DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 11/26/2025 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1-6 and 8 are examined on the merits in this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 and 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a backing tape that contains migratable components therein”. While there is support for a backing tape having upto 100 parts per million migratable components therein (see paragraph 0018 of present specification), there is no support for broad disclosure of a backing tape that contains migratable components in any amounts. This rejection affects all the dependent claims.
Claim 5 recites “said backing tape includes at least some of said migratable components therein”. While there is support for a backing tape having upto 100 parts per million migratable components therein (see paragraph 0018 of present specification), there is no support for broad disclosure of a backing tape that contains some migratable components in any amounts. This rejection affects all the dependent claims.
Claim 8 recites “a backing tape that includes migratable components therein”. While there is support for a backing tape having upto 100 parts per million migratable components therein (see paragraph 0018 of present specification), there is no support for broad disclosure of a backing tape that contains migratable components in any amounts.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5-6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites that the backing tape includes “at least some” of said migratable components. The scope of the claim is confusing given that it is not clear what is meant by “at least some” or how much migratable component must be in the backing layer to be considered “some”.
Claim 6 recites “the backing tape include migratable components there in”. Given that claim 5 already recites backing tape includes at least some of said migratable components therein, it is not clear what, if any difference, there is between claim 5 and claim 6.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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 1-4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Torinari et al. (US 2014/0106133 A1 cited in IDS) in view of Duffy et al. (WO 2008/057931 A1 cited in IDS), Yoko et al. (US 2014/0242757 A1 cited in IDS) and Scheie et al. (US 7,750,086 B2).
Regarding claims 1-4 and 8, Torinari et al. disclose a laminate 10 comprising a support 12 (backing tape), a pressure-sensitive adhesive layer, a resin sheet 14 (underfill film or second layer) and a release layer 16 (first layer) (see Figure 1(a) and paragraphs 0017, 0029). The support (backing tape) can be polypropylene copolymer, i.e. polyolefin (see paragraph 0024). The pressure-sensitive adhesive can be a radiation curing-type pressure sensitive adhesive (see paragraph 0029). The resin sheet (underfill film or second layer) is an underfill sheet (see paragraph 0030). The resin sheet can comprise thermosetting resin or thermoplastic resin, and various additives as necessary (see paragraph 0030). The pressure-sensitive adhesive layer is in contacting relationship with the resin sheet (second layer or underfill film). The pressure-sensitive adhesive layer and support 12 together read on a third layer or a cover film.
Torinari et al. do not disclose the resin sheet (underfill film or second layer) as presently claimed. Torinari et al. do not disclose the backing tape contains migratable components therein.
Duffy et al. disclose an underfill material comprising a curable composition comprising a curable resin, a thermally treated silica filler and an initiator (migratable component) (see Abstract and page 16, claim 1). The curable resin can comprise a combination of epoxy resin (separate epoxy resin), maleimide resin (separate maleimide resin) and acrylate resin (see page 16, claim 2 and paragraph 0052). The underfill material provides improved flow behavior, reduction in CTE, and enhancement of modulus, leading to reduced warpage (see Abstract). The curable composition is heat curable (see paragraph 0065).
In light of motivation for using the underfill material disclosed by Duffy et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the underfill material of Duffy et al. to prepare resin sheet (underfill film or second layer) in Torinari et al. in order to provide improved flow behavior, reduction in CTE, and enhancement of modulus, leading to reduced warpage, and thereby arrive at the claimed invention.
Torinari et al. in view of Duffy et al. do not disclose the resin sheet (underfill or second layer) comprising a separate binder resin. Torinari et al. in view of Duffy et al. do not disclose the resin sheet (underfill or second layer) comprising initiator in amount as presently claimed. Torinari et al. in view of Duffy et al. do not disclose the backing tape contains migratable components therein.
Yoko et al. disclose a underfill sealant comprising a polymer having a polar group such as styrene-butadiene-styrene copolymer (polymer comprising vinyl aromatic monomer) or epoxy group-containing (meth)acylate (polymer comprising epoxy monomer) (see Abstract and paragraphs 0038, 0040, 0043 and 0087). The polymer having a polar group has a function to increase a viscosity and to assist supporting a film shape (see paragraph 0039).
In light of motivation for using a polymer having a polar group such as styrene-butadiene-styrene copolymer or epoxy group-containing (meth)acylate disclosed by Yoko et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a polymer having a polar group such as styrene-butadiene-styrene copolymer or epoxy group-containing (meth)acylate of Yoko et al. in the resin sheet (underfill or second layer) of Torinari et al. in view of Duffy et al. in order to increase a viscosity and to assist supporting a film shape, and thereby arrive at the claimed invention.
