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 Objections
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not). In the instant case, the subject matter of claim 3 has been added to independent claim 2, claims 4-13 have been renumbered to 3-12, and newly added claims are numbered 13-20.
Misnumbered claims 3-20 been renumbered 4-21.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 8, 10 and 15-17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Each of claim 8 and claim 10 depends on itself, and therefore these claims fail to meet the requirements of 35 USC § 112(d).
For the purpose of compact prosecution, the Examiner has interpreted claim 8 to be renumbered as claim 9, and claim 10 to be renumbered as claim 11.
Each of clams 15-17 depend on claims 5 and 6. However, it is unclear if the claim dependence is based on the claims as originally number, or the claims as currently numbered. Since the scope of dependent claims includes the subject matter of the parent claim, it is unclear if claims 15-17 include the subject matter of currently-numbered claims 4-5, or currently-numbered claims 5-6.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sugo et al. (PG Pub. No. US 2014/0231983 A1) in view of Matsuno et al. (PG Pub. No. US 2019/0375005 A1).
Regarding claim 2, Sugo teaches a method for manufacturing a film-shaped adhesive (¶ 0002), the method comprising:
mixing a raw material varnish (¶ 0060) comprising silver particles (¶ 0128 & table 2: at least examples 6-1 to 6-3 include solutions with silver particles) under temperature conditions of 50°C or higher (¶ 0128: compounds mixed at 90° C) and preparing an adhesive varnish comprising the silver particles and a thermosetting resin component (¶¶ 0043-0044 & table 2: solution prepared with silver particles and thermosetting resin); and
forming the film-shaped adhesive by using the adhesive varnish (¶¶ 0128-0129: film-shaped adhesive formed with varnish composition).
Sugo does not explicitly teach the varnish further comprises organic solvent, or the silver particles are silver particles manufactured by a reduction method.
However, Sugo teaches additional embodiments which include mixing a raw material varnish, metal particles, and organic solvent (¶¶ 0064, 0126 & table 1: at least examples 3-1 to 3-3 include solutions with silver particles and organic solvent).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the method of Sugo to include organic solvent, as a means to provide solution properties such as dissolving, kneading, and uniform dispersion (¶ 0064).
Sugo as modified above is silent to wherein the silver particles are silver particles manufactured by a reduction method.
Matsuno teaches a solution containing silver particles, the silver particles manufactured by a reduction method (¶¶ 0114, 0117).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to manufacture the silver particles of Sugo by a reduction method, as a means to provide uniform size of silver particles (Matsuno, ¶ 0123).
Regarding claim [[3]] 4, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to claim 2, comprising silver particles (Sugo, ¶ 0124, table 2).
Sugo in view of Matsuno as applied to claim 2 above is silent to wherein the silver particles are silver particles that are surface-treated by using a surface treatment agent.
However, Matsuno teaches a solution containing silver particles, the silver particles are surface-treated by using a surface treatment agent (¶¶ 0114, 0117).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to treat the silver particles of Sugo with a surface treatment agent, as a means to provide uniform size of silver particles (Matsuno, ¶ 0123).
Regarding claim [[4]] 5, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to claim 2, wherein a content of the silver particles is 50% to 95% by mass based on a total solid content of the adhesive varnish (table 2: 60%).
Regarding claim [[5]] 6, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to claim 2, wherein the adhesive varnish further contains an elastomer (¶ 0036: thermoplastic resin).
Regarding claim [[6]] 7, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to claim 2, wherein the thermosetting resin component includes an epoxy resin and a phenol resin (table 2: curable resin, curing agent).
Regarding claim [[7]] 8, Sugo in view of Matsuno teaches a method for manufacturing a dicing-die bonding integrated film (¶ 0125), the method comprising:
preparing the film-shaped adhesive obtainable by the method according to claim 2 (¶¶ 0127-0128), and a dicing tape (¶ 0071: 11) comprising a base material layer (¶ 0071: 1) and a pressure-sensitive adhesive layer (¶ 0071: 2) provided on the base material layer (fig. 1: 2 provides on 1); and
sticking together the film-shaped adhesive (¶ 0071: 3) and the pressure-sensitive adhesive layer of the dicing tape to form a dicing-die bonding integrated film (fig. 1: 3 disposed on 11) including the base material layer, the pressure-sensitive adhesive layer, and a bonding adhesive layer formed from the film-shaped adhesive, in this order (fig. 1: 1, 2, and 3 arranged in order).
Regarding claim [[8]] 9, Sugo in view of Matsuno teaches a method for manufacturing a semiconductor device, the method comprising:
sticking a semiconductor wafer (¶ 0102: 4) to the bonding adhesive layer of the dicing-die bonding integrated film obtainable by the method according to claim 8 (fig. 1: 4 disposed on integrated film 3/11);
producing a plurality of singulated adhesive piece-attached semiconductor chips by dicing the semiconductor wafer with the bonding adhesive layer stuck thereto (¶ 0104, fig. 3: wafer 4 is cut into a prescribed size and individualized, and a semiconductor chip 5 is produced with 3 adhered to bottom);
adhering the adhesive piece-attached semiconductor chips on a support member (¶ 0107: adherend 6), with the adhesive piece interposed therebetween (fig. 3: 5 adhered to 6 with 3 interposed); and
thermally curing the adhesive piece in the adhesive piece-attached semiconductor chip adhered to the support member (¶ 0109: heat treatment applied to 3).
Regarding claim [[13]] 14, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to claim 2, wherein the silver particles having an average particle size of 0.01 to 10 um (Sugo, ¶ 0124 & Matsuno, ¶ 0086).
