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 .
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.
Claims 1, 16, and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 16, it’s not clear what the following means: “a connection film that an adhesive is printed in a predetermined shape on the mold release film.” If the connection film is a separate film than the claimed mold release film, then why is the connection film being described as the adhesive on the mold release film? Or is the claimed connection film just the adhesive itself?
Claim 21 recites the limitation "the" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Regarding Claims 1 and 21, Claim 21 gives the impression that the “connection film” can be equivalent to only “an adhesive being printed in a predetermined shape on the mold release film.” However, this seems to conflict with independent Claim 1, which treats the “connection film” as in fact, a separate film that is placed on the mold release film.
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.
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.
Claim(s) 1-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka TW_201352101_A (see machine English translation) in view of Koji JP_03285977_A (see machine English translation).
1. Regarding Claims 1, 8, 13, 16, and 21, Tanaka discloses an anisotropic conductive film (corresponds to claimed connection film of independent Claims 1, 16, and 21 as well as dependent claim 13) and a method thereof (Title) (corresponds to claimed method and product) relating to molds (paragraphs 0014 and 0015), is formed on a release film (corresponds to claimed mold release film) by applying an adhesive (corresponds to claimed adhesive) onto said release film (paragraph 0073). Tanaka discloses how said anisotropic conductive film (corresponds to claimed connection film) can be made into a predetermined shape (paragraph 0081). Also, Tanaka discloses that said adhesive can be formed into the shape of a film, or the shape of a paste, or other “forms” (paragraph 0082); all of which indicate it being predetermined.
2. However, Tanaka does not disclose printing its adhesive onto its release film.
3. Koji discloses an adhesive that can be screen printed (corresponds to claimed printing of instant Claims 1, 8, 16, and 21) on a mold release film (Abstract) wherein said adhesive has a predetermined shape and said screen printing method leads to a decrease in large number of manufacturing steps, decrease in large amount of waste, and eliminates the inability to be used on substrates after component mounting (Page 3, Lines 6-12).
4. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the adhesive, of Tanaka, by screen printing it onto its release film by using the screen-printing method, of Koji. One of ordinary skill in the art would have been motivated in doing so in order to decrease large number of manufacturing steps, decrease in large amount of waste, and eliminate the inability to be used on substrates after component mounting.
5. Regarding Claims 2- 4, 9, 10, 17, 18, and 22- 24, Tanaka in view of Koji suggests how said connection film can be formed along the arrangement direction (width direction) and then cut corresponding to the longitudinal (Tanaka: Claim 1) and then wound to a core (Tanaka: paragraph 0081). Furthermore, Koji discloses an anisotropic electrically conductive adhesive layer is printed on a sheet-shaped release paper as rectangular shapes measuring 4 x 40 mm. When using the same, cutting the release paper at a prescribed width would be obvious to a person skilled in the art.
6. Regarding Claims 5 and 6, Tanaka in view of Koji suggests an adhesive that contains conductive particles (Tanaka: paragraph 0070).
7. Regarding Claim 7, Tanaka in view of Koji suggests placing said conductive particles between the terminal portion 5a and the conductive pattern 20 (paragraph 0070), which clearly suggests predetermined positions.
8. Regarding Claims 11, 12, 19, and 20, although the applied art does not suggest the claimed dimensions, it would be expected for one of ordinary skill in the art to know how to vary the widths based on end-user product specifications. Applicants have not indicated how this results in unexpected or surprising properties.
9. Regarding Claims 14 and 15, Tanaka in view of Koji suggests electronic components having terminals with the afore-described connection film cured connected there-between as well as the method thereof (Tanaka: paragraph 0070).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAHSEEN KHAN whose telephone number is (571)270-1140. The examiner can normally be reached Mondays-Saturdays 08:00AM-10:00PM.
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, Frank Vineis can be reached at 5712701547. 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.
/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 February 27, 2026
Prosecution Insights