the coverage of resin bonding layer (5) of TAGAWA ET AL relative to the area of the overlapped trailing end of a first sheet material (4) (corresponding to the recited “end portion A”) and the leading end of a second sheet material (6) (corresponding to the recited “end portion B”), depending on the specific bond strength and/or adhesion characteristics required for specific applications -- e.g., partial coverage of the overlapped area may be sufficient for some applications, while full coverage of the overlapped area may be necessary for other situations.
Regarding claim 9, one of ordinary skill in the art would have utilized a minor adhesive tape component (7) which is pressure sensitive (corresponding to the recited “pressure sensitive adhesive material”) in resin bonding layer (5) of TAGAWA ET AL in order to temporarily join or secure (corresponding to the recited “temporary fixing function” of claim 9) the first and second sheet materials (4) and (6) in the desired position, and to prevent shifting during thermo-bonding and material handling, wherein the adhesion between the first and second sheet materials (4) and (6) is entirely or primarily provided by the resin bonding layer (5) and not the adhesive tape component (corresponding to the recited “does not perform an adhesive function” of claim 9).
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103 (AIA )
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.
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) 1-5, 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• TAGAWA ET AL (US 6,402,868).
TAGAWA ET AL ‘868 disclose a continuous length-wise material (corresponding to the recited “belt-like shape” and the recited “continuous in a longitudinal direction” of claim 3) formed by overlapping and thermo-bonding the trailing end of a first sheet material (4) (corresponding to the recited “end portion A”) and the leading end of a second sheet material (6) (corresponding to the recited “end portion B”), wherein the thermo-bonding is provided by a resin bonding layer (5). The resin bonding layer (5) can be, but is not limited to, any resin layer exhibiting thermoplasticity (e.g., but not limited to, a thermoplastic resin such as thermoplastic polyimides and copolymers thereof, etc.) and has a typical thickness of about 0.1-100 microns. The first and second sheet materials (4) and (6) can be metal foils with a typical thickness of 5-500 microns, wherein at least the second sheet material (6) can be provided in the form of a roll. The resin bonding layer further comprises an adhesive tape component (7) which temporarily secures the ends of the first and second sheet materials (4) and (6) in position. The thermo-bonding of the first and second sheet materials (4) and (6) via the resin bonding layer (5) is accomplished by thermocompression (i.e., application of pressure and temperatures of 200 °C to less than 550 °C). (entire document, e.g., Figure 1-4, etc. ; line 10-61, col. 2 ; line 25-45, 50-68, col. 3 ; line 48, col. 4 to line 3, col. 5; line 14-58, col. 12; etc.)
Regarding claims 1-3, 10-11, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to subject the resin bonding layer (5) of TAGAWA ET AL ‘868 to temperatures sufficient at least partially melt the resin bonding layer (5) in order to improve wetting and coverage of the trailing end of a first sheet material (4) (corresponding to the recited “end portion A”) and the leading end of a second sheet material (6) (corresponding to the recited “end portion B”) in order to form a secure, overlapped bond between first and second sheet materials (4) and (6).
Further regarding claims 1, 10, one of ordinary skill in the art would have subjected resin bonding layer (5) of TAGAWA ET AL to temperatures below the melting temperature of the resin bonding layer (5) in order to solidify resin bonding layer (5) and thereby provide a bond with sufficient cohesive strength to withstand subsequent process and/or manufacturing steps.
Regarding claim 4, one of ordinary skill in the art would have stored first sheet material (4) of TAGAWA ET AL in roll form in order to facilitate subsequent manufacturing at a later date and/or location.
Regarding claim 5, one of ordinary skill in the art would have selected the coverage of resin bonding layer (5) of TAGAWA ET AL relative to the area of the overlapped trailing end of a first sheet material (4) (corresponding to the recited “end portion A”) and the leading end of a second sheet material (6) (corresponding to the recited “end portion B”), depending on the specific bond strength and/or adhesion characteristics required for specific applications -- e.g., partial coverage of the overlapped area may be sufficient for some applications, while full coverage of the overlapped area may be necessary for other situations.
Regarding claim 9, one of ordinary skill in the art would have utilized a minor adhesive tape component (7) which is pressure sensitive (corresponding to the recited “pressure sensitive adhesive material”) in resin bonding layer (5) of TAGAWA ET AL in order to temporarily join or secure (corresponding to the recited “temporary fixing function” of claim 9) the first and second sheet materials (4) and (6) in the desired position, and to prevent shifting during thermo-bonding and material handling, wherein the adhesion between the first and second sheet materials (4) and (6) is entirely or primarily provided by the resin bonding layer (5) and not the adhesive tape component (corresponding to the recited “does not perform an adhesive function” of claim 9).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• TAGAWA ET AL (US 6,402,868),
as applied to claims 1-5 above,
and further in view of YAMASHITA ET AL (US 5,480,965).
YAMASHITA ET AL ‘965 discloses that it is well known in the art to utilize polyimide resins which are amorphous and thermoplastic as adhesive materials (e.g., a polyimide-based film between two materials and hot-pressed to obtain adhesion.). (line 30-42, col. 3; line 33-50, col. 5; line 21-42, col. 39,
Regarding claim 6, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known amorphous thermoplastic polyimides (as disclosed in YAMASHITA ET AL ‘965) as resin bonding layer (5) of TAGAWA ET AL ‘868 between the trailing end of a first sheet material (4) (corresponding to the recited “end portion A”) and the leading end of a second sheet material (6) (corresponding to the recited “end portion B”) in order to produce a continuous length-wise metal material for continuous processing operations from individual sheet material rolls.
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• TAGAWA ET AL (US 6,402,868),
as applied to claims 1-5 above,
and further in view of TAKAHASHI ET AL (US 2021/0129488).
TAKAHASHI ET AL ‘488 discloses that it is well known in the art to utilize adhesive materials comprising:
• 50 parts by weight or more of a phenoxy resin (A) which is an amorphous thermoplastic resin (corresponding to the recited “amorphous thermoplastic resin not containing an epoxy group of claim 8);
• optionally a second thermoplastic resin (e.g., thermoplastic epoxy, etc.);
wherein the adhesive materials are subjected to melting, followed by solidification, in order to provide strong adhesion to at least the metal components of metal-containing composite structures. (paragraph 0018-0019, 0021, 0032, 0061-0067, etc.)
Regarding claims 6-8, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize other known thermoplastic, thermo-bondable phenoxy-based adhesive materials as disclosed in TAKAHASHI ET AL ‘488 as resin bonding layer (5) of TAGAWA ET AL ‘868 between the trailing end of a first sheet material (4) (corresponding to the recited “end portion A”) and the leading end of a second sheet material (6) (corresponding to the recited “end portion B”) in order to produce a continuous length-wise metal material for continuous processing operations from individual sheet material rolls.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KAIMORI ET AL (US 2012/0048598) and JP 02-252779 disclose adhesive materials comprising epoxy resin and thermoplastic phenoxy resin.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
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September 5, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights