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Claims 1-13 are pending in this application, Claims 8-13 are acknowledged as withdrawn, Claims 1-7 were examined on their merits.
The objection to the Specification because it contains an embedded hyperlink and/or other form of browser-executable code has been withdrawn due to the Applicant’s amendments to the Specification filed 11/07/2025.
The objection to Claim 1 because of minor informalities has been withdrawn due to the Applicant’s amendments to the claim filed 11/07/2025.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 11/07/2025 is sufficient to overcome the rejection of claims 1-7 based upon Saigusa et al. as set forth in the last Office action because it establishes the prior art conductive adhesive film(s) do not have the claimed properties.
The rejection of Claims 1-3 and 7 under 35 U.S.C. § 103 as being unpatentable over Saigusa et al. (06/18/2019) and Supporting Information, cited in the IDS, as evidenced by Prostech (2025), of record, and Kawamoto et al. (2010) has been withdrawn due to the Applicant’s Declaration filed 11/07/2025.
The rejection of Claims 1-4 and 7 under 35 U.S.C. § 103 as being unpatentable over Saigusa et al. (06/18/2019), cited in the IDS, and Supporting Information, as evidenced by Prostech (2025), of record, and Kawamoto et al. (2010), and further in view of Nakano et al. (JP02-31586A), translation, cited in the IDS, has been withdrawn due to the Applicant’s Declaration filed 11/07/2025.
The rejection of Claims 1-3, 5, 6 and 7 under 35 U.S.C. § 103 as being unpatentable over Saigusa et al. (06/18/2019) and Supporting Information, cited in the IDS, as evidenced by Prostech (2025), of record, and Kawamoto et al. (2010), as applied to Claims 1-3 and 7 above, and further in view of Kawamoto et al. (2003), as evidenced by Bashyal (2024), has been withdrawn due to the Applicant’s Declaration filed 11/07/2025.
Claim Rejections - 35 USC § 112
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.
Claims 1-7 are 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. 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.
The MPEP states that the purpose of the written description requirement is to ensure that the invention had possession, as of the filing date of the application, of the specific subject matter later as-claimed. The courts have stated:
“To fulfill the written description requirement, a patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention.’1 (“[T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.”). Thus, an applicant complies with the written description requirement “by describing the invention, with all its claimed limitations, no that which makes it obvious,” and by using “such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention.”
The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the Application. These include level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention, MPEP § 2163.
The MPEP indicates:
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A), above), reduction to drawings (see i)(B), above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus (see i)(C), above). See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
What constitutes a “representative number” is an inverse function of the skill and knowledge in the art. Satisfactory disclosure of a “representative number” depends on whether one of skill in the art would recognize that the applicant was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus.
Claim 1 recites, “wherein an electrical resistance between two points, separated by 75 mm or more, on a surface of the conductive adhesive film to which the biological tissue is attached is 1.0 x 10-2 Ω to less than 2.0 x 107 Ω, and wherein a median value of a temperature range in which an adhesive of the conductive adhesive film exhibits glass transition in DSC measurement is -150 °C to -40 °C”. Thus, the claims require a particular conductive adhesive film with sliced biological tissue attached thereto having the recited properties. The disclosure provides general evidence (Pg. 16, Paragraph 0049] and Pg. 19, Table 1) of the glass transition point (°C) of 7 conductive adhesive films wherein the glass transition point was evaluated at -80 to 10 °C at the midpoint between the inflection point on the low temperature side and the inflection point on the high temperature side but does not indicate that any of the tested films measured had a biological tissue attached to the conductive adhesive film. The disclosure also provides general evidence of the resistance (Ω) of the seven tested conductive adhesive films wherein conductive adhesive film was attached to a glass slide of 25 x 75 mm and had multimeter testers attached to the “short sides” of the conductive adhesive film (Pg. 17, Paragraph [0051]) wherein the resistance of only a single film falls within the claimed range (Pg. 20, Table 2), however the data does not indicate that the electrical resistance obtained in any to the tested films is measured between any two points, separated by 75 mm or more, on a surface of the conductive adhesive film to which a biological tissue is attached as claimed.
