Attorney’s Docket Number: 93481
Filing Date: 07/29/2022
Claimed Foreign Priority Date: 07/14/2022 (CN 202210834402.6)
Applicants: Wang et al.
Examiner: Younes Boulghassoul
DETAILED ACTION
This Office action responds to the Amendment filed on 09/10/2025.
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgment
The Amendment filed on 09/10/2025, responding to the Office action mailed on 06/11/2025, has been entered. The present Office action is made with all the suggested amendments being fully considered. Accordingly, pending in this application are claims 1-20.
Response to Amendment
Applicant amendments to the Specification have overcome the Objections to the Specification, as previously formulated in the Non-Final Office action mailed on 06/11/2025. Accordingly, all previous objections are hereby withdrawn.
Applicant’s amendments to the claims have overcome the claim rejections under 35 U.S.C. 102(b), as previously formulated in the same Office action. However, applicant’s arguments regarding the previously presented claim rejections under 35 U.S.C. 102(a) have not been found persuasive. Accordingly, some of the previous grounds of rejection stand, as detailed below.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
The invention as claimed in claim 1 requires in part “an adhesive, wherein the adhesive comprises a first state and a second state, viscosity of the adhesive in the second state is less than viscosity of the adhesive in the first state” and “wherein the adhesive is converted from the first state into the second state by laser irradiation, and power of a laser is less than 10 W.”.
Additionally, the invention is further limited by claims 9 and 10, respectively requiring “wherein the adhesive is converted from the second state into the first state by laser irradiation, and power of a laser is less than 10 W.”, and “wherein a wavelength of the laser is greater than 900 nm, the adhesive is converted from the first state into the second state by laser irradiation at temperatures ranging from 100 oC to 110 oC, and the adhesive is converted from the second state into the first state by laser irradiation at temperatures ranging from 140 oC to 150 oC.”.
While the examiner acknowledges that the disclosure as originally filed provides support for the claimed functions or properties of the adhesive (i.e., discloses what the adhesive does), it is nevertheless silent about any exemplary composition of an adhesive that would satisfy said claimed functions or properties (i.e., fails to disclose what the adhesive is).
Given how critical the adhesive is to allegedly solving known issues encountered by LED chips during repairs, as it is described in Par. [0003] (conventional in the art) vs. Par. [0035],[0044], [0047],[0063] (advantageous aspects of the instant invention), the claims are deemed to contain 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, at the time the application was filed, had possession of the claimed invention.
Claims 11 and 19-20 recite in part limitations identical to the ones identified in claims 1 and 9-10 respectively, thus exhibit deficiencies similar to the ones detailed above. Also, see comments stated in Par. 6-9 with regards to claim 1 and 9-10, which are considered repeated here.
Claims 2-10 and 12-20 respectively depend from claims 1 and 11, thus inherit the deficiencies identified supra.
Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The invention as claimed in claim 1 requires in part “an adhesive, wherein the adhesive comprises a first state and a second state, viscosity of the adhesive in the second state is less than viscosity of the adhesive in the first state” and “wherein the adhesive is converted from the first state into the second state by laser irradiation, and power of a laser is less than 10 W.”.
Additionally, the invention is further limited by claims 9 and 10, respectively requiring “wherein the adhesive is converted from the second state into the first state by laser irradiation, and power of a laser is less than 10 W.”, and “wherein a wavelength of the laser is greater than 900 nm, the adhesive is converted from the first state into the second state by laser irradiation at temperatures ranging from 100 oC to 110 oC, and the adhesive is converted from the second state into the first state by laser irradiation at temperatures ranging from 140 oC to 150 oC.”.
However, the application as originally filed is devoid of any disclosure directed to an exemplary composition of an adhesive that would satisfy the properties claimed supra; a search of the pertinent field of art revealed that an adhesive satisfying the properties claimed supra does not appear to be commonly known in the display panel art at the time the application was filed; and because the adhesive is described in terms of its use or function rather than its material or composition, one attempting to make, use, or avoid the use of the invention as claimed and described functionally could only do so after an undue quantity of experimentation. As such, the claims are deemed to lack enablement because they contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 11 and 19-20 recite in part limitations identical to the ones identified in claims 1 and 9-10 respectively, thus exhibit deficiencies similar to the ones detailed above. Also, see comments stated in Par. 6-9 with regards to claim 1 and 9-10, which are considered repeated here.
Claims 2-10 and 12-20 respectively depend from claims 1 and 11, thus inherit the deficiencies identified supra.
Response to Arguments
Applicant’s arguments with respect to the claims filed on 09/10/2025 have been considered but have not been found persuasive:
The applicant argues:
“Applicant respectfully clarifies that the adhesive with the properties recited in the claims is a well-known adhesive in the related art, which is configured to separate materials of bonding layers by laser energy. For example, the adhesive can be "laser debonding adhesive", whose composition is also well-known, so there is no need to describe the exemplary composition of the adhesive in the specification, and a person skilled in the art would be fully capable of manufacturing and/or using the invention according to the present application.” (see, e.g., Remarks, Page 11, L. 22-28).
The examiner responds:
The examiner respectfully disagrees. While the applicant states that “the adhesive with the properties recited in the claims is a well-known adhesive in the related art”, it is noted that applicant has failed to present any reference showing it to be the case at the time the invention was filed. To be of probative value, applicant’s assertion should be supported by actual proof. Due to the absence of any supporting reference, the examiner concludes that the applicant has failed his burden of proof, and that applicant’s assertion constitutes mere argument; and argument does not replace evidence where evidence is necessary. MPEP 2145(I).
Furthermore, applicant states that “the adhesive can be "laser debonding adhesive", whose composition is also well-known, so there is no need to describe the exemplary composition of the adhesive in the specification”. However, a statement of obviousness of a feature (e.g., well-known) is not enough to satisfy the written description requirement. “It is the disclosures of the applications that count. Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed.”. Lockwood v. American Airlines, Inc., 107 F.3d 1565 (1997). As such, the claims fail to comply with the written description requirement.
Additionally, regarding applicant’s description of the claimed adhesive, e.g., not in terms of its own “physical characteristics or chemical properties”, but in terms of its “use or function”, the Court noted that “[o]ne attempting to use or avoid the use of [the] discovery as so claimed and described functionally could do so only after elaborate experimentation”. See Amgen Inc. v. Sanofi, 598 U.S. 594 (2023), and Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245(1928). As such, the claims also fail to comply with the enablement requirement.
Accordingly, and in view of the above, the claim 1-20 stand properly rejected under 35 U.S.C. 102(a), as detailed in the Office action supra.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Younes Boulghassoul at (571) 270-5514. The examiner can normally be reached on Monday-Friday 9am-6pm EST (Eastern Standard Time), or by e-mail via younes.boulghassoul@uspto.gov. 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, Wael Fahmy can be reached at (571) 272-1705. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YOUNES BOULGHASSOUL/Primary Examiner, Art Unit 2814
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