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 .
This Office Action is in response to Applicant’s response to a Nonfinal rejection filed April 28, 2026.
Claims 8-18 are withdrawn due to a previous restriction requirement filed January 17, 2025.
The 103 rejection of claim 19 is withdrawn due to Applicant’s cancellation.
Claims 1-2, 4-5, and 7 are pending.
This Action is FINAL.
Claim Analysis
Summary of Claim 1:
A temporary protective film comprising:
A support film; and
An adhesive layer provided on one or both surface of the support film,
Wherein the support film is a polyimide film, and
Wherein a thickness of the adhesive is 7 µm or less,
wherein the adhesive layer comprises:
at least one organic polymer selected from an aromatic polyamide, an aromatic polyester, an aromatic polyimide, an aromatic polyamideimide, an aromatic polyether, an aromatic polyetheramideimide, an aromatic polyetherimide, an aromatic polyesterimide, and an aromatic polyetherimide; and
a silane compound having a silyl group and a reactive group, wherein an amount of the silane compound is from 15% by mass and 35% by mass with respect to an amount of the organic polymer,
wherein the adhesive layer is configured to have a 90-degree peel strength, between the adhesive layer and a lead frame as well as a sealing layer, of 600 N/m or less at 1800C when the temporary protective film is attached to a lead frame having a die pad and an inner lead such that the adhesive layer comes into contact with the lead frame, a semiconductor element is mounted on a surface of the die pad, the surface being on the opposite side of the temporary protective film, and
wherein subsequently the semiconductor element, the lead frame, and the temporary protective film are heated for 3 hours at 240°C, and then a sealing layer that seals the semiconductor element while being in contact with the adhesive layer is formed,
and wherein when the adhesive laver is heated for 10 minutes at 120°C and then heated for 20 minutes at 240°C, a proportion of weight reduction caused by heating for 20 minutes at 240°C is less than 0.5% with respect to the weight of the adhesive layer before heating for 20 minutes at 240°C.
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.
Claims 1-2, 4-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Tateoka et al. (US 20090091012 A1).
Regarding claim 1, Tateoka et al. disclose an adhesive film in Example 5 wherein a support polyimide film is coated with an adhesive layer on one face of the support polyimide film, comprising 120 g of an aromatic polyetheramideimde and 3.6 g of a silane coupling agent SH6040, equivalent to 2.9 wt% of a silane compound, thereby reading on the support film and adhesive layer comprising the organic polymer and silane compound but lying outside the claimed range of the silane compound recited in the instant claim. Tateoka et al. also disclose the adhesive layer of Example 5 has a thickness of 8 µm, thereby lying outside the claimed range.
However, Tateoka et al. broadly teach the silane coupling agent is added in an amount of 0.1 to 50.0 parts by weight with respect to 100 parts by weight of the thermoplastic resin, equivalent to 0.1 to 50 wt% with respect to an amount of the organic polymer and thereby overlapping the claimed range. Additionally, Tateoka et al. broadly teach the thickness of the adhesive layer is 1 to 75 µm [0021], thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to select an amount within the range taught by Tateoka et al.
Tateoka et al. is silent on the peel strength as recited in the instant claim.
However, peel strength is dependent on the components present. Tateoka et al. teach a substantially identical protective film. Therefore, one of ordinary skill in the art would have considered the peel strength to be expected.
Tateoka et al. is silent on the weight reduction as recited in the instant claim.
However, Tateoka et al. teach the adhesion film is bound to one face of the organic film-coated copper lead from under the conditions of 250°C , a pressure of 8 MPa, and a period of 10 seconds [0128], which is substantially identical to the conditions for Example 3 of the instant specification (See Table 2). Therefore, Tateoka et al. teach a substantially identical adhesive layer. In view of the substantially identical tire of Tateoka et al., the adhesive layer of Tateoka et al. will possess the claimed properties because weight reduction is an inherent property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 2, Tateoka et al. teach the adhesive film has a thickness of 1 to 75 µm [0021] as recited in the rejection for claim 1 above, thereby overlapping the claimed range.
Regarding claim 4, Tateoka et al. disclose in Example 5 a silane coupling agent SH 6040 manufactured by Shin-Etsu Chemical Co. is added to the aromatic polyether amideimide to form the adhesive layer [0125-0127].
