RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to claims 1, 2, 4, and 8, filed on 01 April 2026, have been entered in the above-identified application. Claims 21-22 have been added. Claims 1-8, 10-12, 14-15, and 17-22 are pending, of which claims 10, 11, and 17-20 remain withdrawn from consideration as described on page 3 of the Office Action mailed on 07 January 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05 March 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Terminal Disclaimer
The terminal disclaimer filed on 01 April 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on application number 18/019636 has been reviewed and is accepted. The terminal disclaimer has been recorded.
WITHDRAWN REJECTIONS
The provisional double patenting rejections of claims 1-4, 6, 8, 12, 13, and 15 over copending application no. 18/019636, made of record on page 4, paragraph 8 of the office action mailed 07 January 2026 have been withdrawn due to Applicant’s filing on 01 April 2026 of a terminal disclaimer.
The 35 U.S.C. § 102 rejection of claims 1-4, 7, 8, 12-13 and 16 over WO 2008/139995 A1, made of record on page 6, paragraph 10 of the office action mailed 07 January 2026 has been withdrawn due to Applicant’s amendment in the response filed 01 April 2026. WO ‘995 does not contain a specific example which anticipates the present claims.
NEW AND REPEATED REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-4, 7-8, 12, 16, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2008/139995 A1. Applicant’s provided translation of WO ‘995 was relied upon for analysis.
Regarding claims 1, 2, 3, 4, 8, 12, 21 and 22, WO ‘995 describes an electric conductor connecting member, see paragraph [0001]. The electric conductors serve as wiring members as described at paragraph [0010].
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.
Although this example uses nickel with a mean particle size of 7 microns, the disclosure of WO ‘995 teaches more generally that the conductive particles have a diameter of preferably 1 to 30 microns. See paragraph [0058]. Thus it would have been obvious to have used particles with a diameter within the disclosed range such that the ratio of the surface roughness of the metal foil layer to the average particle diameter overlaps or is within the claimed ranges of 0.5 to 3 (as in claims 1 and 8) or 0.5 to 17 (as in claims 21 and 22). For example, using nickel particles with an average 3 micron particle diameter along with the same copper foil used in the examples of WO ‘995 results in a ratio of surface roughness (2.5 microns) to particle diameter (3 microns) of about 0.83 which is within the claimed range.
The reference need not expressly disclose the ratio of these two values, as such a ratio may be calculated from the surface roughness and particle size values disclosed in WO ‘995.
As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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.
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.
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 01 April 2026 regarding the 35 U.S.C. § 102(a)(1) rejection of claims 1-4, 7, 8, 12, 13, and 16 of record over WO 2008/139995 A1 have been carefully considered. The 35 U.S.C. § 102(a)(1) rejection has been withdrawn but has been changed to a rejection under 35 U.S.C § 103. Applicant’s arguments have been considered with respect to the present rejection, but are deemed unpersuasive.
Applicant argues that WO ‘995 does not disclose the ratio of surface roughness Rz of a surface of the metal foil layer to the average particle diameter of the electrically conductive particles to be within the claimed range of 0.5 to 3, see p. 11 of the remarks. Applicant correctly notes that Example 4 of WO ‘995 does not satisfy the claimed ratio.
The Examiner agrees with applicant that WO ‘995 no longer anticipates the claimed invention, and thus the 35 U.S.C. § 102(a)(1) rejection has been withdrawn. However, WO ‘995 still renders the claims obvious under 35 U.S.C. § 103 as the reference teaches not only the Rz surface roughness of the metal foil, but a suitable range of particle sizes for the conductive particles of 1 to 30 microns, see paragraph [0058] and the rejection above. The ratio of these two values overlap the claimed ratios in the claims.
The reference need not expressly disclose the ratio of these two values, as such a ratio may be calculated from the surface roughness and particle size values disclosed in WO ‘995.
Accordingly, WO ‘995 is relied upon for a rejection under 35 U.S.C. § 103.
Applicant has not provided any specific arguments regarding the 35 U.S.C. § 103 rejection of claims 5, 6, 14, and 15 over WO ‘995 in view of WO 2016/143789 A1. Accordingly, this 35 U.S.C. § 103 rejection is maintained.
Conclusion
All claims are rejected.
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 extension fee 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.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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