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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Examiner's Amendment
An examiner' s amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
The application has been amended as follows:
22. (Currently Amended) A conductive member, comprising: an adhesive layer consisting of an adhesive composition containing conductive particles; and a metal foil layer disposed on the adhesive layer, wherein an average particle size of the conductive particles is larger than a thickness of the adhesive layer; and wherein a volume percent of the conductive particles is over 23% of a total volume of the adhesive composition.
Status of Application
In response to an interview on 05/14/2026, Applicant authorized a claim amendment to independent claim 22, which specifies: a volume percent of the conductive particles is over 23% of a total volume of the adhesive composition.
In response to the Office action mailed 02/11/2026, Applicants amended claims 1-3, 5-6, 8-10, 20 and 22-23 and cancelled claim 7 in the response filed 04/30/2026.
Claim(s) 1-6 and 8-25 are pending examination.
Foreign Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file, as electronically retrieved 05/30/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/14/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant’s arguments, see 04/30/2026 Remarks, with respect to the rejection of claim 22 under 35 U.S.C. § 112 have been fully considered and are persuasive. The rejection of claim 22, and all dependent claims thereof, remain.
Applicant’s arguments, see 04/30/2026 Remarks, with respect to the claim objection of claim 23 has been fully considered and is persuasive. The claim objection of claim 23 has been withdrawn.
Applicant’s arguments with respect to claim(s) 1-6 and 8-25 have been considered but are moot because the arguments do not apply to the new combination of references being used in the current rejection.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112(d):
Claim 1 recites the limitation "the thickness of the metal foil layer is 10 µm or more.” in line 1. This is an open-ended range. It is unclear just how large this metal foil thickness can be?
Claim 1 recites the limitation "the thickness of the metal foil” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Note: all dependent claims necessarily inherit the indefiniteness of the claims from which they depend.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
2. Claims 1-6, 8-9, 20-22 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (PG Pub 2020/0137931; hereinafter Lee) and Dahringer et al. (US Patent No. 5,741,430; hereinafter Dahringer).
PNG
media_image1.png
324
512
media_image1.png
Greyscale
Regarding claim 22, refer to the figures cited above, in the combination of Lee and Dahringer,Lee teaches a conductive member 230 comprising:
an adhesive layer 231 consisting of an adhesive composition containing conductive particles (para [0077]; “nano-conductive fiber layer 231 may include an adhesive member”); and
a metal foil layer 233 disposed on the adhesive layer.
Lee does not teach “an average particle size of the conductive particles is larger than a thickness of the adhesive layer; and wherein a volume percent of the conductive particles is over 23% of a total volume of the adhesive composition.”
PNG
media_image2.png
298
640
media_image2.png
Greyscale
In the same field of endeavor, refer to the Examiner’s mark-up of Fig. 1-provided above, Dahringer teaches a conductive adhesive comprising: an adhesive layer 13 consisting of an adhesive composition containing conductive particles 14 an average particle size of the conductive particles is larger than a thickness of the adhesive layer (see Fig. 1); and wherein a volume percent of the conductive particles is over 23% of a total volume of the adhesive composition (claim 14; “the conductive adhesive is 5 to 30 volume percent said conductive particles.”).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the conductive adhesive of Lee with that of Dahringer, thereby, improving a “method of electrically and mechanically bonding a conductive surface to a target surface using conductive adhesives so that the bonding joint has a substantially low and stable joint resistance and a substantially strong mechanical bond under conditions of elevated temperature and/or humidity (col. 2 line 65 through col. 3 line 11).
Regarding claim 1, refer to the figures cited above, in the combination of Lee and Dahringer, Lee teaches the thickness of the metal foil layer is 10 µm or more (para [0074]).
Regarding claim 2, refer to the figures cited above, in the combination of Lee and Dahringer, Lee teaches the conductive member 230 is used to form an electromagnetic wave shield (para [0057]).
Regarding claim 3, refer to the figures cited above, in the combination of Lee and Dahringer, Lee teaches the thickness of the metal foil layer is 10 µm to 14 µm (para [0074]), which lies completely inside the claimed range of 10 µm to 200 µm
According to MPEP §2131.03 a prima facie case of Anticipation exists where the claimed ranges are clearly within the claimed range or either overlap, approach, or touch the claimed range with "sufficient specificity."
Further support for anticipated ranges that are within a claimed range can be found in In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)), and support for ranges the are either overlapping, approaching, or touching the claimed range with "sufficient specificity" can be found by comparing ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
Regarding claim 4, refer to the figures cited above, in the combination of Lee and Dahringer, Lee teaches the thickness of the metal foil layer is 10 µm to 14 µm (para [0074]); which lies completely inside the claimed range of 15 µm or less.