In the instant case, the sliced biological tissue attached to a conductive adhesive film as-claimed is stated essentially by function only: A sliced biological tissue attached to a conductive adhesive film; wherein an electrical resistance between two points,
separated by 75 mm or more, on a surface of the conductive adhesive film to which the
biological tissue is attached is 1.0 x 10-2 Ω to less than 2.0 x 107 Ω, and wherein a median value of a temperature range in which an adhesive of the conductive adhesive film exhibits glass transition in DSC (Differential Scanning Calorimetry) measurement is -150 °C to -40 °C. Applicant has disclosed one, very particular example of a conductive adhesive film (ESD EMI T-9426) which has the claimed functional limitations, and Applicants further disclose methods of measuring electrical resistance and glass transition point (Specification Pg. 16, Paragraph [0049] and Pg. 17, Paragraph ]0051]. The disclosure of a single conductive adhesive film as claimed is insufficient in comparison to the number of possible alternative conductive adhesive films based on different structural components, such as conductive metals and carbon, and adhesives, such as acrylics and silicones, as well as combinations thereof. There would be inherent unpredictability in the method as each particular combination would have a different glass transition point and electrical resistance based on the type of adhesive and conductive material used.
Applicants have not elucidated what particular adhesives and conductive material make up the T-9426 conductive adhesive film. Therefore, Applicants have not demonstrated any correlation between the structure of any component which resides in the conductive adhesive film to any particular function.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), states that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed" (See page 1117). The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed" (See Vas-Cath at page 1116).
Again, Applicants’ claims are directed toward a sliced biological tissue attached to a conductive adhesive film; wherein an electrical resistance between two points,
separated by 75 mm or more, on a surface of the conductive adhesive film to which the
biological tissue is attached is 1.0 x 10-2 Ω to less than 2.0 x 107 Ω, and wherein a median value of a temperature range in which an adhesive of the conductive adhesive film exhibits glass transition in DSC (Differential Scanning Calorimetry) measurement is -150 °C to -40 °C. The claims are broad enough to read on any conductive adhesive film which has the claimed functional properties. However, Applicants have disclosed only one very particular example composition having the claimed functional limitations.
Again, there is no known means for predicting the capability of other conductive adhesive films, besides the exemplar specifically described in the Instant disclosure. The skilled artisan could not even relatively predict what other conductive adhesive films would have the claimed functions, the Examiner noting that the six other tested films did not have the claimed functional limitations. Absent any discussion regarding correlation between structure and function, even the most skilled of artisans would need to guess what other conductive adhesive films could potentially have the claimed functional limitations. For the reasons set forth above, the Examiner respectfully finds that Claim 1 lacks sufficient Written Description. Claims 2-7 are rejected as being dependent upon rejected Claim 1.
Response to Arguments
Applicant’s arguments, see Remarks, filed 11/07/2025, with respect to the above withdrawn objections/rejections have been fully considered and are persuasive.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Matsufuji et al. (US 2017/0347697 A1), as evidenced by Nisshin-EM (2025).
Matsufuji et al. teaches a method of scanning electron microscopy imaging wherein a yeast cell sample was adhered to a carbon double-sided tape Nisshin-EM 7322.
Nisshin-EM evidences that Nisshin-EM 7322 is a carbon containing conductive film with an acrylic adhesive (Pg. 2, Lines 6-8).
The Examiner notes that Nisshin-EM 7322 is the same conductive adhesive film as used in Comparative Example 3 of the disclosure (Pg. 19, Paragraph [0058]) which has a median glass transition point of -35.3 and a resistance of 2.0 x 107 Ω (Pg. 20, Table 2). Thus, the reference teaches a conductive adhesive film useful for microscopic imaging (as in Saigusa, of record) but does not have the claimed glass transition point or suggest the modification thereof as a result-effective variable.
Shoji et al. (JP2017-115079A), machine translation, teaches an acrylic adhesive composition which may be an adhesive film (Pg. 3, Paragraph [0001]) wherein the glass transition of the acrylic resin is -80 to 0 °C (overlapping the claimed range of -150 to -40 °C) and wherein the glass transition temperature is too high, the pressure-sensitive adhesive force after the heating step tends to increase, and when the glass transition temperature is too low, the heat resistance tends to decrease and the contamination of the adherent tends to increase. The reference however does not teach or suggest the acrylic adhesive could be used with a conductive agent to make a conductive adhesive film, attachment of sliced biological tissue thereto, and/or the imaging thereof.
Choi et al. (KR20180097873-A), machine translation, teaches an adhesive composition containing nanocarbon material (Pg. 9, Paragraph [0049] and an embodiment having a resistance of 1.0x106 Ω/cm2 (within the claimed range of 1.0 x 10-2 to 2.0 X 107 Ω) (Pg. 13, Paragraph [0092]). The reference however does not teach or suggest the acrylic adhesive could be used with a conductive agent to make a conductive adhesive film, attachment of sliced biological tissue thereto, and/or the imaging thereof.
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.
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, 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 11/19/2025