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 .
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.
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.
Claim(s) 7, 9, 11, 13 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tagami et al (US 2017/0154801) in view of Hyun (WO 2019/028015), Tanabe et al (US 2018/0350650) and Sugo et al (EP 3133641).
With regards to claim 7, Tagami teaches a temporary adhesive material for substrate processing for temporary adhesion of a substrate to a support on a surface of the substrate opposite to a surface to be processed (Abstract), the material consisting of a first temporary adhesive layer and a second temporary adhesive layer (Figure 1 items 2, A and B):
The first temporary adhesive layer comprising a thermoplastic resin (Abstract, paragraph 38)
The second temporary adhesive layer that is distinct form the first temporary adhesive layer (Abstract, paragraph 38) and
One of the first temporary adhesive layer and the second temporary adhesive layer that is configured to be temporarily adhered to the support (Abstract)
Tagami fails to explicitly disclose the components of the first and second temporary adhesive layers.
Hyun discloses a silicone composition for temporary bonding adhesive (Abstract), in the same field of endeavor as Tagami, where Hyun discloses that the shear viscosity of the of at least one of the temporary adhesive layer is at least 0.1 to 300 Pa·s (paragraph 25). While the claim invention states that the viscosity is in the range of 200 to 10,000 Pa·s, it has been determined that when claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have one of the first and second temporary adhesive layer have a minimum viscosity of 200 Pa·s or higher and 10,000 Pa·s or lower within the range of 130°C to 250°C, as suggested by Hyun, in Tagami’s adhesive material. The rationale being that, as stated by Hyun, it is needed in order to achieve a useful level of physical properties in the elastomer prepared by curing the silicone composition (paragraph 19).
Tagami and Hyun fail to explicitly disclose further compositions of the first and second temporary adhesive layers.
Tanabe teaches a temporary adhesive material for substrate processing for temporary adhesion of a substrate to a support on a surface of the substrate opposite to a surface to be processed (Abstract), similar to Tagami and Hyun, where:
The temporary adhesive material contains 10 parts by mass or more and 100 parts by mass or less of a siloxane bond-containing polymer having a weight-average molecular weight of 3,000 or more and 700,000 or less as measured by GPC based on a total mass of 100 parts (paragraphs 25, 27 and 54)
The thermoplastic resin does not contain organopolysiloxane and is selected from at least one of and olefinic thermoplastic elastomer, a polybutadiene type thermoplastic elastomer, a styrenic thermoplastic elastomer, a styrene-butadiene type thermoplastic elastomer, a styrene-polyolefin type thermoplastic elastomer, and a hydrogenated polystyrene type elastomer (paragraph 46)
the siloxane bond-containing polymer containing:
organopolysiloxane having an alkenyl group in a molecule thereof (paragraph 71) and represented by the following formula (5) and/or formula (6)
R13(3-a)X1aSiO-(R13X1SiO)l-(R132SiO)l-SiR13(3-a)X1a (5)
R132(HO)SiO-(R13X1aSiO)l+2-(R132SiO)l-SiR132(OH) (6)
where each R13 independently represents a monovalent hydrocarbon group having 1 to 10 carbon atoms and no aliphatic unsaturated bond; each X1 independently represents a monovalent organic group having 2 to 10 carbon atoms and containing an alkenyl group; and “a” is an integer of 1 to 3; in the formula (5), 2a+1 is such a number that the content alkenyl group is 0.3 to 10 mol% per molecule; in the formula (6) l +2 is such a number that the content of alkenyl group is 0.3 to 10 mol% per molecule; “l” is 0 or a positive number of 500 or less and “r” isa positive number of 1 to 10,000 (paragraphs 74 and 75)
a platinum-based catalyst (paragraphs 71).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have used Tanabe’s adhesives in Tagami’s adhesive layer as modified by Hyun. The rationale being that, as stated by Tanabe, it provides a temporary adhesive which facilitates temporary adhesion between a substrate and a support, rapidly forms a temporary adhesive material layer on a substrate or a support, has excellent dimensional resistance and excellent resistance to a thermal process such as chemical vapor deposition and is easily separated to improve the productivity of thin wafers, and further provide a method for manufacturing a thin wafer using the same (paragraph 9).
Tagami, Hyun and Tanabe fail to explicitly disclose that the siloxane bond-containing polymer contains a trimethylsilyl terminated organohydrogenpolysiloxane.
