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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-8, and 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kurihara et al. (US Serial No. 2019/0088528), in view of Hashimoto et al. (US Serial No. 2005/0191456), as evidenced by Tsujihata et al. (US Serial No. 2014/0023718).
Regarding claims 1, 3, 5, 6; Kurihara et al. teaches an ultraviolet curable adhesive layer [0248] prepared from ethyl acrylate, 2-ethylhexyl acrylate, methyl acrylate, glycidyl acrylate, which is substituted by maleic acid (pKa1 = 1.75) [0130], and benzoyl peroxide (radical polymerization initiator) [0248].
Kurihara et al. fails to teach the composition further comprises 0.02-2.0% by weight of an amine-base polymerization inhibitor. Hashimoto et al. teaches an adhesive sheet for wafer processing, comprising a radiation curing type adhesive layer, wherein the radiation curing type adhesive comprises a radical polymerization initiator, such as phenothiazine [0048]. Hashimoto et al. teaches the radical polymerization initiator is employed in an amount of 500 ppm (0.05 wt%) based on the total composition [Ex2, 0078]. Kurihara et al. and Hashimoto et al. are analogous art because they are both concerned with the same field of endeavor, namely adhesive layer compositions suitable for use in wafer processing. At the time of filing, a person of ordinary skill in the art would have found it obvious to add 0.05 wt% of a radical polymerization initiator (e.g. phenothiazine), as taught by Hashimoto et al., to the adhesive composition of Kurihara et al., and would have been motivated to do so in order to suppress polymerization during storage, thus increasing storage stability, as suggested by Hashimoto et al. [0009].
Tsujihata et al. provides evidence that maleic acid has a pKa1 = 1.75 [0078].
Regarding claim 4; Kurihara et al. teaches, in the preferred embodiment, employing 5 parts glycidyl acrylate, which is substituted by maleic acid; thus the acid is present in an amount of 1.4 wt% (as calculated by Examiner) [0248].
Regarding claim 7; the Examiner makes note that the claimed limitation is merely further defining an optional component, wherein the prior art of record teaches a monomer.
Regarding claim 8; Kurihara et al. teaches the composition may comprise a (meth)acrylamide monomer, such as N-methylol(meth)acrylamide [0129-0103].
Regarding claim 10; Kurihara et al. does not explicitly teach the composition has a viscosity of 200 to 10000 mPa·s at 25°C. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. According to the original specification, the ultraviolet curable resin comprising: a monomer and/or an oligomer having a polymerizable unsaturated double bond; a photopolymerization initiator; a polymerization inhibitor; and an acid having an acid dissociation constant (pKa1) in pure water of 4.0 or less yields viscosity of 200 to 10000 mPa·s at 25°C [0014]. Therefore, the claimed effects and physical properties, i.e. viscosity at 25°C, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Regarding claims 11-12; Kurihara et al. teaches a cured film (i.e. product) obtained by laminating the ultraviolet curable adhesive resin (i.e. laminate) [0003, 0030, 0185].
Regarding claim 13-14; Kurihara et al. teaches method for manufacturing a semiconductor device, comprising at least: a step (A) of preparing a structure including a semiconductor wafer having a circuit-formed surface and an adhesive film attached to the circuit-formed surface side of the semiconductor wafer; a step (B) of back grinding a surface on a side opposite to the circuit-formed surface side of the semiconductor wafer; and a step (C) of radiating ultraviolet rays to the adhesive film and then removing the adhesive film from the semiconductor wafer, wherein, as the adhesive film, an adhesive film including a base material layer and an ultraviolet- curable adhesive resin layer provided on one surface side of the base material layer, the adhesive resin layer including an ultraviolet-curable adhesive resin, wherein ultraviolet rays having a main wavelength of 365 nm are radiated to the adhesive resin layer using a high-pressure mercury lamp, thereby photocuring the adhesive resin layer.
