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 without traverse of claims 1 and 3-8 in the reply filed on 8 July 2026 is acknowledged.
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, 3-5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication No. US 2021/0277288 (hereinafter “Teshiba”).Regarding claim 1 Teshiba teaches a pressure-sensitive adhesive tape (conductive adhesive film) 100 comprising a pressure sensitive adhesive layer (adhesive layer) 10 located on an adherend side, and an intermediate layer (base material layer) 20 (abstract; paragraphs [0016] and [0025]; and Figure). Teshiba teaches the pressure-sensitive adhesive tape (conductive adhesive film) 100 also comprises a base material 30 being located on a side opposite the pressure sensitive adhesive layer (adhesive layer) 10 (Figure and paragraph [0016]). Teshiba teaches the base material 30 has a surface resistance value (surface resistance value of the conductive adhesive film on a side opposite to the adhesive layer side) of 1.0x107 Ω/☐ to 1.0x1011 Ω/☐ (paragraph [0022]), which falls within the claimed range.Regarding claim 3
Claim 3 recites the intended use for the claimed conductive adhesive film, i.e. the conductive adhesive film is used for an electrostatic chuck as in claim 3. It is submitted that, according to MPEP § 2111.02, intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. Teshiba teaches the pressure-sensitive adhesive tape (conductive adhesive film) 100 is used in semiconductor wafer processing and exhibits desired anti-static properties (paragraphs [0021], [0022], [0064] and [0065]). Therefore, it is the examiner's position that the structure of the pressure-sensitive adhesive tape (conductive adhesive film) 100 of Teshiba is capable of performing the intended use, as claimed.Regarding claim 4 In addition, Teshiba teaches the base material (conductive layer) 30 comprises a conductive material and is located on a side opposite to a surface of the intermediate layer (base material layer) 20 on the pressure sensitive adhesive layer (adhesive layer) 10 side (paragraphs [0016] and [0021]; and Figure).Regarding claim 5 In addition, Teshiba teaches the base material (conductive layer) 30 comprises a conductive material and is not disposed on a surface of the intermediate layer (base material layer) 20 on the pressure sensitive adhesive layer (adhesive layer) 10 side (paragraphs [0016] and [0021]; and Figure).Regarding claim 7 In addition, Teshiba teaches an elastic modulus, disclosed as being measured under room temperature conditions, of the intermediate layer (base material layer) 20 ranges from 0.01 MPa to 10.0 MPa (paragraphs [0062] and [0088]), which falls within the claimed range.
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.
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 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Teshiba, as applied to claim 1 above.Regarding claim 6 The limitations for claim 1 have been set forth above. In addition, Teshiba teaches the base material 30 has a surface resistance value (surface resistance value of the conductive adhesive film on a side opposite to the adhesive layer side) of 1.0x107 Ω/☐ to 1.0x1011 Ω/☐ (paragraph [0022]), which overlaps the claimed range.Regarding claim 8 The limitations for claim 1 have been set forth above. In addition, Teshiba teaches the pressure-sensitive adhesive tape (conductive adhesive film) 100 includes a variety of additives, including pigments, dyes, etc. (paragraphs [0041] and [0060]), where the aforementioned pigments and/or dyes correspond to an additive which affects the light transmittance property of the formed pressure-sensitive adhesive tape (conductive adhesive film) 100. Teshiba does not explicitly teach a light transmittance of the pressure-sensitive adhesive tape (conductive adhesive film) 100 is 85% or less in at least one wavelength included in a wavelength range of from 380 nm to 780 nm. It would have been obvious to one having ordinary skill in the art at the time of the invention to determine an appropriate level of light transmittance for the pressure-sensitive adhesive tape (conductive adhesive film) using nothing more than routine experimentation to achieve the desired opacity of said pressure-sensitive adhesive tape (conductive adhesive film) when using the pigments and/or dyes disclosed by Teshiba. It has been held where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art unless such a range is shown to be critical. Please see MPEP § 2144.05(II)(A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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