According to MPEP §2131.03 a prima facie case of Anticipation exists where the claimed ranges are clearly within the claimed range or either overlap, approach, or touch the claimed range with "sufficient specificity."
Further support for anticipated ranges that are within a claimed range can be found in In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)), and support for ranges the are either overlapping, approaching, or touching the claimed range with "sufficient specificity" can be found by comparing ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
Regarding claim 5, refer to the figures cited above, in the combination of Lee and Dahringer, Lee teaches a holding film 311 disposed on at least one of a surface of the metal foil layer (233-top) which is opposite to the adhesive layer (231-Lee = 13-Dahringer) and a surface of the adhesive layer which is opposite to the metal foil layer (see Fig. 4d).
Regarding claim 6, refer to the figures cited above, in the combination of Lee and Dahringer, Lee teaches the adhesive layer (231-Lee = 13-Dahringer) and the metal foil layer 233 are separately provided (unique and distinct from one another), and the adhesive layer is capable of adhering to the metal foil layer in use (see figures above).
Lee teaches the claimed conductive member. The recitations to “the adhesive layer is capable of adhering to the metal foil layer in use” are properties and/or characteristics or the material compositions. The applied prior art, teaching a substantially identical apparatus, renders the claimed apparatus unpatentable because the claimed properties and characteristics (i.e., adhesion) are presumed inherent. See MPEP 2112.01.
According to the MPEP 2112.01(I) (Product and Apparatus Claims --- When the Structure Recited in the Reference is Substantially Identical to that of the Claims, Claimed Properties or Functions Are Presumed to be Inherent):
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 (CCPA1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709,15 USPQ2d 1655,1658 (Fed. Cir. 1990).
Applicant may rebut this finding by proving the prior art apparatus and the claimed apparatus are not substantially identical or by proving the prior art apparatus does not possess the claimed properties and characteristics. See esp. In re Ludtke, 441 F.2d 660, 664 (CCPA 1971) (holding a claim anticipated, even though the claimed panels were limited by properties and functions not within the prior art, because appellants failed to show the prior art did not possess the characteristics claimed); see also Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985) (a claimed compound’s claimed property, albeit the property newly discovered, did not patentably distinguish from the prior art compound that met the claimed compound); see also, MPEP 2112.01(II). Applicant is reminded that argument of counsel is not evidence. MPEP 2145(I).
Regarding claim 8, refer to the figures cited above, in the combination of Lee and Dahringer, Dahringer teaches the conductive particles 14 include first conductive particles (annotated “par-1”) having a first average particle size (see Fig. 1), and second conductive particles (annotated “par-2”) having a second average particle size larger than the first average particle size (see Fig. 1).
Regarding claim 9, refer to the figures cited above, in the combination of Lee and Dahringer, Lee teaches the adhesive layer (231-Lee = 13-Dahringer) includes a first adhesive layer consisting of the conductive particles 14 and an adhesive composition (para [0077]), but does not explicitly teach the first adhesive layer consisting of a second adhesive layer consisting of an adhesive composition.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to duplicate the number of adhesive layers, since it has been held that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced (see In re Harza and MPEP section 2144.04 (VI)(B) the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. It is the Examiner’s position that no new and unexpected result is produced with the addition of multiple adhesive layers, therefore the modification of duplicating parts is not a patentable feature for the invention as claimed. As a result, requiring a rationale for modifying a reference is moot because the modification is, under Harza, not a patentable feature.
Regarding claim 20, refer to the figures cited above, in the combination of Lee and Dahringer, Lee teaches a metal conductive portion 240 that is provided on a semi-finished product (170,210 prior to addition of 230) and extends toward the conductive member (has height); wherein the metal conductive portion and the metal foil layer 233 are electrically connected through the conductive particles (in 231).
Regarding claim 21, refer to the figures cited above, in the combination of Lee and Dahringer, Lee teaches a semi-finished product (170,210 prior to addition of 230) in which at least one electronic component 170 is mounted on a wiring board 210; and the connection structure according to claim 20 (see claim 20).
Regarding claim 25, refer to the figures cited above, in the combination of Lee and Dahringer, Lee teaches the metal conductive portion 240 extends in a direction (vertical) intersecting a surface (top surface of 210) on which the electronic component 170 is mounted (see Fig. 4d).
2. Claim(s) 10-14, 16-19 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Lee and Dahringer, as applied to claim 22 (and claim 10 respectively) above, and further in view of Jang et al. (PG Pub 2019/0109094; hereinafter Jang).
