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
Applicant’s election without traverse of Species 1 in the reply filed on 6/4/2025 is acknowledged. Claim 7 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
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 1-3, 8-9 and 11-22 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (US 11,855,368).
Regarding claim 1, Watanabe discloses a conductive member for conductive connection between a first connection object and a second connection object, the conductive member comprising: a polymeric matrix (13) comprising a rubber-like elastic substance; and a conductive medium (12) having conductivity, wherein the conductive medium includes conductive particles successively arranged in a conducting direction of the conductive member; whereby a surface portion of the conductive particles through which current flows is smoothed (relative term) so as to shorten a current path and thereby reduce transmission loss of an electrical signal in a high-frequency region (intended use).
Watanabe’s conductive particles inherently have a surface roughness, but does not disclose the specific value (whether expressed by Sa or Sdr). However, it would have been an obvious matter of design preference to form the conductive particles having a surface roughness expressed by an arithmetic mean height (Sa), and the surface roughness is 5 pm or less; and a surface roughness expressed by a developed interfacial area ratio (Sdr), and the surface roughness is 20 or less, in order to provide the desired contact area and conductivity, and since such modification would have involved a mere change in the size. A change in size is recognized as being within the level of ordinary skill in the art. Workable dimensions of would have been a matter of routine experimentation.
Regarding claim 3, to the extent that Watanabe does not disclose the specific diameter of the particles, it would have been obvious to one having ordinary skill in the art before the invention was effectively filed to form the conductive particles having an average particle diameter from 10 to 300 micro-meter, in order to provide the desired contact area and conductivity, and since such modification would have involved a mere change in the size. A change in size is recognized as being within the level of ordinary skill in the art. In re rose, 105 USPQ 237 (CCPA 1955). Workable dimensions of would have been a matter of routine experimentation.
Regarding claim 8, Watanabe discloses an electric connector for conductive connection between a first connection object and a second connection object, the electric connector comprising: the conductive member (11) according to claim 1; and a fixing member (18) configured to cause the conductive member to be held in compression in a thickness direction of the conductive member while causing the conductive member to be in contact with the first and second connection objects (Fig. 14).
Regarding claim 9, Watanabe discloses a connection structure comprising: an electric connector establishing conductive connection between a first connection object and a second connection object, the electric connector including the conductive member (11) according to claim 1, wherein the conductive member fixed in compression between the first and second connection objects causes the electric connector to establish conductive connection between the first and second connection objects (Fig. 14).
Regarding claim 11, Watanabe discloses an outside diameter of opposite end faces of the conductive member is smaller than that of a portion of the conductive member that is located between the opposite end faces (Figs. 1 and 3).
Regarding claim 12, Watanabe discloses a thickness of the conductive member (12) being from 0.2 to 1.5 mm.
Regarding claim 13, Watanabe discloses the conductive member including a conductive portion (12) in which the conductive particles are arranged in a central region of the polymeric matrix included in the conductive member and that has a columnar shape, and an insulating portion (13) free from the conductive particles which is located in a region that surrounds an outer circumferential face of the conductive portion (Fig. 1).
Regarding claim 14, Watanabe discloses the conductive portion having an electric resistance of 100 m-ohm or less in compression by 25% (Table 1).
Regarding claim 15, to the extent that Watanabe does not disclose the specific amount of particles, it would have been obvious to one having ordinary skill in the art before the invention was effectively filed to use a loading percentage of the conductive particles in the conductive portion being 25 to 80 vol%, in order to provide the desired conductivity, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 16, Watanabe discloses the conductive portion having a hardness from 30 to 87, the insulating portion has a hardness from 20 to 50 (col. 9, lines 4-11).
Regarding claim 17, Watanabe discloses the conductive portion having a diameter from 1.0 to 6.0 mm (col. 9, lines 17-18).
Regarding claim 18, Watanabe discloses the conductive portion has a diameter from 35% to 97% of the diameter of the conductive member (col. 9, lines 36-37).
Regarding claim 19, Watanabe discloses that the first connection object includes terminals on a glass surface (72), the second connection object include a cable terminal or a terminal of a flexible board (71), wherein the electric connector is configured to establish conductive connection between the first connection object and the second connection object while being held in compression (Fig. 14).
Regarding claim 20, Watanabe discloses the electric connector including multiple conductive members (11) arranged at intervals (see Fig. 8).
Regarding claim 21, Watanabe discloses the fixing member (18) surrounding the multiple conductive members (11).
