DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim 2 in the amendments filed 11/4/2025.
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 .
Response to Amendment
Applicant’s arguments, see the remarks filed 11/4/2025, with respect to the objection to the specification as set forth in paragraph 4 of the action mailed 8/13/2025, have been fully considered and are persuasive. The objection to the specification has been withdrawn.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 1 and 3-14 are 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.
Regarding claim 1, it is unclear from the claim limitations what is being claimed as the recited expression (1) is relating units of pressure (MPa) to units of thickness (length in microns), and thus it is unclear how prior art would be applicable towards teaching or rendering obvious the presently claimed invention.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3-10 and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ootake et al. (US 2010/0129988 A1).
Regarding claims(s) 1, 3-6 and 10, Ootake teaches a dicing film (2) comprising base material (1a) and pressure-sensitive adhesive (PSA) layer (1b) (PSA sheet) (para 0031-0033, figures 1-3) comprising a gas-generating agent (gas-generating layer) at 10-200 parts by weight per 100 parts by weight of an acrylic polymer (A);
which said acrylic polymer(A) (current claim 6) is cured via active energy ray curing (current claim 5) (para 0095) and is composed of 50% by weight or more of an acrylic acid ester and 1 to 30 % by weight of a hydroxyl group-containing monomer (para 0044-0046; 0064-0073);
and which said gas-generating agent is an ultraviolet (UV) irradiation agent (configured to generate gas via light irradiation) (para 0047-0048).
Ootake also teaches that the PSA layer demonstrates an elastic modulus of 5 to 50 MPa or more towards effective peeling (para 0023, 0091-0092) and a thickness of 1 to 50 mm (para 0081). Substituting the lower limit of the elastic modulus of 5 MPa into the left argument of the presently recited expression (1) (assuming, as per Table 1 presently disclosed) and substituting the upper limit of the PSA thickness of 50 mm into the right argument of the presently recited expression (1) (assuming, as per Table 1 presently disclosed), respectively yields approximately 6.7 MPa and approximately 5.1 mm. Thus, the prior art satisfies said expression (1) for all values of the elastic modulus and thickness of the disclosed PSA layer.
While Ootake does not teach the presently claimed method for determining the elastic modulus, one skilled in the art would recognize that the presently claimed/disclosed methodology is directed to the same property arrived at via the methodology of Ootake.
Ootake does not specify the presently claimed transmittance percentages at 360 nm (i.e., 0 to 40 %, current claim 2), 380 nm (10 to 100 %, current claim 3) or 500 nm (70 to 100%, current claim 10). However, Ootake teaches said gas-generating agent is an ultraviolet (UV) irradiation agent (UV absorber) (para 0047-0048) comprising gas-generating agents irradiated with UV light in a range of 300 to 400 nm (0084), which overlaps the presently claimed maximum absorption wavelength of 360 nm or less (current claim 4).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Ootake continues to teach that an intermediate layer, interim to the PSA layer and the base material layer (1a) towards improving adhesion, comprises additives such as, inter alia, colorants, and transmits UV radiation (para 0110-0114). Ootake also teaches that the base material transmits UV radiation, provides a strength matrix, comprises surface treatments such as, inter alia, an undercoating to improve adhesion to adjacent layers, and comprises additives such as, inter alia, colorants (para 0115-0122).
In addition, the gas-generating agents of Ootake are directed towards absorption of the UV light identical to that presently recited as the maximum absorption wavelength (i.e. 360 nm), and Ootake does not require that the UV absorption spectrum of the disclosed dicing film (2) include UV light at 380 nm wavelengths or the absorption of wavelengths at or near 500 nm.
Therefore, it would have been obvious to one of ordinary skill in the art to employ gas-generating agent(s) having the presently recited maximum absorption based on the irradiation wavelength used in generating the gas without including gas-generation agent(s) and/or colorants that block or absorb light in the 380 and 500 nm region (100 % transmittance) based on the optical properties required or desired of the prior art’s intended application as in the present invention.
Regarding claims 7-9, Ootake teaches that the PSA layer comprises a multilayer structure (para 0082), which one skilled in the art would recognize as providing two PSA layers, one of which would be in contact with the base material (1a); and which said base material (1a) comprises a plastic film (para 0116-0117). The Examiner notes that the laminate formed of the second of the two-layer PSA layers in contact with the base material (1a) comprising a plastic film teaches a gas barrier layer; wherein the base material (1a) comprising a plastic film would provide some degree of gas blocking layer based on its existence (i.e., a gas barrier layer), and wherein the PSA layer in contact with said base material provides a PSA property (current claim 9).