Further, Yoko et al. disclose the underfill sealant comprises a thermal radical initiator (see paragraph 0058). The amount of thermal radical initiator is 0.01 to 10 wt% (100 to 100,000 ppm) in the composition in order to prevent problem of instability in applying the composition or a prolongation of curing time (see paragraph 0058).
In light of motivation for using 0.01 to 10 wt% (100 to 100,000 ppm) of thermal radical initiator in underfill sealant disclosed by Yoko et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use 0.01 to 10 wt% (100 to 100,000 ppm) of thermal radical initiator in the resin sheet (underfill or second layer) of Torinari et al. in view of Duffy et al. and Yoko et al. in order to prevent problem of instability in applying the composition or a prolongation of curing time, and thereby arrive at the claimed invention.
Torinari et al. in view of Duffy et al. and Yoko et al. do not disclose the backing tape contains migratable components therein.
Scheie et al. disclose a modified polypropylene-ethylene copolymer resin that comprises a polypropylene-ethylene copolymer resin in combination with 0.5 to 500 ppm of free radical initiator (migratable component) (see col. 2, lines 11-25). The modified polypropylene-ethylene copolymer resin has improved melt strength, improved melt elasticity and improved processability (see col. 1, lines 6-11 and see col. 2, lines 47-49).
In light of motivation for using a modified polypropylene-ethylene copolymer resin that comprises a polypropylene-ethylene copolymer resin in combination with 0.5 to 500 ppm of free radical initiator disclosed by Scheie et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a modified polypropylene-ethylene copolymer resin that comprises a polypropylene-ethylene copolymer resin in combination with 0.5 to 500 ppm of free radical initiator as the polypropylene copolymer in the support (backing tape of Torinari et al. in view of Duffy et al. and Yoko et al. in order to improve melt strength, improve melt elasticity and improve processability, and thereby arrive at the claimed invention.
Accordingly, Torinari et al. in view of Duffy et al., Yoko et al. and Scheie et al. disclose the laminate (article) comprising the support (backing tape), a pressure-sensitive adhesive layer, a resin sheet (underfill film or second layer) and a release layer (first layer) as set forth above. The support and the pressure-sensitive adhesive layer together read on a cover film or a third layer. As noted above, Torinari et al. in view of Duffy et al., Yoko et al. and Scheie et al. disclose the support (backing tape) comprises 0.5 to 500 ppm of free radical initiator (migratable component) and the resin sheet (underfill film or second layer) comprises 100 to 100,000 ppm of thermal radical initiator. Given that that the pressure-sensitive adhesive layer do not contain migratable component and backing tape contains migratable component in amount of 0.5 to 500 ppm, the third layer made of pressure-sensitive adhesive layer and backing tape contains migratable component in amount of 0.5 to 500 ppm. That is, any one of the cover film (third layer) or underfill film (second layer) comprises migratable components in amount that falls in the range as presently claimed. Further, the release layer (first layer) do not contain migratable components. That is, not all remaining layers have migratable components included therein.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Torinari et al. (US 2014/0106133 A1 cited in IDS) in view of Duffy et al. (WO 2008/057931 A1 cited in IDS), Yoko et al. (US 2014/0242757 A1 cited in IDS) and Scheie et al. (US 7,750,086 B2).
Regarding claim 5, Torinari et al. disclose a laminate 10 comprising a support 12 (backing tape), a pressure-sensitive adhesive layer, a resin sheet 14 (underfill film or second layer) and a release layer 16 (first layer) (see Figure 1(a) and paragraphs 0017, 0029). The support (backing tape) can be polypropylene copolymer, i.e. polyolefin (see paragraph 0024). The pressure-sensitive adhesive can be a radiation curing-type pressure sensitive adhesive (see paragraph 0029). The resin sheet (underfill film or second layer) is an underfill sheet (see paragraph 0030). The resin sheet can comprise thermosetting resin or thermoplastic resin, and various additives as necessary (see paragraph 0030). The pressure-sensitive adhesive layer is in contacting relationship with the resin sheet (second layer or underfill film). The pressure-sensitive adhesive layer and support 12 together read on a third layer or a cover film.
Torinari et al. do not disclose the resin sheet (underfill film or second layer) as presently claimed. Torinari et al. do not disclose the third layer comprising amount of migratable components as presently claimed. Torinari et al. do not disclose the backing tape contains migratable components therein.
Duffy et al. disclose an underfill material comprising a curable composition comprising a curable resin, a thermally treated silica filler and an initiator (migratable component) (see Abstract and page 16, claim 1). The curable resin can comprise a combination of epoxy resin (separate epoxy resin), maleimide resin (separate maleimide resin) and acrylate resin (see page 16, claim 2 and paragraph 0052). The underfill material provides improved flow behavior, reduction in CTE, and enhancement of modulus, leading to reduced warpage (see Abstract). The curable composition is heat curable (see paragraph 0065).
