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 .
Examiner Notes
Claims 1-27 are currently pending, of which claims 4, 16-18, and 21-27 are withdrawn. Claim 1 is currently amended.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 08/31/2021. It is noted, however, that applicant has not filed a certified copy of the JP2021-141965 application as required by 37 CFR 1.55.
Please note, it appears the document retrieval request on 10/25/2024 was unsuccessful.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 05/22/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
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, 5-10, 14-15, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tamura et al. (JP2019/026824).
Regarding claim 1, Tamura discloses a doubled-sided adhesive sheet used to join electronic components e.g., lenses, displays, protective members, housings, ect. (0179). In particular Tamura teaches joining of a cover glass (cover sheet) to a housing (0179 - 0180). The cover glass necessarily having a shape configured to cover an object (e.g., a surface of the housing) as claimed.
The cover sheet joined by the double-sided adhesive having a structure of first adhesive coating, foam substrate, and second adhesive coating (0021).
The foam substate having a porous structure with an average bubble (pore) diameter of 10 µm to 1000 µm (0033), overlapping the average pore diameter under both claimed porosity conditions.
Tamura does not expressly teach a porosity for the foam. However, Tamura teaches that the foam has the closed cell ratio is 70% or more (0053). Tamura teaches that a higher closed-cell ratio improves strength and drop characteristics (0053). As there is no evidence indicating the porosity is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the ranges discussed above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claims 2-3, Tamura teaches the foam substrate including colorants including silicon compounds (e.g., silicon dioxide) (0065), an exemplary heat-resistant material.
Regarding claims 5-7, Tamura does not expressly teach the properties of deformation ratio and side air permeation as claimed in claims 5-7. However, as Tamura teaches the same porous substrate as claimed these properties would be expected of the prior art foam substrate.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Regarding claim 8, Tamura teaches the adhesive layer(s) are a pressure-sensitive adhesive (0020).
Regarding claim 9, Tamura teaches the adhesive layer(s) may be acrylic or silicone (0067).
Regarding claim 10, Tamura teaches the adhesive having re-peelability (0007).
Regarding claim 14, Tamura teaches that the protective panel may include glass (0180) and thus would have no air permeability in a thickness direction.
Regarding claim 15, Tamura teaches the protective panel may include glass (0180) which is optically transparent.
Regarding claim 19,Tamura does not disclose the area of the cover sheet film. However, as the present specification is silent to unexpected results, it would have been an obvious modification to one having ordinary skill in the art at the time the invention was made to modify the area of the cover sheet based on routine experimentation, for the purpose of optimizing operation of said cover window. Said obvious modifications including, selecting a size required for a given end use including having an area of 3500 mm2 or less. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the size (or dimension) of a components. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2D 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is no patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
It would have been obvious to one of ordinary skill in the art at the time of the invention to vary the cover sheet are including over the range presently claimed to create a device with an area required for a given end use.
Regarding claim 20, Tamura teaches that the double-sided adhesive may be used to join a variety of electronic components (0179 – 1080). Tamura does not expressly teach the cover member placed to cover a semiconductor device with a face of a substate on which the semiconductor device is mounted being the placement face.
However, applicants specification teaches in the background art that cover members configured to be placed on a placement face so as to cover an object including those used for semiconductor device packages are known (see specification 0002).
The recitation that the cover member “is used for forming a semiconductor device package in which the semiconductor device is housed in an inner space of the semiconductor device package by placing the cover member on the placement face” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Tamura discloses a cover member as presently claimed, it is clear that the cover member of Tamura would be capable of performing the intended use, presently claimed as required in the above cited portion of the MPEP.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tamura as applied to claim 10 above, and further in view of Iwasaki et al. (US 2015/0132558).
Regarding claim 11, Tamura discloses the limitations of claim 10 as discussed above. Tamura does not disclose an adhesive strength for the adhesive layer.
Iwasaki discloses an adhesive tape having a foam base material (0001), the adhesive layer having a peel adhesion force of 0.3 to 4 N/20 mm (0063), overlapping the claimed adhesive strength of 0.05 N/20 mm or more and less than 5.0 N/20 mm (MPEP 2144.05).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the adhesive layers of Tamura to have a peel adhesion of 0.3 to 4 N/20mm as taught by Iwasaki, to prevent cracking, breakage and distortion to the member the adhesive is applied during rework (0063).
Regarding claim 12, Tamura teaches the adhesive having re-peelability (0007) and being applied to e.g., a cover glass (instant cover sheet) to a housing (0179 - 0180).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Tamura as applied to claim 1 above, and further in view of Wang (US 2013/0258261).
Regarding claim 13, Tamura discloses the limitations of claim 1 as discussed above. While Tamura teaches that the adhesive is applied to join different components of electronic devices together (0179 - 0180), Tamura does not expressly teach the adhesive layer having a shape corresponding to a peripheral portion of cover sheet.
Wang in the analogous field of adhesively attached cover members, teaches a method of attaching a protection film (0002). The adhesive layers (24) provided at the periphery of the protection film and having a shape corresponding to the peripheral edge (Fig. 2).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the adhesive of Tamura to have a shape which corresponds to the periphery of the cover sheet as taught by Wang, providing for convenience and easy operation (0042).
As the adhesive is provided in the peripheral portion it would be joined to the peripheral portion as claimed.
Response to Arguments
Applicant’s amendments filed 07/29/2026 have been entered. Accordingly, the 35 U.S.C. 112(b) rejection of claims 1-3, 5-16 and 19-20 is withdrawn.
Applicants arguments have been fully considered but they are not persuasive. Applicant argues that Tamura’s teaching of increasing closed-cell ratio does not render the claimed porosity obvious. Applicant argues that two hypothetical substrates may have vastly different porosity’s but the same closed-cell ratio.
Applicant has misunderstood the rejection as set forth. The rejection is not stating that because Tamura teaches that the foam has the closed cell ratio of 70% or more would equate to an overlapping range of porosity being present. Tamura sets for a range for closed cell ratio and that a higher closed-cell ratio improves strength and drop characteristics (0053). A known way to influence the closed cell ratio would be to adjust the porosity of the foam. It is maintained that [w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). I.e., in order to adjust the closed cell ratio to achieve the purported strength/drop conditions, the porosity of the foam would have been an obvious property to have optimized.
Applicant argues that the porosity is critical.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296. In the current case, the claims are not limited in the materials of the substrate and have an open-ended range for average pore diameter. Consequently, a trend from the proffered data such that criticality of the claimed range is established is not found.
It is noted that minimally data points outside of the claimed range, within the claimed range, and at or proximate the claimed endpoints of the range are suggested to establish criticality of a claimed range.
Correspondence
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 ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
