DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
NEW REJECTIONS: NECESSITATED BY AMENDMENT
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.
Claims 1-3, 5, 9, 17, 19-21 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Kakiuchi (WO2021117695) in view of Yoneda (JP2019123814) in view of Fujiwara (WO 2019078290 A1).
Re claims 1-3, 5, 9, 17, 19-21 and 24, Kakiuchi discloses adhesive sheet, i.e. adhesive tape, comprising support 8 (corresponding to claimed substrate), adhesive layer X2 (corresponding to claimed ablation layer), non-heat expandable substrate layer Y2 (corresponding to claimed barrier layer), heat-expandable substrate layer Y1 (corresponding to claimed easy adhesion layer), and adhesive layer X1 (corresponding to claimed first adhesive layer) [9, 178, Fig 8]. The non-heat expandable substrate layer Y2 (barrier layer) is made from polyester [124-125]. The support is made from the same polymers as layer Y2 [177-178], i.e. is made from polyester. The adhesive layer X1 (first adhesive layer) is made from urethane resin, silicone resin, or acrylic copolymer including butyl acrylate and acrylic acid [41-42, 46-52, 54] which is identical to the acrylic copolymer used in the present invention (see paragraph 0118 of the present specification) and therefore would necessarily be curable.
Kakiuchi does not disclose that the adhesive comprises a UV absorber.
Yoneda discloses pressure sensitive adhesive comprising acrylic copolymer [7] and ultraviolet absorber that includes benzotriazole ultraviolet absorber such as Tinuvin 928 to improve weather resistance [78-79]. Tinuvin 928 is identical to the ultraviolet absorber used in the present invention (see paragraphs 0019 and 0119 of the preset specification).
In light of the motivation for using ultraviolet absorber disclosed by Yoneda, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to use the ultraviolet absorber in the adhesive layers of Yoneda in order to produce an adhesive sheet with weather resistance.
Given that Kakiuchi in view of Yoneda disclose ablation layer as presently claimed and used in the present invention, it would necessarily inherently have the same storage modulus as claimed. Further, given that Kakiuchi in view of Yoneda disclose adhesive sheet as presently claimed, it would necessarily inherently have the same ball tack value as claimed and have the same adhesion between the substrate and ablation layer and between the ablation layer and the barrier layer.
Further re claim 1 and 24, The substrate of 80% or more is not taught as claimed; however, Fujiwara teaches the UV transmittance of the single layer film is 80% or more, and most preferably 85% or more (overlapping same range). If it is in the said range, after laminating | stacking an adhesive layer on a single layer film, it can be used suitably in the process of irradiating an ultraviolet-ray from the single layer film surface side, and hardening an adhesive. See page 7, first paragraph-sixth paragraph. Also the direct limitation is taught as Fujiwara teaches a method of directly applying an adhesive on the surface of a single layer film (direct coating method), see page 9, last paragraph.
Thus, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to use the ultraviolet absorber substrate and direct placement as claimed in the adhesive layer construction of Yoneda in order to produce an adhesive sheet suitable for UV radiance and improved adhesion as taught by Fujiwara.
Re claims 6-7, Kakiuchi discloses the non-heat expandable substrate layer Y2 (barrier layer) has a thickness of 5-500 microns [132].
Re claims 10-11 and 18, given that Kakiuchi disclose first adhesive layer identical to that presently claimed, it would necessarily have the same breaking strength, storage modulus, and surface peel strength as claimed.
Re claims 13-14, given that claims 13-14 only further limit an optional embodiment of claim 1, claims 13-14 are considered met.
Re claim 16, Kakiuchi discloses the adhesive layer X2 (first adhesive layer) has a thickness of 3-10 microns [72].
Re claim 22, Kakiuchi discloses an adhesive layer can be attached to the support surface [170].
Re claim 23, the adhesive sheet is used for semiconductors and is made using a step including irradiating with laser light [1, 170].
Alternatively, the recitation in the claims that the adhesive tape is “for use in production of a semiconductor device, the production including a step of irradiation with laser light” is merely an intended use. Applicants 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 Kakiuchi in view of Yoneda disclose adhesive tape as presently claimed, it is clear that the adhesive tape would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kakiuchi (WO2021117695) in view of Yoneda (JP2019123814) and further in view of Jozuka (JP2019070102).
The combination is relied upon above.
Re claim 15, There is no disclosure in Kakiuchi in view of Yoneda of the gel fraction of the adhesive.
Jozuka discloses acrylic pressure sensitive adhesive [1] that has gel fraction of 20-90% wherein the adhesive has resistance to deformation and sufficient bonding [134].
In light of the motivation for using adhesive with gel fraction disclosed by Jozuka as described above , it would have been obvious to one of ordinary kill in the art at the time of the effective filing date of the claimed invention to control the gel fraction of the adhesive of Kakiuchi in view of Yoneda to values, including that presently claimed, in order to produce an adhesive sheet with resistance to deformation and sufficient bonding.
Response to Applicant’s Arguments
Applicant’s arguments are moot in view of the new ground of rejection with a new reference; see above.
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 TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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