In light of motivation for using the underfill material disclosed by Duffy et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the underfill material of Duffy et al. to prepare resin sheet (underfill film or second layer) in Torinari et al. in order to provide improved flow behavior, reduction in CTE, and enhancement of modulus, leading to reduced warpage, and thereby arrive at the claimed invention.
Torinari et al. in view of Duffy et al. do not disclose the resin sheet (underfill or second layer) comprising a separate binder resin. Torinari et al. in view of Duffy et al. do not disclose the resin sheet (underfill or second layer) comprising initiator in amount as presently claimed. Torinari et al. in view of Duffy et al. do not disclose the third layer comprising amount of migratable components as presently claimed. Torinari et al. in view of Duffy et al. do not disclose the backing tape contains migratable components therein.
Yoko et al. disclose a underfill sealant comprising a polymer having a polar group such as styrene-butadiene-styrene copolymer (polymer comprising vinyl aromatic monomer) or epoxy group-containing (meth)acylate (polymer comprising epoxy monomer) (see Abstract and paragraphs 0038, 0040, 0043 and 0087). The polymer having a polar group has a function to increase a viscosity and to assist supporting a film shape (see paragraph 0039).
In light of motivation for using a polymer having a polar group such as styrene-butadiene-styrene copolymer or epoxy group-containing (meth)acylate disclosed by Yoko et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a polymer having a polar group such as styrene-butadiene-styrene copolymer or epoxy group-containing (meth)acylate of Yoko et al. in the resin sheet (underfill or second layer) of Torinari et al. in view of Duffy et al. in order to increase a viscosity and to assist supporting a film shape, and thereby arrive at the claimed invention.
Further, Yoko et al. disclose the underfill sealant comprises a thermal radical initiator (see paragraph 0058). The amount of thermal radical initiator is 0.01 to 10 wt% (100 to 100,000 ppm) in the composition in order to prevent problem of instability in applying the composition or a prolongation of curing time (see paragraph 0058).
In light of motivation for using 0.01 to 10 wt% (100 to 100,000 ppm) of thermal radical initiator in underfill sealant disclosed by Yoko et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use 0.01 to 10 wt% (100 to 100,000 ppm) of thermal radical initiator in the resin sheet (underfill or second layer) of Torinari et al. in view of Duffy et al. and Yoko et al. in order to prevent problem of instability in applying the composition or a prolongation of curing time, and thereby arrive at the claimed invention.
Torinari et al. in view of Duffy et al. and Yoko et al. do not disclose the third layer comprising amount of migratable components as presently claimed. Torinari et al. in view of Duffy et al. and Yoko et al. do not disclose the backing tape contains migratable components therein.
Scheie et al. disclose a modified polypropylene-ethylene copolymer resin that comprises a polypropylene-ethylene copolymer resin in combination with 0.5 to 500 ppm of free radical initiator (migratable component) (see col. 2, lines 11-25). The modified polypropylene-ethylene copolymer resin has improved melt strength, improved melt elasticity and improved processability (see col. 1, lines 6-11 and see col. 2, lines 47-49).
In light of motivation for using a modified polypropylene-ethylene copolymer resin that comprises a polypropylene-ethylene copolymer resin in combination with 0.5 to 500 ppm of free radical initiator disclosed by Scheie et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a modified polypropylene-ethylene copolymer resin that comprises a polypropylene-ethylene copolymer resin in combination with 0.5 to 500 ppm of free radical initiator as the polypropylene copolymer in the support (backing tape of Torinari et al. in view of Duffy et al. and Yoko et al. in order to improve melt strength, improve melt elasticity and improve processability, and thereby arrive at the claimed invention.
Accordingly, Torinari et al. in view of Duffy et al., Yoko et al. and Scheie et al. disclose the laminate (article) comprising the support (backing tape), a pressure-sensitive adhesive layer, a resin sheet (underfill film or second layer) and a release layer (first layer) as set forth above. The support and the pressure-sensitive adhesive layer together read on a cover film or a third layer. As noted above, Torinari et al. in view of Duffy et al., Yoko et al. and Scheie et al. disclose the support (backing tape) comprises 0.5 to 500 ppm of free radical initiator (migratable component) and the resin sheet (underfill film or second layer) comprises 100 to 100,000 ppm of thermal radical initiator. Given that that the pressure-sensitive adhesive layer does not contain migratable component and backing tape contains migratable component in amount of 0.5 to 500 ppm, the third layer made of pressure-sensitive adhesive layer and backing tape contains migratable component in amount of 0.5 to 500 ppm.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Torinari et al. (US 2014/0106133 A1 cited in IDS) in view of Duffy et al. (WO 2008/057931 A1 cited in IDS), Yoko et al. (US 2014/0242757 A1 cited in IDS) and Scheie et al. (US 7,750,086 B2) as applied to claim 5 above, further in view of Hashimoto et al. (US 2005/0191456 A1 cited in IDS).
