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 .
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) 1-5 and 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (PG Pub. No. US 2015/0024574 A1) in view of Moriyama et al. (PG Pub. No. US 2018/0151405 A1).
Regarding claim 1, Kim teaches a laminate (fig. 3) comprising:
a support substrate (¶ 0065: 110);
a semiconductor substrate (¶ 0071: 210) having a bump (¶ 0078: 222) on a side of the support substrate (fig. 3: 222 disposed on a side of 110);
a material layer (¶ 0072: 230) interposed between the support substrate and the semiconductor substrate and in contact with the semiconductor substrate (fig. 3: 230 interposed between 110 and 210 and in contact with 210); and
an adhesive layer (¶ 0065: 130) interposed between the support substrate and the material layer and in contact with the support substrate and the material layer (fig. 3: 130 interposed between 110 and 230 and in contact with 110 and 230),
wherein the laminate is used for an application in which the support substrate and the semiconductor substrate are separated from each other after processing of the semiconductor substrate in the laminate (¶¶ 0083-0086: 110 and 210 separated after at least one process), and
an adhesive force between the inorganic material layer and the adhesive layer when the support substrate and the semiconductor substrate are separated from each other is smaller than an adhesive force between the inorganic material layer and the semiconductor substrate (fig. 7: adhesive force between 230 and 130 smaller than that between 230 and 210).
Kim does not teach the material layer comprises inorganic material.
Moriyama teaches a laminate (fig. 2) including an inorganic material layer (¶ 0051: 11, including inorganic filler) in contact with a semiconductor substrate (fig. 2: 11 in contact with semiconductor substrate 21), wherein an adhesive force between the inorganic material layer and an adhesive layer (12) is smaller than an adhesive force between the inorganic material layer and the semiconductor substrate (fig. 5: adhesive force between 11 and 12 smaller than that between 11 and 21).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the material layer of Kim with inorganic material, as a means to promote a hydrophilic property (Moriyama, ¶ 0052).
Regarding claim 2, Kim in view of Moriyama teaches the laminate according to claim 1, wherein the adhesive layer is a layer formed of an adhesive composition (Kim, ¶ 0066: 130 includes a composition).
Regarding claim 3, Kim in view of Moriyama teaches the laminate according to claim 2, wherein the adhesive composition contains a polyorganosiloxane (Ki, ¶ 0067: 130 includes a polyorganosiloxane composition).
Regarding claim 4, Kim in view of Moriyama teaches the laminate according to claim 3, wherein the adhesive composition contains a component (A) which is cured (Kim, ¶¶ 0067, 0081) and the polyorganosiloxane as a component (B) (Kim, ¶ 0067) which does not cause a curing reaction (Kim does not teach that any subsequent curing reaction is caused by the polyorganosiloxane component).
Regarding claim 5, Kim in view of Moriyama teaches the laminate according to claim 4, wherein the component (A) is a component which is cured (Kim, ¶¶ 0067, 0081) by a hydrosilylation reaction.
The limitation of “by a hydrosilylation reaction" comprises a product by process limitation, and is not given patentable weight in a claim drawn to structure. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 7, Kim in view of Moriyama teaches the laminate according to claim 4,wherein the component (B) is a polydimethylsiloxane (Kim, ¶¶ 0067-0069) which may be modified.
Regarding claim 8, Kim in view of Moriyama teaches the laminate according to claim 1, wherein the inorganic material layer is a layer on the semiconductor substrate (Kim, fig. 3).
The limitation of “obtained by plasma-polymerizing an organosilicon compound" comprises a product by process limitation, and is not given patentable weight in a claim drawn to structure. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 9, Kim in view of Moriyama teaches a method for manufacturing a semiconductor substrate, the method comprising:
processing the semiconductor substrate in the laminate according to claim 1 (Kim, ¶ 0083: 210 processed);
separating the support substrate and the processed semiconductor substrate from each other by separating the inorganic material layer and the adhesive layer from each other (Kim, ¶ 0086 & fig. 7: 230, as modified to include inorganic material of Moriyama, separated from 130); and
removing the inorganic material layer (Kim, ¶ 0089: 230 removed).
Regarding claim 10, Kim in view of Moriyama teaches the method for manufacturing a semiconductor substrate according to claim 9, wherein the processing includes polishing a surface of the semiconductor substrate opposite to a surface on which the bump exists to thin the semiconductor substrate (Kim, ¶ 0083: surface of 210 opposite to 222 polished by CMP to reduce thickness).
