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 .
Withdrawn Rejections
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response dated April 21, 2026. However, new rejections may have been made using the same prior art if still applicable to the newly presented amendments and/or arguments.
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 – 6, 8 - 11, 13, 16 – 18, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (USPGPub 2008/0261039 A1) in view of JP H10292159 A.
A machine-generated translation of JP H10292159 A accompanied the previous action. In reciting this rejection, the examiner will cite this translation.
Tanaka et al. disclose a film comprising a long release film (Abstract; Figures 1 and 2, #10); a plurality of adhesive film pieces provided on the release film (Figures 1 and 2, #12); and a groove formed on a surface of the release film on the side of the plurality of adhesive film pieces, extending along an outer edge of each of the plurality of adhesive film pieces (Figures 1 and 2, D) as in claim 1. With respect to claim 2, the groove is located outside the outer edge of each of the plurality of adhesive film pieces (Figures 1 and 2, #12 and D). Regarding to claim 3, the depth of the groove is 10% or more of the thickness of the release film (Paragraphs 0107, 0111). For claim 4, the depth of the groove is 85% or less of the thickness of the release film (Paragraphs 0107, 0111). In claim 5, the depth of the groove is 20% or more of the thickness of the adhesive film piece surrounded by the groove among the plurality of adhesive film pieces (Paragraphs 0107, 0111, 0147). With regard to claim 6, the depth of the groove is 100% or less of the thickness of the adhesive film piece surrounded by the groove among the plurality of adhesive film pieces (Paragraphs 0107, 0111, 0147). With respect to claim 8, a curing degree in differential scanning calorimetry of an adhesive forming each of the plurality of adhesive film pieces is 80% or more at 150°C for 10 seconds (The recitation is a process recitation in a product. Product claims including process recitations are not limited by the manipulation of the recited steps, only the structure implied by the steps. MPEP See 2113. In the present instance, the process steps imply that the adhesive is cured. The reference discloses such a product. See Paragraphs 0134, 0135, 0144). Regarding claim 9, the plurality of adhesive film pieces are separated from each other (Figure 1, #12). For claim 10, the plurality of adhesive film pieces are separated from an edge of the release film in a width direction of the release film (Figure 1, #12). In claim 11, the plurality of adhesive film pieces are arranged in one row in a longitudinal direction of the release film (Figure 1, #12). As in claim 13, the plurality of adhesive film pieces have the same shape (Figure 1, #12). Tanaka et al. also disclose a wound body comprising the film according to claim 1; and a core on which the film is wound (Figure 11) as in claim 16. Tanaka et al. further disclose a connection structure comprising a first member that has a first attachment surface; a second member that has a second attachment surface; and the adhesive film piece according to claim 1 connecting the first attachment surface and the second attachment surface (Figures 12 and 13) as in claim 17. Tanaka et al. disclose a method for manufacturing a connection structure comprising a preparation step of preparing the film according to claim 1; and a connection step of connecting a first attachment surface of a first member and a second attachment surface of a second member through the adhesive film piece of the film (Figures 2, 12 and 13) as in claim 18. With respect to claim 21, the groove extends continuously along the outer edge of each of the plurality of adhesive film pieces (Figure 2, #D). However, Tanaka et al. fail to disclose the groove has a width of 15 µm or more, and the groove extends discontinuously along the outer edge of each of the plurality of adhesive film pieces.
JP H10292159 A teach a film comprising a long release film (Figure 1, #4); a layer of provided on the release film (Figures 1, #3); and a groove formed on a surface of the release film on the side of the plurality of adhesive (Figure 4A, #10), wherein the groove has a width of 15 µm or more (Page 3, lines 25 – 37, wherein the projections on the roll are pushed into the release liner, forming a groove) for the purpose of lessening the slippage of the release liner (Abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a groove has a width of 15 µm or more in Tanaka et al. in JP H10292159 A in order to lessen the slippage of the release liner as taught by JP H10292159 A.
With regard to limitation “the groove extends discontinuously along the outer edge of each of the plurality of adhesive film pieces” , it is well settled that a particular shape of a prior invention carries no patentable weight unless the applicant can demonstrate that the new shape provides significant unforeseen improvements to the invention. In the instant case, the application does not indicate any new, significant attributes of the invention due to its shape which would have been unforeseen to one of ordinary skill in the art. A change in size or shape is generally recognized as being within the level of ordinary skill in the art, absent unexpected results. MPEP 2144.04 (I) and (IV).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (USPGPub 2008/0261039 A1) in view of JP H10292159 A as applied to claim 1 above, and further in view of Tandy et al. (USPGPub 2006/0079011 A1).
