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 3 and 7 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.
Claim 3 recited an acrylic compound comprising at least one selected from a group, but the group includes styrene, which is not an acrylic compound. Applicant should either delete styrene from the group or amended it to recite an acrylic group-containing styrene compound.
In claim 7, it is unclear what is meant by “an oxide film is removed”, noting that the claims recite an adhesive composition and not a method. Applicants should amend the claim to clarify whether the claim is a product-by-process claim where the solder particles or adhesive composition are obtained by a process involving removing an oxide film, or whether the claim requires the solder particles to be free of an oxide film.
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 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sumi (JP 2003-55632 A).
An English-language machine translation of Sumi, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation.
In paragraph 1 Sumi discloses a tacky adhesive tape. In paragraphs 10-11 Sumi discloses that the tape comprises an adhesive component, which can be various acrylic compounds meeting the limitations of the acrylic compound of claim 1, and a dicyclopentadiene skeleton-containing epoxy resin, meeting the limitations of the dicyclopentadiene of claim 1. In paragraph 40 and the table on the last page of the translation, Sumi discloses sample compositions having 20 or 30 parts by weight of dicyclopentadiene (B1 or B2 in the examples) and 20 parts by weight of acrylic compound (A in the examples), leading to a ratio or 100 or 150 parts by weight of dicyclopentadiene per 100 parts by weight of acrylic compound, within the range recited in claim 2. In paragraph 11 Sumi discloses that the acrylic compound can be various alkyl (meth)acrylates recited in claim 3. In paragraph 28 Sumi discloses that the substrate of the adhesive tape can be various films, indicating that the adhesive is in the form of a film, as recited in claim 10.
Sumi does not specifically disclose the storage modulus of the composition at 100°. However, since the composition of Sumi meets the compositional limitations of the claims, including the specific acrylates recited in claim 3, it will possess the claimed properties. See MPEP 2112.01. 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 (CCPA 1977). "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).
In light of the above, claims 1-3 and 10 are anticipated by Sumi.
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 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sumi in view of Lee (KR 101839945 B1).
The discussion of Sumi in paragraph 6 above is incorporated here by reference. Sumi discloses an adhesive tape composition meeting the limitations of claim 1, where the composition can comprise metals as conductive fillers, but does not specifically disclose the inclusion of solder particles.
An English-language machine translation of Lee, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the translation. In paragraph 16 Lee discloses a method of manufacturing a conductive adhesive comprising mixing solder particles with an adhesive resin, as recited in claim 4. In paragraph 69 Lee discloses that the solder particles can include the metals recited in claim 5. In paragraphs 82-85 Lee discloses that the melting point of the solder particles can be 220° C or lower, 150° C or lower, 140° C or lower, or 120° C or lower, all overlapping the ranges recited in claim 6. In paragraphs 16 and 89 Lee discloses that the method includes removing an oxide film from solder particles, as recited in claim 7. In paragraph 74 Lee discloses that the solder particles are present in an amount of 10 to 95% by weight, encompassing the ranges recited in claims 8-9.
The inclusion of the solder particles of Lee in the adhesive resin composition of Sumi therefore meets the limitations of claims 4-9.
It would have been obvious to one of ordinary skill in the art to include the solder particles of Lee in the adhesive resin composition of Sumi in according with the method of Lee, since Lee teaches in paragraphs in paragraphs 11-12 that the resulting adhesive resin has various favorable properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PREM SINGH can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
