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 .
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 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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 01 June 2026. A preliminary amendment was filed on 29 October 2024 amending claims 4-9, 11, and 12. Claims 1-12 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 29 October 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Note: the original reference document JP 2010-083081 A provided by applicant is missing most of the text of the document. The Examiner has provided a clean copy of this document for the record and listed it on the attached form PTO-892.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (product claims 1-8) in the reply filed on 24 July 2026 is acknowledged. Claims 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings received on 29 October 2024 are acceptable.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 2, and 4-7 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-13 of copending Application No. 18/861,396. The claims filed on 29 October 2024 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, Claim 1 of the ‘396 application also recites a conductive adhesive film having a base material layer, an adhesive layer located on an adherend side, and a surface resistance value of the conductive adhesive film on a side opposite to the adhesive layer sides is from 1 ×107 Ω/sq. to 1 ×1012 Ω/sq. The ‘396 application does not specify the measurement temperature of the surface resistance value measurement in the claims, although the disclosure does describe measuring this value at 23 °C. See U.S. Pub. 2026/0176503 at p. 7, [0112]. The present application describes that the surface resistivity of the conductive adhesive film opposite to the adhesive layer side at 140°C is in the range of from 1 ×107 Ω/sq. to 1 ×1012 Ω/sq. and most preferably from 1 ×107 Ω/sq. to 1 ×1010 Ω/sq., and that the surface resistivity at 23°C of this same side is also from 1 ×107 Ω/sq. to 1 ×1012 Ω/sq. and most preferably from 1 ×107 Ω/sq. to 1 ×1010 Ω/sq., see paragraphs [0040-0043] of the published specification.
Thus it is reasonable to expect the claimed invention of the ‘396 application which has a surface resistivity in the range of from 1 ×107 Ω/sq. to 1 ×1012 Ω/sq. at 23°C to also exhibit a surface resistivity in the range of from 1 ×107 Ω/sq. to 1 ×1012 Ω/sq. at 140°C as claimed.
Regarding claim 2, claim 4 of the ‘396 application recites this limitation.
Regarding claim 4, claim 4 of the ‘396 application recites this limitation.
Regarding claim 5, claim 6 of the ‘396 application recites this limitation.
Regarding claim 6, claim 7 of the ‘396 application recites this limitation.
Regarding claim 7, claim 8 of the ‘396 application recites this limitation.
Claim Objections
Claim 7 is objected to because of the following informalities. Appropriate correction is required.
Regarding claim 7, the claim was amended in a way which introduced a grammatical error. It is proper to write “…wherein a light transmittance of the conductive adhesive film is 85% or less at at least one wavelength…”. However, the present claim recites “…is 85% or less at least one wavelength…” which is missing a word.
If applicant wishes to avoid the use of the grammatically correct, though awkward sounding “at at” in favor of another transitional word, the Examiner suggests “is 85% or less [[at]] for at least one wavelength…”.
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over Teshiba (U.S. Pub. 2021/0277288).
Regarding claim 1, Teshiba discloses an adhesive tape used for semiconductor wafer processing which includes a base material layer 30, intermediate layer 20, and a pressure-sensitive adhesive layer 10 in order, see p. 1, [0016] and the FIGURE. The base layer has an antistatic function having a surface resistance of from 1 ×102 Ω/sq. to 1 ×1013 Ω/sq., and more preferably from 1 ×107 Ω/sq. to 1 ×1011 Ω/sq., see p. 2, [0022]. The Examiner has considered this preferable range to teach the claimed range of from 1 ×107 Ω/sq. to 1 ×1012 Ω/sq. with sufficient specificity as to anticipate the claim. Alternately, as set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Teshiba does not specify the measurement temperature of the surface resistance value measurement in the claims, and thus the Examiner has presumed that this value is measured at room temperature (approximately 23°C). The present application describes that the surface resistivity of the conductive adhesive film opposite to the adhesive layer side at 140°C is in the range of from 1 ×107 Ω/sq. to 1 ×1012 Ω/sq. and most preferably from 1 ×107 Ω/sq. to 1 ×1010 Ω/sq., and that the surface resistivity at 23°C of this same side is also from 1 ×107 Ω/sq. to 1 ×1012 Ω/sq. and most preferably from 1 ×107 Ω/sq. to 1 ×1010 Ω/sq., see paragraphs [0040-0043] of the published specification.
