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 .
Claims 1, 2 and 4-15 are pending in this application, Claims 8-13 are acknowledged as withdrawn, Claims 1, 2, 4-7, 14 and 15 were examined on their merits.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 06/02/2026 is sufficient to overcome the rejection of claims 1-7 based upon 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as set forth in the prior action because it establishes that the Applicant had possession of the claimed conductive adhesive film at the time of the invention.
The rejection of Claims 1-7 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement has been withdrawn due to the Applicant’s amendment to the claims and the Declaration filed filed 06/03/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is newly rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement for containing NEW MATTER. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 15 recites, “…or glass beads whose surface is coated with metal or carbon”. There is insufficient support in the originally filed disclosure for this new limitation. Neither the Specification or original claims disclose the claimed glass beads, and while the Declaration filed 06/03/2026 indicates that certain embodiments in the Specification disclose silver=coated glass beads (Examples 2-3, 3M™ Japan Limited, 2017 Cat. Nos. 1170 and 1181), these embodiments do not have the claimed electrical resistance or glass transition properties.
Applicant is invited to indicate where support for the new limitation may be found in the disclosure or delete the NEW MATTER.
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, 2, 4-7, 14 and 15 are newly 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 1 now recites, “the biological tissue is attached to the surface of the conductive adhesive film”. It is unclear to which surface of the presumably 6 possible surfaces of the film the tissue is attached. Claims 2, 4-7, 14 and 15 are rejected as being dependent upon rejected Claim 1 and for failing to remedy the indefiniteness thereof.
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.
Claims 1, 4, 7, 14 and 15 are newly rejected under 35 U.S.C. § 103 as being unpatentable over Ul-Hamid (2018), as necessitated by Applicant’s amendments to the claims filed 06/02/2026.
Ul-Hamid teaches that scanning electron microscopy (SEM) can be used to examine tissues, cells, insects and leaves (biological materials) (Pg. 9, Table 1.2 and Pgs. 348-349, Paragraph 8.5);
that for conventional SEM, the specimen surface must be electrically conductive and electrically ground to prevent the buildup of electrostatic charge at the surface, wherein it is customary to use conductive tape to establish electrical contact of the (conductive thin film) coated specimen with the specimen holder and the stage (Pg. 163, Paragraph 4.4.1.1[a]);
wherein double sided adhesive tape(film) can be used to mount the specimen (on the top facing surface of the tape) on an aluminum SEM holder/stage (Pg. 326, Fig. 8.12 and Paragraph 8.2.7.1);
wherein the use of conductive tape allows for electron dissipation and minimizes beam damage (Pg. 395, Lines 8-10);
wherein since SEM is usually operated at high vacuum, this necessitates the use of dry specimens (Pgs. 173-174, Paragraph 4.7.1.2);
wherein the sample can be frozen, such as by freeze-drying (sublimation) (Pg. 325, Paragraph 8.2.3);
and wherein a low-temperature microtome can be used to produce a thin sample slice (Pgs. 339-340, Paragraph 8.4.6).
The teachings of Ul-Hamid were discussed above.
Ul-Hamid did not teach wherein the conductive adhesive film has 1.0 x 10-2 Ω to less than 2.0 x 107 Ω electrical resistance between two points, separated by 75 mm on a surface of the conductive adhesive film;
the conductive adhesive film comprises a backing and a conductive adhesive disposed on a surface of the backing;
the backing is selected from the group consisting of a metal foil, a plastic, and a fiber; the conductive adhesive comprises a conductive substance and an adhesive polymer;
the adhesive polymer is an acrylic-based adhesive or a silicone-based adhesive;
the conductive substance is metal or carbon;
a median value of a temperature range in which the adhesive polymer of the
conductive adhesive film exhibits glass transition in DSC (Differential Scanning Calorimetry) measurement is 150 °C to -40 °C, as now required by Claim 1;
wherein the adhesive polymer is a silicone-based adhesive, as required by Claim 4;
wherein the sliced, biological tissue is in a dry state, as required by Claim 7;
wherein the conductive substance is blended in the adhesive polymer in the conductive adhesive film, as required by Claim 14;
or wherein the conductive substance is a metal powder, as required by Claim 15.
The disclosure indicates that ESD-EMI Cat. No. T-9426. 2018 catalog is a conductive silicone-based double-sided adhesive film (a double-sided adhesive film in which a first adhesive and a second adhesive, consisting of a conductive filler and a silicone-based adhesive polymer, are laminated on both sides of a metal foil backing which was publicly available prior to the effective filing date of the claimed invention (See Specification as filed at Pg. 17, Paragraph [0053]).
