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 .
Election/Restrictions
Applicants election without traverse of the invention of Group I, Claims 1 through 12, in the reply filed on November 7, 2024 is acknowledged.
Claims 13 and 14 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 7, 2024.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function.
Such claim limitation(s) is/are:
In Claim 1, “a first lamination step” (line 5), “a thermocompression step” (line 10), and “an etching step” (line 13), as each use the word “step”. For example, in “a first lamination step”, there is subsequent and sufficient acts, e.g. a forming substrate for forming the electrically conductive carbon film on a surface thereof” (lines 5-7), to entirely perform the recited function.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Objections
Claims 2, 8 and 11 are objected to because of the following informalities.
In Claim 2, “an SWCNT” (line 2) should be replaced with –a single-walled carbon nanotube (SWCNT)--.
In Claim 8, “using TOM forming” (line 2) should be replaced with –three-dimensional overlay method (TOM) forming--.
In Claim 11, the first occurrence of “a CNT” (line 2) should be changed to –a carbon nanotube (CNT)--.
Appropriate correction is required.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: --Method of Manufacturing an Electrically Conductive Film Laminate--.
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.
Claims 1 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication 2009/0308520 to Shin et al (hereinafter “Shin”) in view of U.S. Patent 5,382,382 to Asakura et al (hereinafter “Asakura”).
Claim 1: Shin discloses a method of manufacturing an electrically conductive film laminate comprising a substrate (e.g. 17, in Fig. 3) to be laminated, an adhesive layer (e.g. 15, in Fig. 2) formed on a surface of the substrate to be laminated, and an electrically conductive carbon film (e.g. 11, ¶ [0032]) formed on a surface of the adhesive layer, the method comprising:
a first laminate manufacturing step for manufacturing a first laminate including a forming substrate (e.g. 13) for forming the electrically conductive carbon film on a surface thereof (e.g. Fig. 1), the electrically conductive carbon film formed on a surface of the forming substrate, and the adhesive layer formed on a surface of the electrically conductive carbon film (e.g. Fig. 2);
a thermocompression bonding step for manufacturing a second laminate by bringing the adhesive layer of the first laminate into contact with the substrate to be laminated (e.g. Fig. 3); and
an etching step for manufacturing the electrically conductive film laminate by etching the forming substrate of the second laminate (e.g. Fig. 4, ¶¶ [0059], [0060]).
Claim 8: Shin discloses the method according to claim 1, wherein the heating and pressure bonding in the thermocompression bonding step is performed using three-dimensional overlay method (TOM) forming (e.g. sequence of Figs. 1 to 3).
Within the thermocompression bonding step, Shin teaches that the adhesive layer (e.g. 15) can be one of many polymers, including a conductive polymer (e.g. ¶ [0042]). Shin does not mention any performing of heating and pressure bonding.
Asakura teaches that when thermocompression bonding with the adhesive layer as a conductive polymer, it is necessary to apply heat and pressure to a laminate to provide good electrical contact (e.g. col. 12, lines 4-16 and line 62 to col. 13 line 15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the thermocompression bonding step of Shin by adding heat and pressure, as taught by Asakura, to provide good electrical contact to the second laminate.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Shin in view of Asakura, as applied to Claim 1 above, and further in view of U.S. Publication 2008/0007518 to Majumdar et al (hereinafter “Majumdar”).
Shin, as modified by Asakura, discloses the claimed manufacturing method as relied upon above in Claim 1, further including that Asakura discloses a temperature of heat is typically 10⁰C higher than a glass transition temperature of the substrate. Shin teaches that the substrate can be made of plastic but does not state what the glass transition temperature is of the substrate. Although a plastic substrate would inherently have a glass transition temperature.
Majumdar discloses that a substrate made of plastic can have a glass transition temperature in a range up to 150⁰C (e.g. ¶ [0063]).