Tateoka et al. is silent on the exact formula of the silane coupling agent.
However, Tateoka et al. teach examples of the silane coupling agent includes 3-glycidoxypropyltrimethoxysilane [0062], thereby lying within the claimed formula copied below:
PNG
media_image1.png
105
268
media_image1.png
Greyscale
Wherein R1, R2, and R3 are alkoxy groups having one carbon, and R4 is an alkylene group having 3 carbon atoms . Therefore, it would have been obvious to one of ordinary skill in the art to use the silane compound taught by Tateoka et al. since Tateoka et al. teach both compounds can be used as a coupling agent.
Regarding claim 5, Tateoka et al. is silent on the weight reduction at 240° as recited in the instant claim. However, weight reduction is dependent on the components present. Tateoka et al. teach a substantially identical protective film. Therefore, one of ordinary skill in the art would have considered the weight reduction and peel strength to be expected.
Regarding claim 7, Tateoka et al. disclose in Example 5 an adhesion film was formed as shown in Fig. 2 below:
PNG
media_image2.png
270
1172
media_image2.png
Greyscale
Wherein 12 is the adhesive layer, 11 is the support film, and 13 is a nonadhesive resin layer [0127], and thereby reading on the instant claim.
Response to Arguments
Applicant's arguments filed April 28, 2026 have been fully considered but they are not persuasive.
The Applicant states “Although Tateoka et al. disclose the thickness of the adhesive layer ranging from 1 to 75 pm, the reference does not suggest that the thickness may be a result-effective parameter.”
The examiner disagrees and directs attention to [0074] of Tateoka et al. Tateoka et al. teaches the adhesive agent layer having a thickness of less than 1 μm is less adhesive, while that of more than 75 μm is lower in productivity [0074]. Therefore, the thickness of the adhesive layer to be a would be considered a result effective variable by one of ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed molar ratios cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of the adhesive layer of Tateoka et al. to reach the desired adhesiveness, balanced by productivity since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
The Applicant states “the thickness of the adhesive layer and the amount of silane compound, if adequately adjusted, are both believed to improve the peelability of a temporary protecting film after a sealing layer is formed”.
Applicant’s arguments are not persuasive. While the thickness of the adhesive layer appears to have unexpected results in view of Examples 4, and 5, and Comparative Example 1 as pointed out by the Applicant, the amount of silane compound for each of these Examples are 3 mass%, thereby lying outside the claimed range of 15% to 35% by mass. If the peelability is improved based on the thickness of the adhesive layer and the amount of silane compound, how are Examples 4 and 5 exemplary examples if the amount of silane compound is out of range? Therefore, Applicant has not demonstrated criticality of the lower range.
Furthermore, Applicant has not demonstrated criticality of the upper range. The highest amount of silane compound appears to be 30% by mass of Example 3, which is lower than the claimed upper limit of 35% by mass. Applicant has not provided any examples above the upper limit of 35% by mass to show that the peelability is reduced. Thus, Applicant has not demonstrated criticality of the upper range.
Additionally, Applicant’s examples only comprises aromatic polyetheramideimide and is therefore not commensurate in scope with claim 1 (see instant specification [0080-0084]). Claim 1 recites “at least one organic polymer selected from an aromatic polyamide, an aromatic polyester, an aromatic polyimide, an aromatic polyamideimide, an aromatic polyether, an aromatic polyetheramideimide, an aromatic polyetherimide, an aromatic polyesterimide, and an aromatic polyetherimide”. There is no evidence that all of the organic polymers listed would behave in the same manner. Therefore, the examples are not commensurate in scope with the claims.
Applicant’s examples are also not commensurate in scope with the silane compound of instant claim 1. The examples of the instant specification uses SH-6040 which is a 3-glycidoxypropyltrimethoxysilane and KBE-585 which is a 3-ureidopropyltriethoxysilane. (See Table 1 and [0081- 0082] of the instant specification). However, Claim 1 recites “a silane compound having a silyl and a reactive group”. There is no evidence that all of the silane compounds having a silyl group and a reactive group would behave in the same manner. Therefore, the examples are not commensurate in scope with the claims.
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 ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
Prosecution Insights