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 .
Response to Arguments
Applicant's arguments filed 4/17/26 have been fully considered but they are not persuasive.
The applicant alleges “’transfer individual pieces of the anisotropic conductive adhesive layer to predetermined positions on the wiring board.’ Jang does not teach at least this claim feature”. The examiner submits the amended claim 1 discloses “irradiating laser light from a base material side to transfer individual pieces of the anisotropic conductive adhesive layer to predetermined positions on the wiring board”. The only active method step in this limitation is “irradiating laser light” and the Jang discloses “irradiating laser light”. 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 I discloses “[w]here 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).“ Moreover, MPEP 2112.01 I discloses “the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433”. The applicant has not provided evidence to rebut the examiner’s analysis. Therefore, the applicant’s argument is not persuasive.
The applicant alleges “[i]t is well-known in the art that laser spot heating cannot provide simultaneous, high-pressure compression and high heat, which would be required to form individual pieces.” The applicant has not provided evidence for this allegation. MPEP 716.01(c) II discloses “[a]rguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).” Therefore, this argument is unpersuasive.
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.
Claim 19 is 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 19 discloses “wherein a reaction rate of the individual pieces after irradiating laser light is 25% or less”.
Paragraph [0039] discloses “The reaction rate of the individual pieces 12a of the anisotropic conductive adhesive layer 12 after the transfer step (A) is preferably 25% or less, more preferably 20% or less, and even more preferably 15% or less.”
Both claims 17 and 19 fail to disclose a “transfer step”.
MPEP 2163 II A [R-07.2022] discloses “[w]ith respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims.”
The applicant fails to disclose “wherein a reaction rate of the individual pieces after irradiating laser light is 25% or less” without a transfer step.
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 the, it would be obvious to form “a reaction rate of the individual pieces after irradiating laser light is 25% or less” without a transfer step. However, the specification fails to disclose “a reaction rate of the individual pieces after irradiating laser light is 25% or less” without a transfer step.
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.
Claims 1-8, 10-17 and 19-20 are 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 1 discloses “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 a base material side”.
Claim 14 discloses “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 a base material side”.
Claim 17 discloses “arranging an anisotropic conductive adhesive layer provided on a base material and a wiring board to face each other, and irradiating laser light from a base material side to transfer individual pieces of the anisotropic conductive adhesive layer to predetermined positions on the wiring board”.
The applicant amend both claims 1 and 17 to put “a base” a second time in both claims. The examiner is not clear if the “a base material side” is referring to the “a base material” or another base material.
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 and 19 is/are rejected under 35 U.S.C. 102a2 as being anticipated by Jang (US 2022/0225504).
Regading claim 17, 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 I 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). “)
Regarding claim 19, Jang disclose the same method, as noted above, therefore one of ordinary skill would expect the same results, such as a reaction rate of the individual pieces after irradiating laser light is 25% or less. MPEP 2112.01 I 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 1-8, 10-16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 18 is allowed.
Claim 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BRADLEY K SMITH whose telephone number is (571)272-1884. The examiner can normally be reached Monday-Friday, 10am-6pm.
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, 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
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