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 .
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.
Claims 1-8 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.
Claim 9 discloses “the anisotropic conductive adhesive layer contains conductive particles”.
Claim 1 must be broader than claim 9. MPEP 2164.08 discloses “[w]ith respect to dependent claims, 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph, should be followed. These paragraphs state “a claim in a dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers” and requires the dependent claim to further limit the subject matter claimed.”
The examiner notes the applicant’s Dexerials website (https://www.dexerials.jp/en/products/acf/) discloses “Anisotropic Conductive Film (ACF) “ and “ACF is a film-type conductive adhesive with uniformly dispersed conductive particles”.
The examiner submits the anisotropic conductive adhesive is equivalent to the anisotropic conductive film.
The Dexerials website evidence that one of ordinary skill would understand that the anisotropic conductive film would have conductive particles.
The specification fails to disclose an isotropic conductive adhesive without conductive particles.
The examiner submits that claim 1 is a genus claim and would encompass an isotropic conductive adhesive with conductive particles and without conductive particles.
MPEP 2163 II 3a ii discloses “[t]he Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 “merely by clearly describing one embodiment of the thing claimed.” LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed.”
The Federal Circuit has held:
As we explained in Ariad, the written description inquiry looks to "the four corners of the specification" to discern the extent to which the inventor(s) had possession of the invention as broadly claimed. Ariad, 598 F.3d at 1351 ; see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 , 1571 (Fed. Cir. 1997) ("It is the disclosures of the applications that count."). The knowledge of ordinary artisans may be used to inform what is actually in the specification, see Lockwood, 107 F.3d at 1571 , but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification. Id. at 1571-72 .
Rivera v. Int'l Trade Comm'n, 857 F.3d 1315, 1322 (Fed. Cir. 2017)
In this case, it might be obvious to made an isotropic conductive adhesive without conductive particles but the application fails to explicitly disclose isotropic conductive adhesive without conductive particles.
Therefore, since the original specification fails to disclose a isotropic conductive adhesive without conductive particles, the specification fails to give written description to claim 1.
The applicant could easily solve the issue by amending claim 9 into claim 1.
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.
Claim 7 is 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 7 recites the limitation "the reaction" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 is 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 18 recites the limitation "the base material" in lines 4-5. There is insufficient antecedent basis for this limitation in the claim.
The examiner will not address this claim with respect to the prior art of record because the examiner is not clear if the claim is missing steps and there is a great deal of confusion and uncertainty about the current claim limitations. MPEP 2173.06 II disclose “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 17 is/are rejected under 35 U.S.C. 102a2 as being anticipated by Jang (US 2022/0225504).
Jang disclose arranging an anisotropic conductive adhesive layer (ACF, anisotropic conductive film) provided on a base material (SUB) and a wiring board (BF with electrode BP, BF is a plastic substrate with conductive electrodes/wiring) to face each other, and irradiating laser light from the base material [0070, “the laser may be irradiated from the lower portion of the substrate SUB”] side to transfer individual pieces of the anisotropic conductive adhesive layer to predetermined positions on the wiring board. (The examiner notes that the claimed method has two steps arranging and irradiating. The limitation “to transfer individual pieces of the anisotropic conductive adhesive layer to predetermined positions on the wiring board” would be inherent since the reference discloses the same methods steps and structure. MPEP 2112.01 discloses “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “)
Allowable Subject Matter
Claims 14-16 are allowable.
Claims 9-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, set forth in this Office action (i.e. by incorporating claim 9).
The following is a statement of reasons for the indication of allowable subject matter, as the prior art of record fails to teach or suggest: a transfer step of arranging an anisotropic conductive adhesive layer provided on a base material that is transparent to laser light and a wiring board to face each other, and irradiating laser light from the base material side so that individual pieces of the anisotropic conductive adhesive layer are transferred to and arranged at predetermined positions on the wiring board; and a mounting step of mounting light-emitting elements on the individual pieces arranged at the predetermined positions on the wiring board and wherein the anisotropic conductive adhesive layer contains conductive particles (claims 1 and 9) a transfer step of arranging an anisotropic conductive adhesive layer provided on a base material that is transparent to laser light and light-emitting elements arranged on a transfer substrate to face each other, and irradiating laser light from the base material side to transfer individual pieces of the anisotropic conductive adhesive layer to the light-emitting elements arranged on the transfer substrate; a retransfer step of retransferring the light-emitting elements to which the individual pieces have been transferred to the wiring board; and a mounting step of mounting the light-emitting elements arranged at predetermined positions on the wiring board via the individual pieces (claims 14-16).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lin (US 2024/0178356) discloses forming an anisotropic adhesive and exposing the adhesive through a substrate, but the priority of the current reference fails to antedate the foreign priority of the current application.
Han (US 2024/0072027) disclose forming an anisotropic adhesive and exposing the adhesive through a substrate, but the priority of the current reference fails to antedate the foreign priority of the current application.
Takagi (US 2022/0069159) disclose forming an anisotropic conductive film (232) on the driving circuit board(30), but fails to explicitly disclose an anisotropic conductive adhesive layer provided on a base material and irradiating laser light from the base material side to transfer individual pieces of the anisotropic conductive adhesive layer to predetermined positions on the wiring board or anisotropic conductive adhesive layer provided on a substrate and light-emitting elements arranged on a transfer substrate to face each other, and irradiating laser light from the base material side to transfer individual pieces of the anisotropic conductive adhesive layer to the light-emitting elements arranged on the transfer substrate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY K SMITH whose telephone number is (571)272-1884. The examiner can normally be reached Monday-Friday, 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marlon Fletcher can be reached at 571-272-2063. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY SMITH/Primary Examiner, Art Unit 2817