`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
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`16/040,617
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`07/20/2018
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`Takatoshi IS HIKAWA
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`PIPMM-5987l
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`5620
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`759°
`52°“
`PEARNE & GORDON LLP
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`“”2””
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`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
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`STEVENSONANDRE C
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`2816
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`11/12/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patdoeket@pearne.eom
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`PTOL-90A (Rev. 04/07)
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`
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`0,7709 A0170” Summary
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`Application No.
`16/040,617
`Examiner
`ANDRE c STEVENSON
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`Applicant(s)
`ISHIKAWA etal.
`Art Unit
`AIA (FITF) Status
`2816
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 09/10/19.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 07/20/19 is/are: a). accepted or b)D objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)[:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:I All
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`b)D Some**
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`c)D None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20191106b
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`
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`Application/Control Number: 16/040,617
`Art Unit: 2816
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Response to Arguments
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`Applicant’s arguments, with respect to the rejection(s) of claim(s) #1 under 102 (a)(2)
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`with respect to the amendment being made to the existing claim language have been fully
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`considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon
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`further consideration, a new ground(s) of rejection is made in view of Sonobe et al.,
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`2007/0023777 A1, and will be shown below.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`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.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 US. l, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`Application/Control Number: 16/040,617
`Art Unit: 2816
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`Page 3
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`Claims #1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Urushima
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`(U.S. Pub. No. 2002/0132463) and further in view of Sonobe et al., (US. Pub. No.
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`2007/0023777 A1), hereinafter referred to as “Sonnbe”.
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`Urushima shows, with respect to claim #1, a method of manufacturing a semiconductor
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`device, comprising: a step of preparing a semiconductor element including a functional surface
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`(fig. #4b, item 12) on which a bump (fig. #4b, item 21) for external connection is formed
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`(paragraph 0183) an adhesive layer (fig. #4c, item 22) of a film shape that covers the functional
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`surface and the bump (fig. #4c, item 21), the adhesive layer including a flux (fig. #5B, item 28)
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`component (paragraph 0204) and a step of positioning the semiconductor element in a state in
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`which the bump (fig. #4D, item 21) and an electrode face (fig. 4A, item 24) each other above a
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`board including the electrode to which the bump is bonded (paragraph 0192) a step of
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`activating the flux component of a portion of the adhesive layer sandwiched between the bump
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`and the electrode by pressing the adhesive layer against the electrode and applying ultrasonic
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`vibration to the semiconductor element fourth step of pushing out the flux component from the
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`portion of the adhesive layer by pressing the semiconductor element while applying the
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`ultrasonic vibration to the board (paragraph 0186-0187), and bringing the bump into contact
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`with the electrode and a step of bonding the bump to the electrode by continuing the application
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`of the ultrasonic vibration and the pressing of the semiconductor element (paragraph 0191-
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`0193).
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`Application/Control Number: 16/040,617
`Art Unit: 2816
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`Page 4
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`Urushima substantially shows the claimed invention as shown in the rejection above.
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`Urushima fails to show, with respect to claim #1, a method step of activating the flux
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`component of a portion of the adhesive layer sandwiched between the top surface of the bump
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`and the electrode by pressing the adhesive layer against the electrode and applying ultrasonic
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`vibration to the semiconductor element while the bump and the electrode are not in contact with
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`each other; following the third step, a fourth step of pushing out the flux component from the
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`portion of the adhesive layer by pressing the semiconductor element while applying the
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`ultrasonic vibration to the board, and bringing the bump into contact with the electrode.
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`Sonobe teaches, with respect to claim #1, a method wherein a light emitting element is in
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`contact with a resin layer (fig. #6c, item 39; paragraph 0269) so that the positive and negative
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`electrodes (fig. #6c, item 37; paragraph 0269) are mounted across from bump structures (fig.
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`#6c, item 36; paragraph 0270) and applying ultrasonic waves while pressing the bump
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`structures into the resin and eventually making contact with the electrodes (paragraph 0271).
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`It would have been obvious to one having ordinary skill in the art at the time the
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`invention was made, with respect to claim #1, a method step of activating the flux component of
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`a portion of the adhesive layer sandwiched between the top surface of the bump and the electrode
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`by pressing the adhesive layer against the electrode and applying ultrasonic vibration to the
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`semiconductor element while the bump and the electrode are not in contact with each other;
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`following the third step, a fourth step of pushing out the flux component from the portion of the
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`adhesive layer by pressing the semiconductor element while applying the ultrasonic vibration to
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`the board, and bringing the bump into contact with the electrode, into the method of Urushima,
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`
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`Application/Control Number: 16/040,617
`Art Unit: 2816
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`Page 5
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`with the motivation that if this is done, the light emitting element will not be pushed back away
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`from the support substrate by the resin and the strength of the joint between the conductive
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`wiring and the electrodes of the light emitting element will be kept constant, thus, there will be
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`no interruption of current flowing between the conductive wiring and the electrodes of the light
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`emitting element, meaning that a light emitting device of higher reliability can be obtained, as
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`taught by Sonobe.
