DETAILED ACTION
Examiner’s Notes
The Examiner acknowledges the addition of new claim 11 in the amendments filed 4/28/2026.
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 claim amendments and the remarks filed 4/28/2026, with respect to the objections to claim 1 as set forth in paragraphs 4-5 of the action mailed 1/2/2026, have been fully considered and are persuasive. The objections to claim 1 have been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 4/28/2026, with respect to the rejection of claim 2 under 35 U.S.C. 112(b) as set forth in paragraph 7 of the action mailed 1/2/2026, have been fully considered and are persuasive. The rejection of claim 2 has been withdrawn.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 § 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.
Claim(s) 1-3, 5 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (JP 2011111530 A) in view of Matsuura et al. (US 2009/0053498 A1). The Examiner notes that citations from the ‘530 reference were taken from a machine translation, which was included with the previous action.
Regarding claims 1-2 and 11, 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, a (B) thermally polymerizable component, and a (C) high-molecular-weight 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 the body of the Kato disclosure is silent to the adhesive layer comprising a coupling agent (current claim 1), and in amount of 1 to 3 parts by mass based on 100 parts by mass of the thermoplastic resin (current claim 11), the inventive examples of Kato do include a silane-based coupling agent (para 0117, 0119).
In addition, Matsuura teaches an adhesive film comprising a resin layer A (abstract) comprising resin (a), which said resin (a) comprises a coupling agent (para 0053) such as, inter alia, a silane coupling agent in an amount of 1 to 15 parts by weight per 100 parts by weight of resin (a), which overlaps that presently claimed, towards improved adhesion to a support film (para 0055).
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).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Indeed, it would have been obvious to one skilled in the art before the effect filing date of the present invention employ the silane coupling agent in the presently claimed portions based on the degree of adhesion of the release substrate to the adhesive layer required of the prior art’s intended application as in the present invention.
The Examiner notes that the adhesive layer of Kato/Matsuura teaches that:
the (A) polyether compound is present at 0.1 to 50 parts by mass per 100 parts by mass of the (B) thermally polymerizable component; and,
(C) high-molecular-weight component is present at 10 to 400 parts by weight per 100 parts by mass of the (B) thermally polymerizable component.
While Matsuura does not disclose that the 1 to 15 parts by weight of the silane coupling agent is based on 100 parts by mass of the (B) thermally polymerizable component, Matsuura does instruct the skilled artisan that said silane coupling agent is included towards improved adhesion to the support film.
The Examiner also notes that, while (C) high molecular weight component is disclosed as preferably being a glycidyl group-containing acrylic rubber, Kato also contemplates that the (C) high molecular weight component is a glycidyl group-containing (meth)acrylic ester copolymer, which is also a thermoplastic resin (para 0074-0075).
Further, “nonpreferred disclosures can be used. A nonpreferred portion of a reference
disclosure is just as significant as the preferred portion in assessing the patentability of
claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).
The Examiner further also notes that Kato provides for the adhesive film to comprises inorganic filler, but Kato does not require this component (para 0083-0085).
Therefore, given that the (A) polyether compound and the (C) high-molecular-weight component teach the presently claimed thermoplastic resin, Kato/Matsuura teaches that the (A) polyether compound, the (B) thermally polymerizable component, the (C) high-molecular-weight component, and the silane coupling agent comprise all the components of said adhesive layer as presently claimed (i.e., 90 to 100% by mass).
While Kato/Matsuura 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 (Examiner’s emphasis):
Where the claimed and prior art products are identical or substantially identical in
structure or composition, a prima facie case of either anticipation or obviousness has
been established. "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). See MPEP § 2112.01.
Thus, the adhesive sheet of Kato/Matsuura 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 necessarily 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: see paragraph 11 of the action mailed 1/2/2026.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 4/28/2026, with respect to the rejection of claims 1-3 and 5 over Kato et al. under 35 U.S.C. 102(a)(1) as set forth in paragraph 9 of the action mailed 1/2/2026, have been fully considered but they are not persuasive.
Subject to the amendments to the claims, the presently claimed invention has been rejected over the cited prior art under 35 U.S.C. 103 as provided above, the Examiner will address the Applicant’s arguments in regards to the obviousness rejection of the current action. In this spirit, the Applicant’s attention is respectfully directed to the prior art rejection set forth above, wherein it is noted that the cited prior art teaches or renders obvious all the limitations of the presently claimed invention as recited in current claims 1-3, 5 and 11.
Also, as set forth above, a reasonable interpretation of Kato (as remedied via Matsuura) teaches both the (A) polyether compound and the (C) high-molecular-weight component; and thus the proportions of (A) and (C) comprising the adhesive layer, in tandem with the proportions of compound (B) and the silane coupling agent, provide the presently amended recitation requiring the claimed adhesive layer to comprise 90 to 100% by mass of the low-molecular-weight additive, coupling agent and the thermoplastic resin.
In regards to the Applicant’s arguments against the prior art’s inherent teaching of the presently claimed X1 and X2 oxygen atom proportions, the Examiner respectfully submits that, as set forth above, and repeated here for clarity,
Where the claimed and prior art products are identical or substantially identical in
structure or composition, a prima facie case of either anticipation or obviousness has
been established. "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). See MPEP § 2112.01.
In addition, the rejection provided herein does not ignore the presence of the disclosed component (C) of Kato as it, in tandem with component (A), teaches the thermoplastic resin. Thus, given that Kato/Matsuura teach an adhesive layer identical to that presently claimed, to include the identical compounds in identical proportions, the adhesive layer of Kato/Matsuura would be configured to contain the (B) thermally polymerizable component towards demonstrating the presently recited relative X1 and X2 relationship under identical conditions.
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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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.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 5/20/2026
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