Regarding claim 6, Torinari et al. in view of Duffy et al., Yoko et al. and Scheie et al. disclose the laminate (article) comprising the support (backing tape), a pressure-sensitive adhesive layer, a resin sheet (underfill film or second layer) and a release layer (first layer) as set forth above.
Torinari et al. in view of Duffy et al., Yoko et al. and Scheie et al. do not disclose the pressure-sensitive adhesive layer comprising migratable components as presently claimed.
Hashimoto et al. disclose a pressure sensitive adhesive layer comprising radical polymerization inhibitor (migratable component) in amount of less than 800 ppm, i.e. less than 0.08 wt% (see paragraph 0016). If the weight of the radical polymerization inhibitor is 1000 ppm or more, the polymerization inhibition action is extreme and radiation polymerization reaction is impeded (see paragraph 0016). If the weight is too small, stability tends to drop at high temperature or in long-term storage (see paragraph 0016).
In light of motivation for using a pressure sensitive adhesive layer comprising radical polymerization inhibitor (migratable component) in amount of less than 800 ppm (i.e. less than 0.08 wt%) disclosed by Hashimoto et al. as described above, it therefore would have been obvious to one of ordinary skill in the art to use polymerization inhibitor (migratable component) in amount of less than 800 ppm in the pressure sensitive adhesive layer in Torinari et al. in view of Duffy et al., Yoko et al. and Scheie et al. in order to prevent polymerization inhibition action and impede of radiation polymerization reaction as well as to prevent stability to drop at high temperature or in long-term storage, and thereby arrive at the claimed invention.
Accordingly, Torinari et al. in view of Duffy et al., Yoko et al., Scheie et al. and Hashimoto et al. disclose the laminate (article) comprising the support (backing tape), a pressure-sensitive adhesive layer, a resin sheet (underfill film or second layer) and a release layer (first layer) as set forth above. The support and the pressure-sensitive adhesive layer together read on a cover film or a third layer. As noted above, Torinari et al. in view of Duffy et al., Yoko et al. and Scheie et al. disclose the support (backing tape) comprises 0.5 to 500 ppm of free radical initiator (migratable component) and the pressure sensitive adhesive layer comprises less than 800 ppm of radical polymerization inhibitor (migratable component). Therefore, the third layer made of pressure-sensitive adhesive layer and backing tape contain migratable component in amount that will overlap with presently claimed amount (0.1 to 40 ppm).
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments except as set forth below are moot in light of new grounds of rejections.
As noted by the Office, Yoko discloses the use of the "polymer having a polar group" for increasing viscosity. Yoko also teaches that this functionality is needed in this particular situation because the underfill sealant material of that reference also includes "polymerizable monomers" such that the underfill sealant material is liquid in the uncured state, and hence the "polymer having a polar group" makes the liquid more manageable by increasing its viscosity (see Yoko at paragraph [0039]). While Yoko discloses a specific context in which the disclosed "polymer having a polar group" is needed, the Office has not demonstrated that either the underfill material of Duffy nor the resin sheet 14 of Torinari are liquid or otherwise in need of enhanced viscosity. The Office has not alleged, and nor does the evidence of record indicate that it would be the case, that those of ordinary skill in the art would have believed from Yoko that there is any other specific reason to have used the disclosed "polymers having a polar group". Accordingly, the evidence of record does not demonstrate that those of ordinary skill would have had any particular reason specifically to use the "polymer having a polar group" in the underfill material of Duffy or in resin sheet 14 of Torinari.
As set forth above, Torinari et al. disclose the laminate (article) comprising the resin sheet (underfill film) used as an underfill sheet (see paragraph 0030). Further, Torinari et al. disclose the resin sheet is formed by applying a resin composition solution, i.e. liquid (see paragraph 0040). Yoko disclose an underfill sealant comprising a polymer having a polar group that functions to increase a viscosity and to assist supporting a film shape. Further, both Torinari et al. and Yoko are drawn to underfill film. Therefore, it would have been obvious to one of the ordinary skill in the art to use polymer having a polar group of Yoko et al. in the resin sheet (underfill sheet) of Torinari et al. in order to increase a viscosity and to assist supporting a film shape of the resin sheet, and thereby arrive at the claimed invention.
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 KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787