Regarding claim 10, refer to the figures cited above, in the combination of Lee and Dahringer, Lee teaches a method for manufacturing an electronic device 310d, comprising: providing a semi-finished product (see claim limitations below) in which at least one electronic component 170 is mounted on a wiring board 210; forming at least one metal conductive portion 240 on the semi-finished product (see Fig. 4d); and disposing the conductive member 230 according to claim 1 (see claim 1) on the metal conductive portion (see Fig. 4d), and electrically connecting the metal conductive portion and the metal foil layer with the conductive particles (see Fig. 4d).
Although, Lee teaches the electronic component on the semi-finished product, he does not teach encapsulating the electronic component with a resin.
PNG
media_image3.png
167
428
media_image3.png
Greyscale
In the same field of endeavor, refer to Fig. 2a through Fig. 2c and Fig. 1-provided above, Jang teaches a method for manufacturing an electronic device 10 (para [0028-0087]), comprising: providing a semi-finished product (taken to be the component prior to shielding) in which at least one electronic component 12 is mounted on a wiring board 11; forming at least one metal conductive portion 17 on the semi-finished product; and encapsulating the electronic component on the semi-finished product with a resin 13 (para [0029]).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to encapsulate the electronic device, as taught by Jang, to aid in mechanical support.
Regarding claim 11, refer to the figures cited above, in the combination of Lee, Dahringer and Jang, Jang teaches the encapsulating 13 is performed after the forming of the metal conductive portion 17 (see Fig. 3c).
Regarding claim 12, refer to the figures cited above, in the combination of Lee, Dahringer and Jang, Jang teaches polishing 116 (i.e. cutting; see Fig. 2a) a surface of the encapsulated resin 13 so that a tip end (side surfaces) of the metal conductive portion 17 encapsulated with the resin is exposed (see Fig. 3c).
Regarding claim 13, refer to the figures cited above, in the combination of Lee, Dahringer and Jang, Jang teaches the polishing 116 (i.e. cutting; see Fig. 2a) (see 35 U.S.C 112 rejection above) is performed by using CMP slurry or a polishing pad (para [0050]; “blade”).
Regarding claim 14, refer to the figures cited above, in the combination of Lee, Dahringer and Jang, Jang teaches the electrically connecting is performed when the encapsulating 13 is performed since the same claimed steps are taken (see Fig. 1).
Regarding claim 16, refer to the figures cited above, in the combination of Lee, Dahringer and Jang, Lee teaches in the electrically connecting, at least one of heating and pressing is performed (para [0054]) with respect to the conductive member 230 so that the metal conductive portion 240 and the metal foil layer 231 are electrically connected through the conductive particles (nanofibers).
Regarding claim 17, refer to the figures cited above, in the combination of Lee, Dahringer and Jang, Lee teaches a protective film (para [0049]) is provided on a surface of the metal foil layer (top) which is opposite to the adhesive layer 231 (see Fig. 4d and Fig. 4e), and pressing is performed with respect to the conductive member through the protective film (para [0049]; “According to an embodiment, the shielding films 230 and 250 may each include a second insulation layer in the top layer thereof. The second insulation layer may prevent damage to the three-dimensional shaping layer during a hot pressing process.”)
Regarding claim 18, refer to the figures cited above, in the combination of Lee, Dahringer and Jang, Lee teaches the at least one metal conductive portion 240 includes a plurality of metal conductive portions (para [0041] and Fig. 3), and in the forming of the metal conductive portion, the plurality of metal conductive portions are formed to surround the electronic component in a planar direction (see Fig. 3).
Regarding claim 19, refer to the figures cited above, in the combination of Lee, Dahringer and Jang, Lee teaches the plurality of metal conductive portions 240 are formed so that adjacent metal conductive portions (ex. left and right side) are in contact with each other (through 230) or adjacent metal conductive portions are separated from each other.
Regarding claim 23, refer to the figures cited above, in the combination of Lee, Dahringer and Jang, Lee teaches in the forming of the metal conductive portion 240, the metal conductive portion is formed so as to extend in a direction (vertically) intersecting a surface (top horizontal surface of 210) on which the electronic component 170 is mounted (see Fig. 4d).
Regarding claim 24, refer to the figures cited above, in the combination of Lee, Dahringer and Jang, Lee teaches the metal conductive portion 240 is located within the encapsulated resin 13-Jang with a tip end thereof exposed from the resin, and wherein, in the electrically connecting, the exposed tip end (e.g. the top tip end) is connected to the metal foil layer 233 with the conductive particles 231 (see Fig. 4d).
Allowable Subject Matter
3. Claim 15 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 15 contains allowable subject matter, because the prior art of record, either singularly or in combination, fails to disclose or suggest, in combination with the other elements in claim 15, the forming of the metal conductive portion is performed after the encapsulating.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
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 on (571) 272-2063. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTINA A SYLVIA/Examiner, Art Unit 2817 /MARLON T FLETCHER/Supervisory Primary Examiner, Art Unit 2817
Prosecution Insights