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 .
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.
Claim(s) 1, 3-7, 14, and 31 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 6432253 (Chung).
Concerning claim 1, Chung discloses a conductive film comprising (Figs. 1 and 2): an elongated release film (32) (col. 5 lines 30-40); and a plurality of conductive adhesive film pieces (30) which are provided on the release film (Fig. 2 and col. 5 lines 30-40, note that the flexible adhesive preforms can be electrically conductive and the examiner is relying on that for examination purposes), wherein the plurality of adhesive film pieces are arranged in a longitudinal direction of the release film (Fig. 2) with no adhesive disposed on the release film between adjacent ones of the plurality of adhesive film pieces (Fig. 2 and col. 5 lines 30-40, note that the flexible adhesive pieces are preformed and therefore they are only present at the preform location), and wherein each of the plurality of adhesive film pieces is provided with at least one hole without conductive material provided therein or thereon (Figs 1 and 2, note that the flexible adhesive preform is rectangular shape comprising only the flexible adhesive pattern around the perimeter leaving the central portion uncovered. The examiner is considering the central unpatterned portion to be the hole in the flexible adhesive piece) wherein an end edge of the release film in a width direction of the release film and the adhesive film piece closest to the end edge are spaced apart from each other (Fig. 1, note that an alignment hole is formed at the edge corners and therefore the conductive adhesive film pieces are spaced from the edge).
Chung does not disclose wherein the conductive film is produced by a manufacturing process that includes an adhesive film layer forming step of forming a conductive adhesive film layer on an entire surface of the release film, an adhesive film layer cutting step of cutting the adhesive film layer along an outline forming an outer shape of the adhesive film piece, and a margin releasing step of releasing a margin portion corresponding to a portion other than the adhesive film piece in the adhesive film layer from the release film along the cut outline. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The product of Chung discloses a conductive film that includes a release film, a plurality of conductive adhesive film pieces arranged in a longitudinal direction of the release film with no adhesive between which is structurally the same as the claimed invention. The process limitations do not impart a structural distinction of the two products when considered side by side and therefore the examiner believes that this limitation has been met.
Continuing to claim 3, Chung discloses wherein the plurality of adhesive film pieces are spaced in the longitudinal direction of the release film (Fig. 2).
Considering claim 4, Chung discloses wherein the plurality of adhesive film pieces have the same shape (Fig. 2).
Referring to claim 5, Chung discloses wherein the plurality of adhesive film pieces are disposed at a center portion of the release film in a width direction (Fig. 2).
Regarding claim 6, Chung discloses wherein the plurality of adhesive film pieces are disposed at an end portion of the release film in a width direction (Fig. 2).
Pertaining to claim 7, Chung discloses wherein the plurality of adhesive film pieces are also arranged in the width direction of the release film (Fig. 2).
As to claim 14, Chung discloses wherein the adhesive film piece is formed such that conductive particles are dispersed in an adhesive (col. 4 lines 52-60, note that the conductive adhesive films are formed of a material TP8150 which is disclosed to employ the same thermoplastic polymer resin as the other conductive adhesive but with different conductive particles).
Considering claim 31, Chung discloses wherein portions of adjacent ones of the plurality of adhesive film pieces are connected in the longitudinal direction of the release film, and no adhesive is disposed on the release film in spaces between non-connect4ed portions of adjacent ones of the plurality of adhesive film pieces (Fig. 2, note that the adhesive film pieces are connected in the longitudinal direction to one another via the release film and that the adhesive film pieces are preformed and therefore there is no adhesive present at locations other than the adhesive film pieces.
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, 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.
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6432253 (Chung) in view of US 6580035 (Chung, hereafter referred to as Chung’035).
Concerning claims 8 and 9, Chung discloses a gap of the plurality of adhesive film pieces in the longitudinal direction of the release film (Fig. 2) and that a gap between and end edge of the release film and the adhesive film piece is formed (Fig. 2).
Chung does not specifically disclose that either gap is 0.1 mm or more and 10 mm or less. However, Chung’035 discloses a flexible adhesive membrane that include an electrically conductive adhesive pieces and recognizes that several different methods of creating the stencil/mask feature 112 including that the method is satisfactory for flexible membranes having fine features, e.g., features of about 25 microns and larger, or may be substantially larger, e.g., perhaps 100-1000 microns (0.1 mm to 10 mm). It is noted that these features are formed between the conductive adhesive film pieces and therefore their widths would be equivalent to the distance between conductive adhesive pieces (col. 11 lines 60-63). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to form the allow for claimed gap ranges between the conductive adhesive film pieces because the process is known to be satisfactory for providing adequate space for use in the device manufacture.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6432253 (Chung) in view of US 20140205835 (Taya et al).