Tanaka et al., as modified with JP H10292159 A, disclose the claimed invention except for an adhesive forming each of the plurality of adhesive film pieces has a multi-layer structure.
Tandy et al. teach an adhesive film for use with semiconductors (Abstract) having an adhesive forming each of the plurality of adhesive film pieces has a multi-layer structure (Paragraph 0049) for the purpose of having adhesive layers with desired properties (Paragraph 0049).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a multi-layer structure adhesive in the modified Tanaka et al. in order to have adhesive layers with desired properties as taught by Tandy et al.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (USPGPub 2008/0261039 A1) in view of JP H10292159 A as applied to claim 1 above, and further in view of Nakayama et al. (USPN 8,323,761).
Tanaka et al., as modified with JP H10292159 A, disclose the claimed invention except for at least one of the plurality of adhesive film pieces has a hole.
Nakayama et al. teach a film comprising a long release film (Abstract; Figures 1 and 2, #2A); a plurality of adhesive film pieces provided on the release film (Figure 5, #3A); and a groove formed on a surface of the release film on the side of the plurality of adhesive film pieces (Figure 5, #6A), wherein at least one of the plurality of adhesive film pieces has a hole (Figure 1, #54A) for the purpose of matching the shape of the article to which it is adhered (Column 6, lines 27 – 32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a hole in the adhesive film pieces in the modified Tanaka et al. in order to match the shape of the article to which it is adhered as taught by Nakayama et al.
Claims 14, 15, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (USPGPub 2008/0261039 A1) in view of JP H10292159 A as applied to claim 1 above, and further in view of Takamoto et al. (USPN 8,986,486).
Tanaka et al., as modified with JP H10292159 A, disclose the claimed invention except for the adhesive film piece is conductive, the adhesive film piece contains conductive particles, and no adhesive is disposed on the release film between adjacent ones of the plurality of adhesive film pieces.
Takamoto et al. teaches a film comprising a long release film (Abstract; Figures 1A and 1B, #42); a plurality of adhesive film pieces provided on the release film (Figure 1B, #2); and a groove formed on a surface of the release film on the side of the plurality of adhesive film pieces, extending along an outer edge of each of the plurality of adhesive film pieces (Figure 1B and 2, #42), wherein the adhesive film piece is conductive and the adhesive film piece contains conductive particles (Column 11, lines 46 – 67), and no adhesive is disposed on the release film between adjacent ones of the plurality of adhesive film pieces (Figures 1 and 2, #2) for the purpose of reducing the electrostatic energy at the time of adhesion (Column 19, line 61 to Column 20, line 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a conductive adhesive film piece in the modified Tanaka et al. in order to reduce the electrostatic energy at the time of adhesion as taught by Takamoto et al.
Allowable Subject Matter
Claim 20 is allowed.
Response to Arguments
Applicant's arguments filed April 21, 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that “JP '159 discloses an adhesive tape that can be suitably used in the orthopedics, plastic surgery or anesthesiology. On the other hand, the film of the present invention finds use in the field of manufacturing a connection structure, e.g., for electronic devices. Thus, JP '159 is not in the same field of endeavor as the present invention or
as Tanaka et al.”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to do so is found in the reference as JP H10292159 A teach a film comprising a long release film (Figure 1, #4); a layer of provided on the release film (Figures 1, #3); and a groove formed on a surface of the release film on the side of the plurality of adhesive (Figure 4A, #10), wherein the groove has a width of 15 µm or more (Page 3, lines 25 – 37, wherein the projections on the roll are pushed into the release liner, forming a groove) for the purpose of lessening the slippage of the release liner from the adhesive layer.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to Applicant’s argument that “Moreover, JP '159 gives the dimensions of the minute protrusions (13) of the heat roll (14) shown in Fig. 5 of JP '159. These minute protrusions (13) are substantially conical and have a base with a diameter of 1 mm and a height of 1.3 mm. However, these are the dimensions of the minute protrusions (13) of the heat roll (14), not of the recesses (10) produced by the protrusions (13). The width of recesses (10) produced by the protrusions (13) is not disclosed.
Therefore, even assuming, arguendo, one of ordinary skill in the art would have looked to JP '159 to modify Tanaka et al., one would not have any apparent reason to make the width of the incision of Tanaka et al. 15 µm or more.”, the Examiner respectfully disagrees. JP’159 clearly states that the base has a width of 1 mm, which would clearly form a hole that is greater than 15 µm, thereby meeting the claim limitation since 1 mm is clearly larger than the claim limitation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Patricia L Nordmeyer whose telephone number is (571)272-1496. The examiner can normally be reached 10am - 6:30pm EST, Monday - Friday.
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 May 6, 2026
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