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 1/7/2026 have been fully considered but they are not persuasive.
Applicant alleges that Kidoguchi does not anticipate: “the information area being at a position where ground lines in the object are concentrated” as recited in claim 1 because Kidoguchi’s markings 8A and 8B are spaced apart from the ground lines 3A and 3D, and also because the markings 8A and 8B are not at a position where the grounding electrodes 3A and 3D are concentrated.
The Examiner respectfully disagrees with Applicant’s analysis and conclusion because the claim, when read in light of the specification, does not provide any distance requirements to limit the meaning of the phrase: “being at a position.” Stated differently, Applicant’s specification does not require the limitation: “being at a position” to be within a certain measurable distance, for example, within 5 millimeters. As such, the phrase: “being at a position” can be construed as “being within the vicinity of.”
Kidoguchi’s markings 8A and 8B are within the vicinity of the grounding electrodes 3A and 3D are concentrated. Therefore, this limitation is anticipated by Kidoguchi.
Applicant also alleges that Kidoguchi’s grounding electrodes 3A and 3D are positioned at opposite ends of the electronic circuit module 100/200. Therefore, Applicant alleges that Kidoguchi’s grounding electrodes 3A and 3D are not concentrated.
The Examiner respectfully disagrees with Applicant’s analysis and conclusion because the claim, when read in light of the specification, does not provide any definition as to the maximum distance the claimed “ground lines” can be apart from each other and still be “concentrated.” For example, Applicant’s specification at [0062] discloses “the position where many GND lines are concentrated in the electronic component 10A.” However, the specification does not provide any definition as to the how the word “concentrated” should be construed. As such, the phrase “concentrated” can be construed as “being within the vicinity of.”
Kidoguchi’s markings 8A and 8B and grounding electrodes 3A and 3D are within the vicinity of each other. Therefore, the limitation “the information area being at a position where ground lines in the object are concentrated,” as recited in claim 1, is anticipated by Kidoguchi.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-3, 6, 8, 10, 12 and 15-16, 18 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Kidoguchi” (US 2018/0077802).
Regarding claim 1, Kidoguchi anticipates 1. A method for forming a functional layer, the method comprising: giving information to the functional layer at an information area while forming the functional layer on a surface of an object (Figs. 4A-B, 5, [0014], [0018], [0039]-[0044]; the method for forming markings 8A and 8B from an ink jet device on a surface of the electronic circuit module 100. Examiner’s note: “the term “information” includes graphics, letters, and numbers.” Applicant’s specification, [0048]),
wherein the functional layer includes the information area having the information and a non-information area other than the information area (Figs. 4A-B, 5, [0014], [0018], [0039]-[0044]; the markings 8A and 8B which include an area having portions of the graphics and another area that doesn’t include the graphics),
the information area being at a position where ground lines in the object are concentrated (Figs. 4A-B, 5, [0014]; the markings 8A and 8B and grounding electrodes 3A and 3D are concentrated are within the vicinity of each other. Examiner’s note: see the “Response to Arguments” section above.),
and wherein the information area is different in color from the non-information area (Figs. 4A-B, 5, [0014]; the markings have a different color which is readily recognizable).
Regarding claim 2, Kidoguchi anticipates 2. The method of claim 1, wherein
the information is given by one of:
1) forming the information area into a specific shape having a thickness different from a thickness of the non-information area (Figs. 4A-B, 5, [0014], [0018], [0039]-[0044]; the markings 8A and 8B are formed into a specific shape and have a thickness different from a thickness of the non-information area);
or
2) forming the information area into a specific pattern shape using a material different from a material of the non-information area or using a same material as a material of the non-information area under a different forming condition (Examiner’s note: the rejection of this claim is based on the first limitation since the condition is “one of: 1)… or 2)….”).
Regarding claim 3, Kidoguchi anticipates 3. The method of claim 1, wherein the information includes information regarding the object (Figs. 4A-B, 5, [0014], [0018], [0039]-[0044]; the markings 8A and 8B include information regarding the electronic circuit module 100).