Thus it is reasonable to expect the adhesive tape of Teshiba which has a surface resistivity in the range of from 1 ×107 Ω/sq. to 1 ×1011 Ω/sq. at 23°C to also exhibit a surface resistivity in the range of from 1 ×107 Ω/sq. to 1 ×1011 Ω/sq. at 140°C as claimed.
Regarding claim 2, Teshiba teaches that the base film may have an antistatic layer applied to it, such as a composition including an antistatic component of a conductive polymer or antistatic agent. See p. 2, [0021]. Such a layer reads on the claimed conductive layer. The intermediate layer is preferably laminated onto a surface on which the antistatic layer is formed, see id., thus the structure has the form of base material layer 30, antistatic layer, intermediate layer 20, and a pressure-sensitive adhesive layer 10 in order. In this case, the intermediate layer reads on the claimed base material layer, and the adhesive layer and antistatic layer (reading on the conductive layer) are positioned on opposite sides of the intermediate layer.
Regarding claim 3, the conductive layer may be formed of a conductive polymer material, see p. 2, [0021].
Regarding claim 4, in the structure shown in the FIGURE, which includes a base material layer 30, intermediate layer 20, and a pressure-sensitive adhesive layer 10 in order, see p. 1, [0016], there is no conductive layer present on a surface of the base material on the adhesive layer side. Note that the intermediate layer is not described to be electrically conductive, see p. 5-6, [0050]-[0062].
See also Example 7 described at p. 8, [0083] and in Table 1 on p. 9 which does not include an antistatic layer on the base material.
Regarding claim 5, Teshiba teaches that the base layer has an antistatic function having a surface resistance of preferably from 1 ×107 Ω/sq. to 1 ×1011 Ω/sq., see p. 2, [0022]. This overlaps the claimed range. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 6, Teshiba teaches that the base material has an elastic modulus of 50 MPa to 6,000 MPa, more preferably 70 to 5,000 MPa. This is 0.07 to 5 GPa and overlaps the claimed range. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Additionally, when the intermediate layer reads on the claimed base layer as dessvibed above in regards to claim 2, Teshiba teaches that the intermediate layer has an elastic modulus of from 0.01 to 10.0 MPa (0.00001 to 0.01 GPa), see p. 6, [0062]. This is within the claimed range of 3.5 GPa or less.
Teshiba measures the elastic modulus at room temperature, approximately 23 °C. See p. 9, [0088].
Regarding claim 7, Teshiba does not specify the optical transmittance of visible light through the conductive adhesive film. However, Teshiba teaches that a variety of additives including pigments and dyes may be included in the adhesive tape, see p. 4, [0041] and p. 6, [0060]. It would have been obvious to have included sufficient pigment or dye in the compositions of the layers to achieve a desired level of light transmittance or opacity in the visible wavelength range.
Regarding claim 8, Teshiba teaches that the base material layer may be formed of polyethylene, polypropylene, or other polyolefin resins, see p. 2, [0019].
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
JP 2011-210944 A describes an adhesive film including a base film with an antistatic layer on at least one side of the base layer, and an adhesive layer. The surface resistivity of the base film is less than 1 ×1012 Ω/sq. and preferably less than 1 ×109 Ω/sq. The reference is cumulative.
JP 2010-083081 A describes a conductive adhesive film including a base film with a conductive layer on at least one side of the base layer, and an adhesive layer. The surface resistivity of the base film is less than 1 ×108 Ω/sq. The reference is cumulative.
JP 2020-066663A describes a conductive adhesive film having a film substrate, a conductive layer, and an adhesive layer. The conductive film has a visible light transmittance of 65% or more as measured by JIS K7136.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