The Specification as filed indicates that T-9426 conductive adhesive tape (Example 1) has the claimed electrical resistance and glass transition properties (see Specification as filed at Pg. 19, Table 1 and Pg. 20, Table 2).
The Declaration filed 06/02/2026 indicates in a translation of a 2013 catalog that T-9426 tape uses nickel (powder) as the conductive substance and aluminum foil as the backing and uses a silicone-based adhesive prior to the effective filing date of the claimed invention (see Declaration, Pg. 2, Lines 16-29).
It would have been obvious to those of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Ul-Hamid of mounting a specimen, which may be a dry biological tissue, on a conductive adhesive tape for examination by SEM to use the T-9426 conductive adhesive film because the Ul-Hamid reference is drawn to the general use of conductive adhesive films for SEM of biological specimens and the T-9426 conductive adhesive film is known in the art as being a suitable conductive adhesive film which would be suitable for SEM. Those of ordinary skill in the art would have been motivated to make this modification in order to prevent the buildup of electrostatic charge at the surface of the specimen during SEM and retain the specimen on the SEM stage even at low temperatures. There would have been a reasonable expectation of success in making this modification because Ul-Hamid generally teaches the use of conductive adhesive films for SEM analysis of biological specimens and the T-9426 conductive adhesive film was publicly available and suitable for SEM.
It would have been further obvious to those of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Ul-Hamid of mounting dry biological tissue on a T-9426 conductive adhesive tape for examination by SEM to mix the nickel powder conductive substance with the silicone-based adhesive because there are only a finite number of ways to combine the two component, either mixed together or discretely. See the MPEP citing KSR at 2143, I., E.
Those of ordinary skill in the art would have been motivated to make this modification in order to prepare a conductive adhesive for use on a SEM conductive adhesive tape. There would have been a reasonable expectation of success in making this modification because there are only two ways that a nickel powder conductive substance may be combined with a silicone-based adhesive.
Claims 1, 2, 4, 5, 6, 7, 14 and 15 are newly rejected under 35 U.S.C. § 103 as being unpatentable over Ul-Hamid (2018), as applied to Claims 1, 4, 7, 14 and 15 above, and further in view of Kawamoto et al. (2010) as evidenced by Reeves et al. (2010) and Bashyal (2024), of record, as necessitated by Applicant’s amendments to the claims filed 06/02/2026.
The teachings of Ul-Hamid were discussed above.
Ul-Hamid did not teach wherein the sliced biological tissue is embedded with a water-soluble embedding agent, as required by Claim 2;
wherein the sliced biological tissue is at -35 to -10 °C, as required by Claim 5;
or wherein the sliced biological tissue is at 10-30 °C, as required by Claim 6.
Kawamoto teaches an adhesive film method for preparing frozen tissue sections embedded in carboxymethylcellulose (CMC) or whole animals comprising cutting/slicing the frozen tissue at a temperatures of -15 °C to -27 °C (Pg. 128, Column 1, Lines 12-25) or freeze-drying at -20 °C followed by thawing to room temperature (Pg. 129, Column 2, Lines 20-28 and Pg. 130, Column 1, Lines 1-2).
Bashyal evidences that "room temperature" falls within the range of about 20-25
°C (Pg. 1, Table).
Reeves et al. evidences that CMC is water soluble (Pg. 252, Abstract).
It would have been obvious to those of ordinary skill in the art before the effective
filing date of the claimed invention to modify the composition of Ul-Hamid of a
frozen, sliced biological tissue sample to have the biological tissue sample at a
temperature of -15 °C to -27 °C as taught by Kawamoto because Kawamoto teaches
this temperature range is generally suitable for the cutting/slicing of biological tissue.
The ordinary artisan would have found further obvious modifying the composition
of Ul-Hamid of a frozen, sliced biological tissue sample to have the biological tissue
sample at room temperature as taught by Kawamoto (about 20-25 °C, as evidenced by
Bashyal) because the reference teaches this temperature is suitable for samples which
have been freeze dried.
Those of ordinary skill in the art would have been motivated to make this modification in order to have the biological tissue sample at the appropriate
temperature for slicing/sectioning and storage depending on how the sample was
prepared/frozen. There would have been a reasonable expectation of success in
making this modification because both Ul-Hamid and Kawamoto are drawn to the
same field of endeavor, that is, the preparation of sliced biological tissues on
adhesive films for analysis.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to PAUL C MARTIN whose telephone number is (571)272-3348. The Examiner can normally be reached Monday-Friday 12pm-8pm EST.
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Sharmila G Landau can be reached at (571) 272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL C MARTIN/Examiner, Art Unit 1653 07/21/2026
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