Regarding claim 6, Kidoguchi anticipates 6. The method of claim 1, wherein the information includes one or more of alphanumeric characters, a barcode, or a two-dimensional code corresponding to the information regarding the object (Figs. 4A-B, 5, [0014], [0018], [0039]-[0044]; the markings 8A and 8B are alphanumeric characters corresponding to the information regarding the electronic circuit module 100).
Regarding claim 8, Kidoguchi anticipates 8. The method of claim 2, wherein the functional layer in the information area has a minimum thickness of one tenth or less of a minimum thickness of the functional layer in an area where the specific shape is not formed (Figs. 3A, 3C, 4A-B, 5, [0014], [0018], [0039]-[0044]; the inkjet markings have an area that has a minimum thickness of one tenth or less of a minimum thickness of the functional layer in an area where the specific shape is not formed).
Regarding claim 10, Kidoguchi anticipates 10. The method of claim 1, wherein the functional layer is formed using a conductive material (Figs. 4A-B, 5, [0040] the markings 8A and 8B may be conductive or non-conductive).
Regarding claim 12, Kidoguchi anticipates 12. The method of claim 1, wherein the functional layer is formed on the object and the information is given to the functional layer by discharging a liquid composition forming the functional layer (Figs. 4A-B, 5, [0014], [0018], [0039]-[0044]; the markings 8A and 8B are formed from an ink jet device).
Regarding claim 15, Kidoguchi anticipates 15. The method of claim 2, further comprising: acquiring the information (Figs. 4A-B, 5, [0014], [0018], [0039]-[0044]; the markings 8A and 8B are acquired);
and determining a shape of the information area based on the information (Figs. 4A-B, 5, [0014], [0018], [0039]-[0044]; the shape of the markings 8A and 8B are based on the markings 8A and 8B).
Regarding claim 16, Kidoguchi anticipates 16. The method of claim 15, further comprising determining the position based on the information area is to be formed (Figs. 4A-B, 5, [0014], [0018], [0039]-[0044]; a position of where the markings 8A and 8B are formed is determined).
Regarding claim 18, Kidoguchi anticipates 18. A method for manufacturing an electronic component, the method comprising forming a functional layer to which information is provided according to the method of claim 1, wherein the object is the electronic component (Figs. 4A-B, 5, [0014], [0018], [0039]-[0044]; the object is the electronic circuit module 100).
Regarding claim 21, Kidoguchi anticipates 21. The method of claim 15, wherein the acquiring the information acquires the information from a surface of the object before forming the functional layer (Figs. 4A-B, 5, [0014]; the outer surface is a conductive film which is preferably black carbon ink which is acquired information before forming the marking which has a different color).
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.
Claims 4-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kidoguchi in view of “Sullivan” (US 4,888,270).
Regarding claim 4, Kidoguchi discloses the claimed invention as applied to claim 2.
Kidoguchi does not disclose the limitations of claim 4.
Sullivan discloses 4. The method of claim 2, wherein the specific shape includes an aggregate of dots (Figs. 2-3, col. 4, lines 3-21; images are composed of dot patterns).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Kidoguchi’s method with Sullivan’s system in order to provide for paste-consistency photopolymer is imaged onto printed wiring boards by coating the board overall, as suggested by Sullivan at Abstract.
Regarding claim 5, Kidoguchi in view of Sullivan discloses the claimed invention as applied to claim 4.
Kidoguchi does not disclose the limitations of claim 5.
Sullivan discloses 5. The method of claim 4, wherein the dots viewed from a thickness direction of the functional layer have a maximum width of 0.5 mm or less (Figs. 2-3, col. 4, lines 3-21; the dot patterns have a maximum width of 0.5 mm or less).
Regarding claim 9, Kidoguchi discloses the claimed invention as applied to claim 1.
Kidoguchi does not disclose the limitations of claim 9.
Sullivan discloses 9. The method of claim 1, wherein the functional layer in the non-information area has a thickness of 0.1 μm or more and 30 μm or less (Figs. 2-3, col. 4, lines 3-21; the film thickness is 0.006 mm).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Kidoguchi’s method with Sullivan’s system in order to provide for paste-consistency photopolymer is imaged onto printed wiring boards by coating the board overall, as suggested by Sullivan at Abstract.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kidoguchi in view of “Yamada” (US 9,362,196).