Kurihara et al. fails to explicitly teach the same order of steps as required by the instant claim. However, the selection of any order of mixing ingredients is a prima facie case of obviousness in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930), see MPEP §2144.04. Therefore, it would have been obvious to one having ordinary skill in the art, at the time of the invention, to add the photoinitiator with the hydrophobic monomer or after the addition of the hydrophobic monomer, and achieve the same expected outcome of results.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kurihara et al. (US Serial No. 2019/0088528), in view of Hashimoto et al. (US Serial No. 2005/0191456), as evidenced by Tsujihata et al. (US Serial No. 2014/0023718), as applied to claim 1, and further evidenced by Bartholomew et al. (US Serial No. 2012/0171915)
Kurihara et al. in view of Hashimoto et al. render obvious the basic claimed composition, as set forth above, with respect to claim 1.
Regarding claim 2; Kurihara et al. teaches an ultraviolet curable adhesive layer prepared from ethyl acrylate (SP = 10.20), 2-ethylhexyl acrylate (SP = 9.22), and methyl acrylate (SP = 10.56) [0248]. Phenothiazine has a SP = 12.3 [instant spec, 0049]. Thus, the absolute value different between a solubility parameter (SP) of the inhibitor and all the monomers is less than 4.0 (cal/cm3)1/2.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kurihara et al. (US Serial No. 2019/0088528), in view of Hashimoto et al. (US Serial No. 2005/0191456), as evidenced by Tsujihata et al. (US Serial No. 2014/0023718), as applied to claim 1, and further in view of Miki et al. (US Serial No. 2013/0029147).
Kurihara et al. in view of Hashimoto et al. render obvious the basic claimed composition, as set forth above, with respect to claim 1.
Regarding claim 9; Kurihara et al. teaches the composition may comprise a (meth)acrylamide monomer, such as N-methylol(meth)acrylamide [0129-0103], however fails to teach the (meth)acrylamide monomer having surface tension of 30 to 38 mN/m. Miki et al. teaches a pressure sensitive adhesive sheet, comprising a mixture of (meth)acrylate monomers [0057-0059], further comprising an acrylamide, such as N-methylol(meth) acrylamide and N,N-diethyl acrylamide (surface tension of 33.13 mN/m [instant spec 0036]) [0074]. Therefore, Miki et al. teaches that N-methylol(meth) acrylamide and N,N-diethyl acrylamide are functional equivalents for the purpose of functioning as a (meth)acrylamide monomer in adhesive film compositions. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
In the alternative, Kurihara et al. and Miki et al. are analogous art because they are both concerned with the same filed of endeavor, namely compositions suitable for use as adhesive layers. At the time of filing, a person of ordinary skill in the art would have been motivated to add the N,N-diethyl acrylamide (surface tension of 33.13 mN/m [instant spec 0036]), as taught by Miki et al., to the adhesive composition of Kurihara et al., and would have been motivated to do so in order to achieve high adhesive force and adhesion reliability, as suggested by Mika et al. [0063; 0074].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/269157 in view of Hashimoto et al. (US Serial No. 2005/0191456). Although the conflicting claims are not identical, they are not patentably distinct from each other because they are both drawn to the same art specific subject matter, namely an ultraviolet curable resin composition comprising a monomer and/or oligomer, a photopolymerization initiator, and an acid. The essential difference between the instant application and the copending application is that the instant application further requires 0.02-2.0 % by weight of a amine-based polymerization inhibitor. Hashimoto et al. teaches an adhesive sheet for wafer processing, comprising a radiation curing type adhesive layer, wherein the radiation curing type adhesive comprises a radical polymerization initiator, such as phenothiazine [0048]. Hashimoto et al. teaches the radical polymerization initiator is employed in an amount of 500 ppm (0.05 wt%) based on the total composition [Ex2, 0078]. At the time of filing, a person of ordinary skill in the art would have found it obvious to add 0.05 wt% of a radical polymerization initiator (e.g. phenothiazine), as taught by Hashimoto et al., to the composition of the copending application, and would have been motivated to do so in order to suppress polymerization during storage, thus increasing storage stability, as suggested by Hashimoto et al. [0009].
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767