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 .
Claims 1, 4-19 are pending.
Claims 1, 4-7, 11, 12, 14-19 are under examination on the merits.
Claims 1, 6, 8 are amended.
Claim 2-3 are previously canceled.
Claims 16-19 are newly added.
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/30/26 has been entered.
Election/Restrictions
Applicant’s previous election of Group I claims 1, 4-7, 11-19 and species 1) acrylates and 2) component of electronic device is noted for reference.
Claim Rejections - 35 USC § 102
The rejection in the previous action of claims 1, 4, 5, 11 under 35 U.S.C. 102(a)(1) as being anticipated by US 20130303646 by Niwa et al is withdrawn in view of applicant’s amendment. Niwa’s adhesive thickness is a minimum of 10 micron thickness.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection in the previous action of claims 6, 7, 12, 14 and 15 under 35 U.S.C. 103 as being unpatentable over US 20130303646 by Niwa et al is withdrawn in view of applicant’s amendment to claim 1.
Claim(s) 1, 4-7, 11, 12, 14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20100129986 by Kamiya et al.
Kamiya describes a dicing di-bonding film.
Regarding claim 1, Kamiya describes a layer based on a pressure sensitive adhesive (starting paragraph 87) which is partable (paragraph 93) and comprises a foaming agent (paragraph 94-98) which may be chemical (e.g. azodicarbonamide paragraph 98) or physical (e.g. microspheres paragraph 95-96). The layer comprises acrylic ester (paragraph 88) and N-vinylcaprolactam (paragraph 89) in an embodiment. The thickness of the layer is 5-300 microns (paragraph 109). The layer is capable of interacting with two layers of materials and enabling their adhesion (e.g. base material and active energy ray-curable antifouling pressure sensitive adhesive layer, paragraph 13). Kamiya’s description of this heat-expandable pressure sensitive adhesive layer reads on “primer” as it is the first material on the base layer (paragraph 13).
It would be obvious to choose the monomers instantly claimed given Kamiya’s disclosure because Kamiya describes them as possibilities.
In the case where the 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), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Kamiya describes thickness values overlapping with the claimed range.
Regarding claim 4, Kamiya describes the polymer component as having acrylic ester as a main monomer component (paragraph 88) and does not require the presence of acrylic acid (e.g. it is mentioned as optional in paragraph 89).
Regarding claim 5, Kamiya describes heat expandable microspheres, which are physical blowing agents, as ideal (paragraph 94-95) as well as non-microsphere based physical blowing agents in paragraph 97-98 e.g. water and fluorinated compounds.
Regarding claim 6, Kamiya describes a layered structure comprising a base material (instant first component), a heat-expandable pressure sensitive adhesive layer (instant primer layer) on the base material, and an active energy ray curable pressure sensitive adhesive (instant adhesive tape) connected to the base layer via the primer layer (paragraph 13). The heat-expandable pressure sensitive adhesive layer enables the adhesion of the active energy ray curable pressure sensitive adhesive and the base material (paragraph 13).
Regarding claim 7, Kamiya describes a die bonding film on the other side of the energy-ray curable layer (paragraph 12).
Regarding claim 11, Kamiya describes thermally expandable microsphere with diameter as low as 1 micron (paragraph 101).
Regarding claim 12, Kamiya describes an an active energy ray curable pressure sensitive adhesive as the adhesive tape (paragraph 13).
Regarding claim 14, Kamiya describes producing a semiconductor device (paragraph 155) in which the adhesive is part of an apparatus for making semiconductors (paragraph 156).
Regarding claim 15, Kamiya describes a semiconductor chip comprising the layered structure (paragraph 155).
Regarding claims 16 and 17, Kamiya describes “butyl (meth)acrylate” (paragraph 88).
Regarding claim 18 and 19, Kamiya describes the thickness of the heat expandable pressure sensitive layer as low as 5 microns (paragraph 109) and the active energy ray layer as 1-50 microns (paragraph 72) for a ratio as high as 5:1 in the instant terms, i.e. below the instant 1:10 or 1:20.
Response to Arguments
Applicant’s argument p.7 paragraphs 1-3 of Remarks submitted 4/30/26 has been considered and is persuasive- Niwa rejections are withdrawn above because Niwa’s minimum thickness does not meet the narrowed claims.
Applicant’s argument p.7 penultimate paragraph-p.8 paragraph 1 has been considered but is not persuasive. Applicant states that the primer does not itself provide adhesion between two surfaces but enhances the bonding performance of the adhesive layer that follows. The instant specification states that “primer” is a ground coat which is applied to a substrate. Applicant’s argument is not found convincing because the definition in the specification of “primer” (p.5 ln 13-20) states “not necessarily improve” the adhesion between the substrate and subsequent layers; this phrasing does not impose a definite limitation on adhesion. Terms are given their broadest reasonable interpretation in patent prosecution; therefore primers that improve adhesion still read on “primer”. Furthermore, newly applied art Kamiya recites a pressure-sensitive adhesive.
Applicant’s argument p.8 paragraph 2 has been considered but is not convincing. Applicant describes the application process of a primer; this is not convincing because the process is not claimed. The newly applied art Kamiya reads on the claimed structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 5712721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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