Regarding claim 7, Kidoguchi discloses the claimed invention as applied to claim 2.
Kidoguchi discloses 7. The method of claim 2, wherein the information area includes a first area and a second area in which the functional layer is thinner than the first area (Figs. 3A, 4A-B, 5, [0014], [0018], [0039]-[0044]; the markings 8A and 8B includes a first area and a second area that is thinner than the first area).
Kidoguchi does not disclose the specific shape includes a plurality of cells, the plurality of cells including one cell in which the second area viewed from an upper surface direction of the functional layer has an area of one fourth or more of an area of the one cell viewed from the upper surface direction of the functional layer.
Yamada discloses the specific shape includes a plurality of cells, the plurality of cells including one cell in which the second area viewed from an upper surface direction of the functional layer has an area of one fourth or more of an area of the one cell viewed from the upper surface direction of the functional layer (Fig. 13, col. 9, lines 8-10, 61-67; the identification marks 10A is a plurality of cells, and the identification mark 10B has an area of one fourth or more of an area of the one cell viewed from the upper surface direction of the functional layer).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Kidoguchi’s method with Yamada’s system in order to become possible to suppress the noise at the communication time, as suggested by Yamada at Col. 10, lines 48-51.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kidoguchi in view of “Shabtai” (US 2020/0315035).
Regarding claim 11, Kidoguchi discloses the claimed invention as applied to claim 2.
Kidoguchi does not disclose the limitations of claim 11.
Shabtai discloses 11. The method of claim 2, wherein the specific pattern shape is formed of a same conductive material as a conductive material of the non-information area, and is formed under a firing condition different from a firing condition for the non-information area (Figs. 5-6, [0085]-[0086]; claim 20 - the printed circuit board having an electromagnetically-shielded track; wherein the second insulating resin ink composition has a different resin composition than the insulating resin ink composition in the first print head and/or has a different color).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Kidoguchi’s method with Shabtai’s system in order to provide for direct printing of circuit boards having an electromagnetically-shielded tracks and/or components, as suggested by Shabtai at Abstract.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kidoguchi in view of “Ohkubo” (US 2008/0206487).
Regarding claim 13, Kidoguchi discloses the claimed invention as applied to claim 12.
Kidoguchi does not disclose the limitations of claim 13.
Ohkubo discloses 13. The method of claim 12, wherein the liquid composition is discharged with a line head system ([0196], [0242]; the composition is discharged with line head type ink-jet recording heads).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Kidoguchi’s method with Ohkubo’s system in order to provide an ink-jet ink which satisfies both ejection properties and viscosity increase characteristics when exposed to active energy rays, as suggested by Ohkubo at [0012].
Regarding claim 14, Kidoguchi discloses the claimed invention as applied to claim 12.
Kidoguchi does not disclose the limitations of claim 14.
Ohkubo discloses 14. The method of claim 12, wherein the liquid composition comprises a polymerizable compound, and the method further comprises irradiating the functional layer formed on the object with an active energy ray ([0027], [0196], [0242], claim 9- A method of recording an ink-jet image comprising the steps of: ejecting droplets of ink-jet ink of claim 1 onto a recording medium; and irradiating the droplet of the ink-jet ink ejected on the recording medium with active energy ray ; Polymer A and the Polymer B has a main chain of a saponified polyvinyl acetate).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Kidoguchi’s method with Ohkubo’s system in order to provide an ink-jet ink which satisfies both ejection properties and viscosity increase characteristics when exposed to active energy rays, as suggested by Ohkubo at [0012].
Conclusion
THIS ACTION IS MADE FINAL. 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 STANLEY TSO whose telephone number is (571)270-0723. The examiner can normally be reached Tu-Thurs 6am-6pm, alt M 6am-2pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tim Thompson can be reached at 571-272-2342. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STANLEY TSO/Primary Examiner, Art Unit 2847