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`Urushima shows, with respect to claim #3, a method comprising bumps (fig. #5a, item
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`21) are solder to plated pads (fig. #5a, item 29) on the surface of copper wiring (which acts as
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`an electrode; fig. #5a, item 24) (paragraph 0206-0207).
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`//
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`Claim #2 are rejected under 35 U.S.C. 103 as being unpatentable over Urushima (U.S.
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`Pub. No. 2002/0132463)" as modified by Sonobe et al., (US. Pub. No. 2007/0023777 A1),
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`hereinafter referred to as “Sonnbe”, with respect to claim #1 and in view of Takamoto et al.,
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`(US. Pub. No. 2016/0351432 Al), hereinafter referred to as “Takamoto”.
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`Urushima as modified by Sonobe substantially shows the claimed invention as shown in
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`the rejection above.
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`
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`Application/Control Number: 16/040,617
`Art Unit: 2816
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`Page 6
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`Urushima as modified by Sonobe fails to show, with respect to claim #2, a method
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`wherein the adhesive layer includes a main agent made of a resin, a thermoplastic agent, a curing
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`agent for curing the resin of the main agent, a curing accelerator for accelerating curing of the
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`resin of the main agent, an organic acid, and a filler.
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`Takamoto shows, with respect to claim #2, a method wherein the adhesive layer includes
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`a main agent (fig. #2c, item 2; paragraph 0037) made of a resin, a thermoplastic agent
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`(paragraph 0038), a curing agent for curing the resin of the main agent (phenol resin;
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`paragraph 0041), a curing accelerator for accelerating curing of the resin of the main agent,
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`an organic acid (Imidazole; paragraph 0037, 0047), and a filler (silicone resin, paragraph
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`0041) (fig. #5B, item 28).
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`It would have been obvious to one having ordinary skill in the art at the time the
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`invention was made, with respect to claim #2, a method wherein the adhesive layer includes a
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`main agent made of a resin, a thermoplastic agent, a curing agent for curing the resin of the main
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`agent, a curing accelerator for accelerating curing of the resin of the main agent, an organic acid,
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`and a filler, into the method of Urushima as modified by Sonobe, with the motivation this lowers
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`the necessary curing temperature, as taught by Takamoto.
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`The rejections above rely on the references for all the teachings expressed in the text of
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`the references and/or one of ordinary skill in the art would have reasonably understood or
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`implied from the texts of the references. To emphasize certain aspects of the prior art, only
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`specific portions of the texts have been pointed out. Each reference as a whole should be
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`
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`Application/Control Number: 16/040,617
`Art Unit: 2816
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`Page 7
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`reviewed in responding to the rejection, since other sections of the same reference and/or various
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`combinations of the cited references may be relied on in future rejections in view of
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`amendments .
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`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR l.l36(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE—MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR l.l36(a) will be calculated from the mailing date of the advisory action. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the mailing
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`date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Andre’ Stevenson whose telephone number is (571) 272 1683.
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`The examiner can normally be reached on Monday through Friday from 7:30 am to 4:30 pm. If
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`attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Zandra
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`Smith can be reached on 571—272 2429. The fax phone number for the organization where this
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`application or proceeding is assigned is 571—273—8300. Information regarding the status of an
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`Application/Control Number: 16/040,617
`Art Unit: 2816
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`Page 8
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`application may be obtained from the Patent Application Information Retrieval (PAIR) system.
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`Status information for published applications may be obtained from either Private PAIR or
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`Public PAIR. Status information for unpublished applications is available through Private PAIR
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`only. For more information about the PAIR system, see http://pair—direct.uspto.gov. Should you
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`have questions on access to the Private PAIR system, contact the Electronic Business Center
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`(EBC) at 866—217—9197 (toll—free). If you would like assistance from a USPTO Customer Service
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`Representative or access to the automated information system, call 800—786—9199 (IN USA OR
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`CANADA) or 57 1—272— 1000.
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`/Andre’ Stevenson Sr./
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`Art Unit 2816
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`11/06/19
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`/ZANDRA V SMITH/
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`Supervisory Patent Examiner, Art Unit 2816
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`