Being that Shin and Majumdar each disclose a substrate that shares the same material of plastic, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that within the thermocompression bonding step of the modified Shin method, the temperature of heat would be at, or 10⁰C higher than, the glass transition temperature of the substrate.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Shin in view of Asakura, as applied to Claim 1 above, and further in view of U.S. Publication 2010/0009236 to Kotera et al (hereinafter “Kotera”).
Shin, as modified by Asakura, discloses the claimed manufacturing method as relied upon above in Claim 1, further including that Asakura discloses a temperature of heat is typically 10⁰C higher than a glass transition temperature of an adhesive that would make up an adhesive layer. Shin teaches that the adhesive can be made of a conductive polymer, but does not state what the glass transition temperature is of the adhesive. Although the adhesive would inherently have a glass transition temperature.
Kotera discloses that an adhesive can be made of conductive polymer and can have a glass transition temperature in a range up to 120⁰C (e.g. ¶ [0083]).
Being that Shin and Kotera each disclose an adhesive of the adhesive layer that shares the same composition of a conductive polymer, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that within the thermocompression bonding step of the modified Shin method, the temperature of heat would be at, or 10⁰C higher than, the glass transition temperature of the adhesive.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Shin in view of Asakura, as applied to Claim 1 above, and further in view of U.S. Publication 2016/0155964 to Matsushita et al (hereinafter “Matsushita”).
Shin, as modified by Asakura, discloses the claimed manufacturing method as relied upon above in Claim 1, further including that Shin discloses that the substrate to be laminated is made from PET (e.g. ¶ [0037]). The modified Shin method does not state that the PET is a PET resin.
Matsushita discloses that substrates made of plastic can be formed from a PET resin (e.g. ¶ [0100]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the composition of the PET resin of Matsushita for the PET of Shin, to form the substrate with equivalent materials thus providing the same purpose of electrically insulating properties.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Shin in view of Asakura, as applied to Claim 1 above, and further in view of U.S. Publication 2019/0048210 to Matsubayashi et al (hereinafter “Matsubayashi”).
Shin, as modified by Asakura, discloses the claimed manufacturing method as relied upon above in Claim 1, further including that the adhesive layer is hardened in its final state. The modified Shin method does not teach that the adhesive is acrylic-based.
Matsubayashi teaches that an adhesive layer (e.g. conductive polymer) can include an acrylic resin as a binder material to further enhance the adhesive strength of the adhesive layer (e.g. ¶¶ [0017], [0018], [0068]).
Regarding Claim 7, Matsubayashi suggests that the acrylic-based adhesive would have a low water resistance (e.g. ¶ [0007]). Low water resistance is not absolute, thus, there would still be some degree of water absorbency of the adhesive layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the adhesive layer of Shin by including acrylic, as taught by Matsubayashi, to enhance adhesive strength and provide some degree of water absorbency.
Allowable Subject Matter
Regarding Claim 2, in the primary reference to Shin, Shin does not teach that the electrically conductive carbon film is an SWCNT. In no way does Shin suggest that the film is at the nanotube level.
Regarding Claim 9, Shin discloses that the forming substrate is made of graphene and not metal.
To form the electrically conductive carbon film at the nanotube level, or the forming substrate with metal such as Cu, would not be obvious to one of ordinary skill in the art because such a modification to Shin would destroy the final structure, manufacturing method, and overall purpose of the electrically conductive film laminate.
Therefore, Claims 2 and 9 through 12 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
a) Japanese Patent Publication, JP Patent Publication 2008-251271, discloses laminating with a SWCNT film (see SOLUTION).
b) Non-Patent Literature, IEEE Publication to Smet et al, entitled "Thermocompression bonding of Ag-MWCNTs nanocomposite films as an alternative die-attach solution for high temperature packaging of SiC devices," discloses bonding an electrically conductive carbon film (MWCNT, in Fig. 2) on a surface of a forming substrate (chip) to a substrate (DBC substrate, see entire document).
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/A. DEXTER TUGBANG/ Primary Examiner
Art Unit 2896