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 .
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-9 in the reply filed on 2/20/26 is acknowledged. The traversal is on the ground(s) that claim 10 clarifies that the adhesive layer is provided on the coating by lamination, which results in the adhesive layer being filled into the cavity of the coating. Thus, the Office's assertion of a materially different process (laminate deformation) is incorrect as the laminating the adhesive layer on the coating and into the cavity, as recited in claim 10, cannot be construed as another and materially different process than laminate deformation.
This is not persuasive since the adhesive film as claimed can still be made by another and materially different process, e.g., the conductive coating and adhesive could be formed together on a release sheet, and then applied to the substrate.
The Applicant further asserts the Office fails to establish that there would be a search and/or examination burden, as the Office fails to provide any indication that Groups I and II would require searching different classifications. Further, as claim 10 requires all of the features of claim 1, there would not be a search and/or examination burden to examine claims 10 and 11 of Group II.
With regard to serious burden, restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because examination together of the separate and distinct inventions claimed would require searches of unrelated subject matter and consideration of disparate classification areas.
The Examiner acknowledges that claim 10 states the adhesive film is made by its process, but the process by which a product is made does not ultimately determine allowability, so there would be a serious search and/or examination burden if restriction were not required because examination together of the separate and distinct inventions claimed would require searches of unrelated subject matter and consideration of disparate classification areas.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/20/26.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kato et al (US 2013/0284244 A1).
Regarding claims 1-3 and 5-7, Kato teaches an adhesive film (e.g., transparent conductive film) comprising an electrically conductive adhesive layer (1) (e.g., conductive adhesive layer), an electrically conductive coating (2) (e.g., conductive metal mesh layer), and a substrate (e.g.., transparent base material), wherein the adhesive layer is arranged directly on the coating and the coating is arranged directly on the substrate, and wherein the coating comprises at least one cavity filled by the adhesive layer; wherein the coating comprises a multitude of cavities which are spaced apart equally; wherein the cavities are arranged in a matrix pattern; wherein the cavity is an indentation (i.e., a cavity having a maximum depth lower than the layer thickness of the coating); wherein the cavity is a gap in the coating and has a maximum depth equal to a layer thickness of the coating; wherein the coating comprises a multitude of ridges forming at least one pattern, the pattern consisting of a multitude of cavities bordered by the ridges (abstract; para 49, 50, 105 – 106; fig 1, fig 3).
The limitation coating of the instant claims is a product by process limitation and does not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in the instant claims and the product of Kato.
Regarding claims 8 and 9, Kato teaches the adhesive comprises polyvinyl alcohol (i.e., a thermoplastic polymer) and has excellent adhesiveness (i.e., at least one adhesive which is tacky in at least a non-cured state) (para 55, 108).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kato as applied to claim 1 above, and further in view of Garbar et al (US 2010/0200407 A1).
Kato teaches the adhesive film of claim 1. Kato further teaches its transparent conductive films are for use in electronic/electromagnetic wave shielding applications (para 4-5).
Kato fails to teach wherein the coating comprises a multitude of cavities with a random arrangement, depth profile and shape,
Garbar teaches conductive metal coatings for use in electromagnetic wave shielding applications; wherein the enhanced transparent conductive metal coating is applied to a transparent polymer film; wherein transparent conductive transparent coating layer is characterized by a random pattern (abstract; para 4, 8-9, 27, 33) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention the coating comprises a multitude of cavities with a random arrangement, depth profile and shape
Therefore, it would have been obvious to one of ordinary skill in the art to substitute the transparent conductive metal coating of Garbar for the conductive metal mesh of Kato, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07). This substitution also provides the additional motivation of using a metal layer with enhanced transparency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783