Considering claims 10-12, Chung discloses forming a release film (32).
Chung does not disclose wherein the release film has light transmittance, wherein transmittance of the release film is 15% or more and 100% or less, or wherein a haze value of the release film is 3% or more and 100% or less. However, Chung does disclose forming the release liner from paper, Teflon.RTM. tetrafluoroethylene, etc. (col. 5 lines 20-25). Taya discloses a release liner material of polyethylene ([0106]) that has a haze value of 7.0% and a transmittance of 90.1%. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the polyethylene material layer of Taya with its disclosed haze and transmittance values as the release liner of Chung because of its known suitability for use as a base for a release layer.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6432253 (Chung) in view of US 20190334223 (Fang et al).
Referring to claim 13, Chung discloses a configuration of an adhesive film piece (Chung Fig. 2).
Chung does not disclose further comprising: a second release film piece which is provided on the adhesive film piece. However, Fang discloses a conductive film configuration (Fig. 5) in which a conductive adhesive film piece (300) is formed over a release film (500) and another release film (200) is formed over the conductive adhesive film piece. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.) Therefore absent evidence that the claimed configuration of a second release film piece on the conductive adhesive film piece is significant, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the configuration of the conductive adhesive piece of Chung to add a second release film piece on the conductive adhesive film piece in view of the invention of Fang.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6432253 (Chung) in view of US 9620404 (Brun et al).
Regarding claim 15, Chung discloses forming a conductive film (Figs. 1 and 2).
Chung does not disclose a wound body comprising the conductive film, and a core on which the conductive film is wound. However, Brun discloses a wound body (Figs. 1 and 2) that has adhesive film pieces (13) spaced apart in a longitudinal direction and formed over a release layer (11) and wound around a core (14). The conductive film is formed into a roll that may be unrolled to expose individual pieces providing a means for the individual pieces to be removed from the roll for subsequent attachment to a wafer. (col. 3 lines 61-66). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to form the conductive film of Chung around a core to form a wound body in view of the invention of Bruns in order to permit the conductive adhesive segments of Chung to be removed from the release film and subsequently attached to a wafer.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6432253 (Chung) in view of US 20180110132 (Tu et al).
As to claim 29, Chung discloses forming the conductive film.
Chung does not disclose wherein the conductive film consists of the elongated release film and the plurality of conductive adhesive film pieces provided on the release film. However, Tu discloses a conductive film configuration in which the conductive film consists of only the conductive adhesive segments and a release liner and that such configuration is utilized for ease of packaging ([0074]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to form the conductive film to consist of conductive adhesive segments and the release liner as disclosed by Tu in order to facilitate packaging ease.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6432253 (Chung) in view of US 5049434 (Wasulko).
Pertaining to claim 30, Chung discloses forming the conductive film with the conductive adhesive pieces and the release film.
Chung does not disclose wherein the conductive film consists of the elongated release film, the plurality of conductive adhesive film pieces provided on the release film, and a second release film covering a surface of the plurality of conductive adhesive film pieces opposite the surface adjacent the elongated release film. However, Wasulko discloses a conductive film configuration in which conductive adhesive film patterns are formed between upper and lower release films and that such configuration protects the film from contamination by dirt and other undesired debris (col. 2 lines 35-51). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the conductive film of Chung such that it consists of and elongated release film, the plurality of conductive adhesive pieces, and a second release layer as disclosed by Wasulko in order to form a conductive film that is protected from contamination and undesired debris.
Response to Arguments
Applicant's arguments filed 04/02/26 have been fully considered but they are not persuasive. Claim 1 has been amended to recite wherein the conductive film is produced by a manufacturing process that includes an adhesive film layer forming step of forming a conductive adhesive film layer on an entire surface of the release film, an adhesive film layer cutting step of cutting the adhesive film layer along an outline forming an outer shape of the adhesive film piece, and a margin releasing step of releasing a margin portion corresponding to a portion other than the adhesive film piece in the adhesive film layer from the release film along the cut outline. The product of Chung discloses a conductive film that includes a release film, a plurality of conductive adhesive film pieces arranged in a longitudinal direction of the release film with no adhesive between which is structurally the same as the claimed invention. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Therefore the examiner believes that the process limitations do not impart a structural distinction of the two products when considered side by side and the rejection stands.
Applicant’s arguments, see pages 10-12, filed 04/02/26, with respect to the rejection(s) of claim(s) 15 under 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US 9620404 (Brun et al).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE N NEWTON whose telephone number is (571)270-5015. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CHAD DICKE can be reached on (571) 270-7996. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VALERIE N NEWTON/ Examiner, Art Unit 2897
06/25/26
/CHAD M DICKE/ Supervisory Patent Examiner, Art Unit 2897
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