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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 12/9/2025 is acknowledged.
Claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/9/2025.
Claim Objections
Claim 1 is objected to because of the following informalities: the Examiner suggests amending the claim to recite “…oxygen atom [[in]]on a surface of a copper plate…” if that was what was intended. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the Examiner suggests amending the claim to recite “…proportion of the oxygen atom [[in]]on the surface of the copper plate…” if that was what was intended. Appropriate correction is required.
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.
Claim(s) 2 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.
Regarding claim 2, it is unclear from the claim limitations what is, and is not, being claimed as it is unclear if the recited “1.2 atom%” is referring only to the previously recited oxygen atom(s), or atoms other than the previously recited oxygen atom(s).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kato et al. (JP 2011111530A). The Examiner notes that citations from the ‘530 reference were taken from a machine translation, which is included with the current action.
Regarding claims 1-2, Kato teaches an adhesive sheet (temporary protective film) comprising a release substrate (support film) and an adhesive layer (claim 1) comprising a (A) polyether compound and a (B) thermally polymerizable component (claim 2), which said (A) polyether compound is an aromatic polyetheramideimide (claim 3), which is identical to that presently disclosed (see Examples 1-4 at paragraphs 0070-0072, 0080-0081 of the originally filed specification) as enabling the presently claimed thermoplastic resin.
Kato also teaches the (B) thermally polymerizable component is, inter alia, a polyfunctional epoxy resin exemplified by EX-614B (para 0060-0067), which is identical to that presently disclosed (see Examples 1-2 at paragraphs 0070-0072, 0078 of the originally filed specification) as enabling the presently claimed low-molecular-weight additive having a molecular weight of less than 1000.
While Kato does not disclose the presently claimed oxygen atom proportions as determined under the presently claimed conditions for the recited X1 and X2, the Applicant is respectfully reminded that:
The courts have held that “a compound and all its properties are mutually inseparable”,
In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn
to MPEP 2112.01, which states that “products of identical chemical composition cannot
have mutually exclusive properties. A chemical composition and its properties are
inseparable. Therefore, if the prior art teaches the identical chemical structure, the
properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911
F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Thus, the adhesive sheet of Kato attached to the surface of a copper plate via the adhesive layer would inherently demonstrate the presently claimed X1 and X2 proportions (X2 < X1; X2 is 1.2 atom% or less) under the presently claimed conditions/test procedures.
In addition, the recitation in the claims that the protective film is “for semiconductor encapsulation molding” is merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the Examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Kato disclosures the presently claimed temporary protective film as presently claimed, it is clear that adhesive sheet of Kato would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Regarding claim 3, as noted above, Kato teaches that the (B) thermally polymerizable component is identical to the presently claimed/disclosed low-molecular-weight additive having a molecular weight of less than 1000; thus, the (B) thermally polymerizable component would inherently generate a reducing gas via thermal decomposition.
Regarding claim 5, as noted above, Kato the presently claimed/disclosed (B) thermally polymerizable component is, inter alia, a polyfunctional epoxy resin.
Allowable Subject Matter
Claim 4 is allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art references are:
JP 2011111530 A to Kato et al. explicitly or inherently teaches all the limitations of at least current claim 1 as set forth above, but the disclosed proportions of the (A) the aromatic polyetheramideimide is at most 50 parts by weight per 100 parts by weight of the (B) thermally polymerizable component, which is outside the presently claimed content of current claim 4.
WO 2019/176597 A1 to Tomori et al. (citations taken from the English equivalent US 2021/0050274 A1) teaches a temporary protective film (10) comprising support film and adhesive layer (2), the latter of which comprises an aromatic polyether amideimide (para 0035-0049; Fig. 1).
Tomori is silent to the presently claimed oxygen atom proportions X1 and X2 of at least current claim 1. Tomori teaches that the adhesive layer further comprises silane coupling agents in proportions identical to that presently claimed (current claim 4) relative to said aromatic polyether amideimide, but the coupling agents (see para 0056 of Tomori) are not similar in functionality to those presently disclosed as enabling the presently claimed low-molecular-weight additives.
US 2009/0053498 A1 to Matsura et al. is similar in its disclosure to the ‘597 reference and is similarly deficient.
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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.
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, Alicia A Chevalier can be reached at 571-272-1490. 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.
/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 12/22/2025