As noted above, the PSA layer comprises a thickness of 1 to 50 mm , whereas the base material (1a) comprises a thickness of 5 to 200 mm (para 0121). Thus, it is reasonable to conclude that said second of the two-layer PSA layers in contact with the base material (1a) would have a thickness that, in combination with the thickness of the base material (1a), would provide a total thickness that overlaps that presently claimed (i.e., 0.1 to 50 mm, current claim 8).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provides the PSA layer/base material (1a) laminate with a combined thickness identical to that presently claimed based on at least the overall total thickness of the dicing film (2) required of the prior art’s intended application as in the present invention.
While the Ootake reference does not disclose the elastic modulus of the base material (1a), Ootake does instruct the skilled artisan that the base material (1a) is provided as a strength matrix (para 0116) and may be monoaxially or biaxially stretched (para 0117). As noted above, the elastic modulus of the PSA layer(s) is disclosed as 5 to 50 MPa.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provides the PSA layer/base material (1a) laminate with the presently claimed elastic modulus based on the stiffness required of the prior art’s intended application as in the present invention.
Regarding claims 12-13, Ootake teaches that the surface smoothness of the PSA layer decreases (deformed) (para 0061), which would one skilled in the art would be characterized by a “buckling” or “rise and fall” of the surface towards generating valleys and protrusions.
Regarding claim 14, Ootake does not disclose a horizontal displacement of the PSA layer surface, or the PSA sheet surface However, as noted above, Ootake does teach that the PSA layer demonstrates an elastic modulus of 5 to 50 MPa and a thickness of 1 to 50 mm, which said ranges of the elastic modulus and thickness satisfy the presently claimed expression (1) for all values of the elastic modulus and thickness. Thus, it is reasonable to conclude that the adhesive surface of the dicing film (20 would demonstrate the presently claimed horizontal surface displacement.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ootake et al. (US 2010/0129988 A1) in view of Ieda et al. (WO 2018092905 A1). The Examiner notes that citations from the ‘905 reference were taken from US 2019/0077999 A1, which is the English equivalent thereof.
Regarding claim 11, Ootake does not disclose a haze value for the dicing film (2), but as noted above, and in the full disclosure of Ootake, Ootake is conspicuously directed to a dicing film and its optical properties thereto.
In addition, Ieda teaches a PSA sheet including a PSA layer having a haze value of 1.0 % or less or less than 0.7 %(abstract, 0131), and that the haze is adjusted via adjustment of the layer thickness (para 0009, 0130); selection of (meth)acrylate monomeric components and its proportions (para 0010, 0047, 0135); the amount of tackifier (0121). Ieda also teaches that the PSA sheet has a haze value of 0.1 to 5 % (para 0168).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provides the PSA layer/base material (1a) laminate with the presently claimed haze based on the optical properties required/desired of the prior art’s intended application as in the present invention.
Response to Arguments
Applicant’s arguments, see the remarks filed 11/4/2025, with respect to the rejection of claims 1-14 under 35 U.S.C. 112(b) as set forth in paragraph 7 of the action mailed 8/13/2025, have been fully considered but they are not persuasive.
The Examiner respectfully submits that Log10 expression cannot contain units as the arguments of them are dimensionless. Thus, the portion of the rejection pertaining to Table 1 has been withdrawn, but the remainder of the rejection has been maintained and repeated above.
Applicant’s arguments, see the claim amendments and the remarks filed 11/4/2025, with respect to the above-noted rejection(s) of claims 1-10 and 12-14 over Ootake et al. under 35 U.S.C. 103 and claim 11 over Ootake et al. in view of Ieda et al. under 35 U.S.C. 103 in response to the amendment canceling claim 2 and importing the limitations contained therein into claim 1, have been fully considered but they are not persuasive.
The Applicant’s attention is respectfully directed to the updated prior art rejections set forth above, wherein it is noted that the cited priori art teaches or renders obvious all the limitations of the presently claimed invention, to include the limitations reciting the transmittance percent range at the recited wavelength. The Examiner also notes that the gas-generating agents disclosed in Ootake comprise, inter alia, azo-based compounds, which are identical to that presently disclosed for the presently claimed UV absorber (see para 0034 of the specification as originally filed), and have an absorption at 360 nm (para 0059).
Further, the proportions of the disclosed gas-generating agents of Ootake are present in an amount identical to that presently claimed (see above; para 0062 of Ootake; and para 0037 presently disclosed). Ootake also teaches that the gas-generating agents are present towards providing the peel properties of the PSA layer. Thus, it would have been obvious to the skilled artisan to adjust the proportions of the gas-generating agents of Ootake towards generating gas via UV radiation at 360 nm, and consequently reduce the transmission of the 360 nm light to that presently claimed, based on the degree of peel of the PSA layer.
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 1/12/2026