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 .
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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 09 October 2025. A preliminary amendment was filed on 11 April 2023 amending claims 3-8 and 10-12. Claim 9 has been cancelled and claims 12-20 were added. Claims 1-8 and 10-20 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 24 April 2023, 09 May 2023, 11 April 2024, 09 January 2025, 04 March 2025, and 06 May 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (product claims 1-8 and 12-16) in the reply filed on 09 December 2025 is acknowledged. Claims 10, 11, and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings received on 11 April 2023 are acceptable.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-4, 6, 8, 12, 13, and 15 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of copending Application No. 18/019,636. The claims filed on 17 November 2025 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claims 1 and 8, claim 13 of the ‘636 application also recites an electrically conductive adhesive layer which includes electrically conductive particles and a metal foil layer disposed on the adhesive layer, in which the ratio of surface roughness Rz of a surface of the metal foil layer with respect to an average particle diameter of the electrically conductive particles is 0.05 to 3. The materials are used in a substrate with built-in components including electronic components with an electrode and electrically conductive layer. Thus the material of the ‘636 application is considered to be capable for use in a member for forming a wiring as claimed. Alternately, the limitation “for forming a wiring” is directed to the intended use of the member and is not further limiting in so far as the structure of the product is concerned. In article claims, a claimed intended use 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. See MPEP § 2111.02. In this case, the substrate with built-in components of the ‘636 application includes an electrode and electrically conductive layer and is thus capable of being used with a wiring which is also electrically conductive.
Regarding claims 2 and 8, claim 13 of the ‘636 application teaches an adhesive layer with conductive particles and an adjacent metal foil layer as described above. Claim 16 further recites that the surface roughness Rz of a surface of the first metal foil layer on the first curable adhesive layer is 20 microns or less.
Regarding claim 3, claim 17 of the ‘636 application recites this limitation.
Regarding claims 4 and 13, Although the ‘636 application does not specify the average particle diameter of the electrically conducive particles directly, the claims do specify the ratio of the surface roughness Rz of the metal foil layer to the particle diameter of the electrically conductive particles to be from 0.05 to 3 (see claim 13) or 0.06 to 2 (see claim 18). Claim 16 further recites that Rz has a value of 20 microns or less and claim 17 recites that Rz has a value of 0.5 to 10 microns. Thus using an Rz value of 20 microns, the claimed particle diameter is from about 6.7 microns (giving a ratio of 20 / 6.7 = 3) to 400 microns (giving a ratio of 20 / 400 = 0.05). Using a smaller value of Rz such as 10 microns results in particle diameters of about 3.3 microns to 200 microns to arrive at the same ratio range of 0.05 to 3. Using the smallest Rz value of 0.5 microns results in particle diameters of about 0.17 microns to 10 microns to arrive at the same ratio range of 0.05 to 3. These diameters overlap the claimed range of particle diameters.
Regarding claims 6 and 15, claim 14 of the ‘636 application further specifies a second adhesive layer which is on a side opposite to the first surface of the electronic component, and thus the adhesive layers and metal foil layer are positioned as claimed.
Regarding claim 12, claim 17 of the ‘636 application recites this Rz range.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 7-8, 12-13, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2008/139995 A1. Applicant’s provided translation of WO ‘995 was relied upon for analysis.
Regarding claims 1, 2, 3, 4, 8, 12, and 13, WO ‘995 describes an electric conductor connecting member, see paragraph [0001]. Example 1 described at paragraphs [0105-0106] teaches an adhesive layer forming coating solution which is coated onto both surfaces of a double-sided roughened copper foil having a ten-point roughness Rz of 2.5 microns. Example 4 described at [0112] was produced in a similar manner as Example 1 but includes 2 vol. % of nickel (Ni) powder in the adhesive composition. The nickel has a mean particle size of 7 microns. Nickel is an electrically conductive metal.
The ratio of surface roughness of the metal foil layer (2.5 microns) to the average particle diameter of the nickel particles (7 microns) is about 0.36 which is within the claimed range of 0.05 to 3. The surface roughness and nickel particle diameter are also within the specified ranges in each claim.
The electric conductors serve as wiring members as described at paragraph [0010].
WO ‘995 thus anticipates the claimed invention.
Regarding claims 7 and 16, WO ‘995 further describes a release paper provided on the surface of the adhesive layer, see paragraph [0036]. This reads on the claimed release film.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 5, 6, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2008/139995 A1 in view of WO 2016/143789 A1. Applicant’s provided translations were relied upon for each reference.
Regarding claims 5 and 14, WO ‘995 is relied upon as described above to disclose the limitations of claims 1 and 2. WO ‘995 does teach that the maximum diameter of the conductive particles rmax in the adhesive layer is not more than the maximum height of the surface of the electric conductor Ry in contact with the adhesive layer. However, the reference does not directly specify the shortest distance between a surface of the metal foil layer in contact with the adhesive layer and the surface of the electrically conductive particle to be from 0 microns to 1 micron or less as claimed.
WO ‘789 discloses an electrically connected structure with a substate 5 and circuit component 4 having an anisotropic electrically conductive film 9 positioned between them, in which the anisotropic electrically conductive film 9 is an adhesive layer 8 having conductive particles 7 unevenly dispersed therein such that the particles are positioned at the surface of the adhesive layer in contact with substrate 5. See abstract and FIG. 4a-4b, reproduced below, and p. 3 of the translation. Thus the distance between the surface of the electrically conductive particles 7 and the surface of substrate 5 is zero. Note that substrate 5 includes circuit electrodes, see p. 2, eighth paragraph of the translation. The particles 7 may be gold, silver, nickel, or other conductive materials or a non-conductive material coated with a conductive metal or carbon, see p. 3 of the translation. Nickel coated particles are used in the examples, see p. 5, “Preparation of anisotropic conductive film A” of the translation. The thickness of the conductive adhesive layer portion having the particles is from 0.6 to 1.0 times the average particle diameter of the conductive particles, see p. 3 of the translation.
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WO ‘789 and WO ‘995 are analogous because they are similar in structure and function, as each discloses conductive adhesives which include conductive nickel particles and are positioned adjacent to an electrically conductive substrate (metal foil in WO ‘995, and circuit electrodes in the substrate of WO ‘789). There is thus also a similar problem encountered in the two references.
It would have been obvious to one of ordinary skill in the art at the time of the invention to ensure the conductive particles within the adhesive layer are as close as possible to the conductive metal foil of WO ‘995 in order to arrive at the claimed invention in order to ensure an electrical connection between the conductive adhesive layer and the adjacent metal foil layer. See p. 3, tenth paragraph of WO ‘789 describing a temporary fixing step which places the particles of the adhesive layer in contact with the substrate layer.
Regarding claims 6 and 15, WO ‘789 discloses that the anisotropic conductive film 9 with unevenly distributed conductive particles 7 in an adhesive binder 8 is produced by laminating adhesive layers together, one of which contains the particles and the other of which does not contain the particles. See p. 3, eighth paragraph of the translation. The layer without particles reads on the claimed second adhesive layer. By laminating this second layer to the first layer, the resulting structure reads on the first and second adhesive layers as claimed in which the first adhesive layer is located between the second adhesive layer and the metal foil.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pub. 2019/0373716 is the U.S. equivalent of TW 2018-34512 A, of record.
U.S. Pub. 2019/0090362 is the U.S. equivalent of WO 2018/123459 A1, of record.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759