Sugo discloses an identical temporary adhesive material for substrate processing as the one disclosed by Tagami, Hyun and Tanabe (Abstract), where Sugo teaches that the siloxane bond-containing polymer contains:
a. (p1) An organopolysiloxane having an alkenyl group in a molecule thereof (paragraph 38) and represented by the following formula (5) and/or formula (6)
R13(3-a)X1aSiO-(R13X1SiO)l-(R132SiO)l-SiR13(3-a)X1a (5)
R132(HO)SiO-(R13X1aSiO)l+2-(R132SiO)l-SiR132(OH) (6)
where each R13 independently represents a monovalent hydrocarbon group having 1 to 10 carbon atoms and no aliphatic unsaturated bond; each X1 independently represents a monovalent organic group having 2 to 10 carbon atoms and containing an alkenyl group; and “a” is an integer of 1 to 3; in the formula (5), 2a+1 is such a number that the content alkenyl group is 0.3 to 10 mol% per molecule; in the formula (6) l +2 is such a number that the content of alkenyl group is 0.3 to 10 mol% per molecule; “l” is 0 or a positive number of 500 or less and “r” isa positive number of 1 to 10,000 (paragraphs 39 – 43)
(p2) A trimethylsilyl terminated organohydrogenpolysiloxane having two or more silicon atom-bonded hydrogen atoms (Si-H groups) per molecule, in such an amount that a mole ratio of the Si-H group in the component (p2) to the alkenyl group in the component (p1) ranges from 1 to 8 (paragraphs 44 - 49)
(p3) a platinum-based catalyst (paragraph 50).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have a siloxane bond-containing polymer comprising the components (p1), (p2) and (p3) disclosed by Sugo in Tagami, Hyun and Tanabe’s temporary adhesive material. The rationale being that, as stated by Sugo, it provides an adhesive material that is improves in bonding to another material, is devoid of resin pyrolysis or resin flow at high temperature, and has heat resistance and it is applicable to a wide range of semiconductor film forming process. And it allows high thickness uniformity which prevents the generation of particles in the separation step, which improves the efficiency and allowing thin wafers to be readily manufactured (paragraph 19).
With regards to claim 9, the teachings of Tagami, Tanabe and Sugo are presented above. Additionally, Tanabe teaches that the siloxane bond-containing polymer has a repeating unit shown by the following general formula (1) (paragraph 54):
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116
647
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where R1 to R4 each independently represent the same or different monovalent hydrocarbon group having 1 to 8 carbon atoms (paragraph 54); “m” is an integer of 1 to 100 (paragraph 54); B is a positive number, A is 0 or a positive number, provided that A+B = 1 (paragraph 54); and X is a divalent organic group shown by the following general formula (2) (paragraph 54):
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131
422
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where Z represents a divalent organic group selected from any of (paragraph 54)
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119
536
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N represented 0 of 1 (paragraph 54); R5 and R6 each independently represents the same or different alkyl group or alkoxy group having 1 to 4 carbon atoms (paragraph 54); and “k” represents any 0,1 and 2 (paragraph 54).
12. With regards to claims 11 and 13, the teachings of Tagami, Hyun, Tanabe and Sugo are presented above. Additionally, Tanabe teaches that the siloxane bond-containing polymer has a repeating unit shown by the following general formula (3) (paragraph 56):
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115
661
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Where R7 to R10 each independently represent the same or different monovalent hydrocarbon group having 1 to 8 carbon atoms (paragraph 56); “n” is an integer of 1 to 100 (paragraph 61); D is a positive number (paragraph 56), C is 0 or a positive number (paragraph 56), provided that C + D = 1 (paragraph 56); and Y is a divalent organic group shown by the following general formula (4) (paragraph 56):
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192
493
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Where V represents a divalent organic group selected from any of (paragraph 56)
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136
499
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“p” represents 0 or 1 (paragraph 56); R11 and R12 each independently represent the same or different alkyl group or alkoxy group having 1 to 4 carbon atoms (paragraph 56); and “h” represents any of 0, 1, and 2 (paragraph 56).
With regards to claim 23, the teachings of Tagami, Hyun, Tanabe and Sugo are presented above. Additionally, Tanabe teaches a method for manufacturing a laminate by bonding a substrate and a support through a temporary adhesive material (paragraph 104) comprising:
Forming a temporary adhesive layer on a surface to be bonded of one or both of the substrate and the support by using the temporary adhesive material for substrate processing as stated above (paragraph 104 where the adhesive is modified by the art of Sugo as disclosed above)
Heating one or both of the substrate and the support at a temperature of 30°C or higher and 100°C or lower in advance (paragraph 111)
Keeping the substrate and the support in contact with each other through the temporary adhesive material under reduced pressure and applying a pressure of 1 MPa or lower (paragraph 113)
Heating the substrate at a temperature of 130°C or higher and 250°C or lower while maintaining the pressure (paragraph 115).
Response to Arguments
Due to Applicant’s amendment, Applicant’s arguments, filed January 9, 2026, with respect to the rejection(s) of claim(s) 7, 9, 11, 13 and 23 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hyun (WO 2019/028015) as presented above.
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 JOSHEL RIVERA whose telephone number is (571)270-7655. The examiner can normally be reached M-F 12pm - 8pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHEL RIVERA/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746