Regarding claim 22, Watanabe discloses the electric connector comprising a fixing member (18), wherein the upper surface of the fixing member is bonded to the first connection object, and the lower surface of the fixing member is bonded to the second connection object (through 15A and 15B).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe in view of Han et al. (US 9,983,229).
Regarding claim 4, Watanabe discloses the conductive particles each including a magnetic particle. Han discloses a magnetic particle (32) whose surface is covered with a conductive metal layer and are successively aligned in a thickness direction of the conductive member in the polymeric matrix (10). It would have been obvious to one having ordinary skill in the art before the invention was effectively filed to form the conductive particles, as taught by Han, in order to provide good conductivity and facilitate alignment of the particles.
Regarding claim 5, to the extent that Han does not disclose the thickness of the conductive metal layer, it would have been obvious to one having ordinary skill in the art before the invention was effectively filed to form the conductive metal layer having a thickness from 0.1 to 4 pm, in order to provide the desired conductivity while minimizing cost, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6, to the extent that Han does not disclose the specific surface area, it would have been obvious to one having ordinary skill in the art before the invention was effectively filed to form the magnetic particles having a specific surface area from 10 to 800 cm2/g, in order to provide the desired conductivity, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 1-6, 8-9 and 11-22 are rejected under 35 U.S.C. 103 as being unpatentable over Setaka et al. (US 7,095,241).
Regarding claim 1, Setaka discloses a conductive member for conductive connection between a first connection object and a second connection object, the conductive member comprising: a polymeric matrix (23) comprising a rubber-like elastic substance; and a conductive medium (22) having conductivity, wherein the conductive medium includes conductive particles successively arranged in a conducting direction of the conductive member.
Setaka conductive particles inherently have a surface roughness, but does not disclose the specific value (whether expressed by Sa or Sdr). However, it would have been an obvious matter of design preference to form the conductive particles having a surface roughness expressed by an arithmetic mean height (Sa), and the surface roughness is 5 pm or less; and a surface roughness expressed by a developed interfacial area ratio (Sdr), and the surface roughness is 20 or less, in order to provide the desired contact area and conductivity, and since such modification would have involved a mere change in the size. A change in size is recognized as being within the level of ordinary skill in the art. Workable dimensions of would have been a matter of routine experimentation.
The dependent claims are also rejected for the same reasons discussed above regarding Watanabe.
Response to Arguments
Applicant's arguments filed 10/12/2025 have been fully considered but they are not persuasive.
In response to Applicant's arguments regarding the specifics of Rose, please note that Applicant’s reliance Rose’s subject matter does not deny that a change in size of an element is within the skill of an ordinary worker in the art.
In response to Applicant's arguments about the unexpected results, please note that reducing surface roughness (thus effectively increasing the contacting surface area) to produce a more efficient current transfer (and thus reduce loss), would have been evident to one skill in the art at the time the invention was effectively filed.
In response to Applicant's arguments that the change of the claimed parameter fundamentally alters the technical performance of the conductive member, please note that such change in performance would be expected to one skill in the art.
In response to Applicant's arguments about a critical boundary, please note that increasing the contact area is known to promote the conduction between contact members. One skill in the art would be able to measure and determine the optimal size through routine experimentation, i.e. changing the surface roughness and measuring. The reduction of transmission loss would not be expected to be linear.
In response to Applicant's arguments that Sa and Sdr independent parameter, please note that the fact that applicant is using more than one parameter of the same part to describe the same characteristic (i.e. roughness) does not go beyond the skill of a worker in the art. That is, it would have been obvious to one having ordinary skill in the art before the invention was effectively filed to measure different parameters that represent the roughness of the conductive particles. The arithmetic mean height and a developed interfacial area ration are both a result/characteristic of the smoothness/roughness of the outer surface of the conductive particle.
In response to Applicant's arguments about routine experimentation, please note that the size of a contact area affecting a transmission and transmission loss is not unexpected to one skill in the art. It is common practice to select conductor size based on their efficiency for their intended use.
In response to applicant's argument that the references address different purposes, please note that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Again, it would have been obvious to one having ordinary skill in the art before the invention was effectively filed that change the surface roughness (and thus the connection area between the particles) would affect transmission between the particles.
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 FELIX O FIGUEROA whose telephone number is (571)272-2003. The examiner can normally be reached M-F 9am-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, Renee Luebke can be reached at 571-272-2009. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FELIX O FIGUEROA/Primary Examiner, Art Unit 2833