Regarding claim [[14]] 15, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to claim 2, wherein a content of the thermosetting resin component is 0.1% by mass or more and 30% by mass or less based on the total amount of the film-shaped adhesive (Sugo, ¶ 0047).
Regarding claim [[15]] 16, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to claim [[6]] 7 wherein a content of the thermosetting resin component is 0.1% by mass or more and 30% by mass or less based on the total amount of the film-shaped adhesive (Sugo, ¶ 0047).
Regarding claim [[16]] 17, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to claim [[5]] 6 wherein the elastomer comprises at least one selected from the group consisting of a polyimide resin, an acrylic resin, a urethane resin, a polyphenylene ether resin, a polyetherimide resin, a phenoxy resin, and a modified polyphenylene ether resin (Sugo, ¶ 0044).
Regarding claim [[17]] 18, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to claim [[5]] 6 wherein content of the elastomer is 0.1% by mass or more and 15% by mass or less based on the total amount of the film-shaped adhesive (Sugo, ¶ 0047).
Regarding claim [[18]] 19, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to claim 2, wherein forming the film-shaped adhesive by using the adhesive varnish comprises applying the adhesive varnish on a support film (Sugo, ¶ 0063: adhesive composition applied onto base separator).
Regarding claim [[19]] 20, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to claim [[18]] 19 further comprising, after applying the adhesive varnish on a support film, heating (Sugo, ¶ 0109) and drying the organic solvent (Sugo, ¶ 0063).
Regarding claim [[20]] 21, Sugo in view of Matsuno teaches the method for manufacturing a film-shaped adhesive according to The method for manufacturing a film-shaped adhesive according to wherein a thickness of the film-shaped adhesive is adjusted to be 3 um or more and 200 um or less (Sugo, ¶ 0016).
Response to Arguments
Applicant's arguments filed 5/5/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that “The intended use of the silver particles of the present invention and Matsuno are entirely different”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, both Sugo and Matsuno teach silver particles. Sugo teaches the shape of the silver particles is not limited (¶ 0057: flake, needle, filament, sphere, scale, at least some of which are flat), and Matsuno teaches the silver particles have a flat shape as well as others (¶ 0081). Therefore, the reduction method of Matsuno is capable of providing silver particles suitable for the method of Sugo.
Regarding the Applicant’s argument stating:
“Accordingly, applicant submits that Matsuno is not analogous art, as it is neither in the same field of endeavor as the present invention nor reasonably pertinent to the particular problem faced by the inventor”, the Examiner respectfully disagrees, as Matsuno teaches a method for producing silver particles.
Regarding the Applicant’s argument stating:
“Matsuno's paragraph [0123] discusses the temperature conditions of a mixed solution during the flat silver particle manufacturing step (see paragraph [0114] et seq. of Matsuno), stating that when the temperature is 100 °C or lower, the particle sizes of the silver particles are likely to be uniform. This passage relates to controlling the temperature during the synthesis of flat silver particles in an aqueous solution, not to the selection of a manufacturing method for silver particles to be used in a film-shaped adhesive. A person of ordinary skill in the art of semiconductor film adhesives would have no reason to look to the antireflection optical member technology of Matsuno for guidance on selecting silver particles for a die bonding film”, the Examiner respectfully disagrees. Sugo teaches a method utilizing silver particles, and Matsuno teaches a method for producing silver particles capable of, or suitable for, use in the method of Sugo.
Regarding the Applicant’s argument stating:
“A person of ordinary skill in the art, even if aware of Matsuno, would not have been motivated to apply Matsuno's flat silver particle manufacturing technique to the film adhesive for semiconductor devices of Sugo et al. because (1) the flat particle shape
taught by Matsuno is unsuitable for the film-shaped adhesive application of Sugo et al., where particle shape affects film-forming properties and adhesion, and (2) the nanoscale thickness of Matsuno's particles (3-50 nm) is orders of magnitude smaller than the particle sizes contemplated in Sugo's film adhesive (average particle size of 0.001 times or more the thickness of the film adhesive; see Sugo, paragraph [0058]), and (3) Matsuno provides no teaching or suggestion that using reduction-method silver particles in a film adhesive varnish mixed at 500C or higher would lead to sintering of the silver particles and improved thermal conductivity”, the Examiner respectfully disagrees. Sugo discusses various shapes are suitable for use as silver nanoparticles, some of which are flat (Sugo, ¶ 0057: at least flake and scale shapes are substantially flat). Matsuno teaches a method of producing flat silver particles (¶ ¶0128-0129).
Regarding the Applicant’s argument stating:
“Thus, in Sugo et al., the use of silver particles (let alone silver particles manufactured by a reduction method), an organic solvent, and a mixing temperature of 50°C or higher are found in separate, distinct embodiments. The office action has not demonstrated any apparent reason why these disparate embodiments of Sugo et al. should be combined, much less also combined with Matsuno”, the Examiner respectfully disagrees. ¶ 0126 & Table 1 of Sugo discloses examples 3-1 to 3-3 include silver particles (ES6000), organic solvent (methylethylketone) in a mixer, and other embodiments in which conductive particles and varnish are mixed at 50 °C or higher. Sugo further teaches pasting the mixture at 40 °C (¶ 0138), at least suggesting mixing temperatures, including examples 6-1 to 6-3, above 40 °C.
Accordingly, the Applicant’s arguments are not persuasive, and the rejections of record are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nitta et al. (US 2021/0317343 A1) teaches silver particles manufactured by a reduction method (¶ 0116) suitable for use in an adhesive film composition (¶ 0012).
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 BRIAN TURNER whose telephone number is (571)270-5411. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eva Montalvo can be reached at 571-270-3829. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN TURNER/Examiner, Art Unit 2818
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