Regarding claim 11, Kim in view of Moriyama teaches a method for manufacturing the laminate according to claim 1, the method comprising:
forming the inorganic material layer on a surface of the semiconductor substrate on which the bump exists (Kim, fig. 2: 230, as modified by Moriyama to include inorganic material, formed on surface of 210 comprising 222);
forming an adhesive coating layer which provides the adhesive layer on the inorganic material layer (Kim, ¶ 0079 & fig. 3: 130 formed on 230);
forming the adhesive layer by heating the adhesive coating layer in a state where the support substrate and the adhesive coating layer are in contact with each other and the adhesive coating layer and the inorganic material layer are in contact with each other (Kim, ¶ 0081 & fig. 4: 130 heated in a state where 110 and 130 are in contact, and 130 and 230 are in contact).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Moriyama as applied to claim 4 above, and further in view of Meynen et al. (Patent No. WO 2015/112330 A1).
Regarding claim 12, Kim in view of Moriyama teaches the laminate according to claim 4, comprising component (B) (Kim, ¶ 0067).
Kim in view of Moriyama does not teach wherein the component (B) includes a modified polydimethylsiloxane.
Meynen teaches an adhesive composition (¶ 0016: TBA) containing a modified polydimethylsiloxane (¶ 0031: vinyl PDMS).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the adhesive composition of Kim in view of Moriyama with modified polydimethylsiloxane, as a means to provide good storage shelf life, optimize curing, and/or a barrier from various aqueous acid or base attacks (Meyen, ¶ 0031).
Allowable Subject Matter
Claim 6 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.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to teach or suggest the limitations stating:
“wherein the component (A) contains:
a polyorganosiloxane (al) having an alkenyl group having 2 to 40 carbon atoms bonded to a silicon atom;
a polyorganosiloxane (a2) having a Si-H group; and
a platinum group metal-based catalyst (A2).”
Response to Arguments
Applicant’s arguments, see page 5, filed 11/10/2025, with respect to the 35 USC § 112b rejection of claim 7, have been fully considered and are persuasive. Accordingly, the 35 USC § 112b rejection of claim 7 has been withdrawn.
Applicant's arguments regarding the 35 USC § 103 rejections of claims 1-5 and 7-11 have been fully considered but they are not persuasive for the flowing reasons.
Regarding the Applicant’s argument stating:
“That is, interpreting the term "inorganic material layer" to be broad enough to encompass the materials of the asserted disclosures of Moriyama is not only inconsistent with how one skilled in the art would interpret such terms, but is also inconsistent with the interpretive guidance set forth in the instant specification and, thus, is unreasonable”, the Examiner respectfully disagrees.
The Examiner notes that layer 11 of Moriyama includes inorganic material and resin. Similarly, Saeki (US 2021/0249735 A1) teaches inorganic layers comprising inorganic fillers and resin (¶¶ 0064, 0133, 0137). Accordingly, a person of ordinary skill in the art would recognize that layer 11 of Moriyama meets the broadest reasonable interpretation of an inorganic layer, as evidenced by Saeki.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the recited inorganic material layer (i.e., a layer formed only/solely of an inorganic material)) are not recited in the rejected claim(s) (emphasis added). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In the instant case, the claims merely recite an inorganic layer, rather than a layer formed only/solely of an inorganic material.
Regarding the Applicant’s argument stating:
“However, one skilled in the art would recognize that promoting hydrophilicity and achieving the aforementioned effects of the claimed invention are not technically related, and there is no reason to consider this obvious to one skilled in the art. Furthermore, Moriyama provides no teaching or suggestion that these are related, and no proper motivation to combine these references in the manner asserted, much less in a manner that would actually arrive at the claimed combination of features. As such, Moriyama fails to cure the deficiencies of Kim”, the Examiner respectfully disagrees.
The Examiner notes that Kim teaches limitation of representative claim 1, except for the material layer comprising inorganic material. Moriyama cures this deficiency by suggesting that inorganic material, including hydrophilic surface treatment and/or coupling agents, is suitable to provide releasable material layer 11. Kim teaches that layer 130 is separated from 230 (fig. 7), and Moriyama similarly teaches layer 12 is separated from material layer 11 (¶ 0083, fig. 5). Modifying layer 130 of Kim with the inorganic material of Moriyama would provide properties suitable to promote the separation of Kim’s layer 130 from 230.
Accordingly, the Applicant’s arguments are not persuasive, and the 35 USC § 103 rejections of claims 1-5 and 7-11 are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nakamura et al. (US 2018/0151268 A1) teaches an inorganic release layer 16.
Matsuura (US 2020/0113066 A1) teaches an inorganic release layer 14.
Yoshida et al. (US 2010/0248428 A1) teaches an inorganic material layer 5 (¶¶ 0108, 0128) interposed between support substrate 1 and semiconductor substrate 3A (¶ 0128, figs. 5f-5g: 5 arranged between 1 and 3A).
THIS ACTION IS MADE FINAL. 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 BRIAN TURNER whose telephone number is (571)270-5411. The examiner can normally be reached M-F 8am-5pm.
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/BRIAN TURNER/Examiner, Art Unit 2818
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