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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 30, 33 and 34 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 30 recites the limitation “the composition for temporary bonding” in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 30 does not previously recite “a composition for temporary bonding”. For purposes of examination, “the composition for temporary bonding” is being construed as “a composition for temporary bonding”.
Claims 33 and 34 depend from or otherwise include all limitations of claim 30 and are therefore also indefinite for the reasons set forth above with respect to claim 30.
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.
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.
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.
Claims 1-6, 10-15, 17-26 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Denki (Japanese Patent Publication No. JP 2014-091774, made of record by Applicant, machine language translation provided and cited below) in view of Kurimura et al. (Japanese Patent Publication No. JP 2007-246860 A, machine language translation provided and cited below).
Regarding claim 1, Denki is directed to an adhesive and a bonding/dis-bonding method (para [0001]), and to a (meth)acrylic resin composition for forming the adhesive (para [0016]). Although the recitation of "for temporary bonding" in claim 1 is a statement of future use that does not further limit this composition claim, it is noted that Denki is understood to disclose a composition that may be used for temporary bonding.
The composition of Denki includes a bifunctional (meth)acrylate monomer identified as component (B), such as 1,3-butylene glycol di(meth) acrylate (para [0024]), i.e., a (meth)acrylate not having a cyclic structure, i.e., component (A) of claim 1.
The composition of Denki further includes a component identified as (A) that is preferably bifunctional, having two (meth)acryloyl groups ([0018] of Denki) and having a phenol ether structure ([0018]-[0021] of Denki, methacrylate has a bisphenol structure).
The composition of Denki further includes a photo radical polymerization initiator as component D (para [0028] teaching two examples), thus disclosing component (C) of claim 1.
The composition of Denki is not disclosed as comprising a UV absorber. Kurimura, however, discloses a temporary fixing adhesive comprising a polyfunctional methacrylate and a photopolymerization initiator (Abstract of Kurimura) wherein the composition also comprises a a UV absorber to improvce weather resistance ([0059] of Kurimura). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to incorporate a UV absorber in the composition of Denki. One of skill in the art would have been motivated to do so in order to improve the weather resistance of the composition as taught by Kurimura ([0059] of Kurimura).
Regarding claim 2, Kurimura discloses that the UV absorber is one or more compounds selected from a benzotriazole compound and a hydroxyphenyltriazine compound ([0059] of Kurimura, UV absorber can be a benzotriazole; claim only requires one of the recited UV absorbers)
Regarding claim 3, some of the bifunctional (meth)acrylates (B) according to Denki (i.e., component (A) of the claims) have a molecular weight of 250 or more, e.g., 1,9-nonanediol di(meth)acrylate identified in para [0024]).
Regarding claim 4, some of the bifunctional (meth)acrylates (B) according to Denki (i.e., component (A) of the claims) do not have an alkyl ether structure, e.g., 1,3-butylene glycol di(meth)acrylate and 1,9-nonanediol di(meth)acrylate identified in para [0024].
Regarding claim 5, some of the bifunctional (meth)acrylates (B) according to Denki (i.e., component (A) of the claims) have an ester structure, e.g., 1,3-butylene glycol di(meth)acrylate (para [0024]).
Regarding claim 6, some of the bifunctional (meth)acrylates (A) according to Denki (i.e., component (B) of the claims) are liquid at room temperature (i.e., 23°C) and have a viscosity of 500 mPA*s or more (e.g., 2,2-bis(4-(methacryloxy-ethoxy)phenyl)propane (ethylene oxide 10 mol) and 2,2-bis(4-(methacryloxy-ethoxy)phenyl)propane (ethylene oxide 17 mol) identified at para [0021]).
Regarding claim 10, see para [0016] at page 9 of Denki disclosing bonding adhesive substrates together using the adhesive of Denki at 365 nm, thus disclosing component (C) having generating a radical with light having a wavelength of 350 nm or more.
Regarding claim 11, Kurimura discloses the composition for temporary bonding according to claim 1, wherein the component (C) is one or more selected from the group consisting of bis(2,4,6-trimethylbenzoyl)phenylphosphine oxide, 2,4,6-trimethylbenzoyl diphenylphosphine 1-yl)-bis(2,6-difluoro-3-(1H-pyrrol-1-yl)-phenyl)titanium, 2- benzyl-2-dimethylamino-l -(4-morpholinophenyl)-butan-l-on, 2-dimethylamino-2-(4- methylbenzyl)-1-(4-morpholin-4-ylphenyl)-butan-1-on, 1-[4-(phenylthio)phenyl]-1,2- octanedione 2-O-benzoyloxym, and 1-[9-ethyl-6-(2-methylbenzoyl)-9H-carbazol-3-yl]ethanone 1-(O-acetyloxime) ([0034] of Kurimura, claim only requires one of the recited initiators).
Regarding claim 12, Denki teaches it is preferable to contain 0.1 to 30 parts by mass of component (D) photopolymerization initiator per 100 parts by mass of total (meth)acrylate components (para 0016 at page 8), such range overlapping and thus rendering obvious the recited range of 0.01 to 5 parts by mass of the component (C) based on100 parts by mass of the total amount of the components (A) and (B).
Regarding claim 13, Denki teaches a ratio of its bifunctional (meth)acrylate not having a cyclic structure (B) to bifunctional (meth)acrylate having a cyclic structure (A) of approximately 50:50 at para [0016], page 8, a ratio falling within/overlapping the recited ratio, thus rendering obvious the recited ratio.
Regarding claim 14, Denki discloses the inclusion of (C), a monofunctional (meth)acrylate (para [0016]), thus disclosing the recited (E) a monofunctional (meth)acrylate.
Regarding claim15, Denki teaches it's monofunctional (meth)acrylate (C) is at 40 to 80 parts by mass relative to 100 parts by mass of the total of (meth)acrylate components (para [0016] at page 8), such range overlapping and thus rendering obvious the range recited in claim 15 of more than 0 parts by mass and 50 parts by mass or less of the component (E) based on the total 100 parts by mass of the components (A) and (B).
Regarding claim 17, Denki discloses the inclusion of a water-absorbing polymer (E) at para [0032]).
Regarding claim 18, Denki teaches its water-absorbing polymer (E) is preferably 0.1 to 30 parts by mass per 100 parts of the total of (meth)acrylate components (para [0035]), such range overlapping and thus rendering obvious the recited range of more than 0 parts by mass and 50 parts by mass or less based on the total 100 parts by mass of the components (A) and (B).
Regarding claim 19, Denki is silent as to the viscosity of the composition of Denki. However, the claimed materials are the same and presumed to therefore have the same properties. The burden is shifted to the applicant to prove otherwise. In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP Sections 2112-2112.02. The courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on prima facie obviousness" under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Regarding claim 20, Denki discloses using the (meth)acrylic composition of Denki as an adhesive at para [0045]).
Regarding claim 21, Denki discloses a bonded body at para [0045] created by using the (meth)acrylic resin composition of Denki to bond substrates together.
Regarding claim 22, Denki discloses a cured body at para [0045]).
Regarding claim 23, Denki discloses a cured body in the form of a layer disposed between substrates at para [0045]).
Regarding claims 24 and 25, the recitation in claim 24 of "wherein a mass reduction reaches 2% at a temperature of 250C or more under nitrogen atmosphere" and the recitation in claim 25 of "wherein a mass reduction reaches 2% at a temperature of 250C or more under reduced pressure environment of 30 to 100 Pa," are understood as being statements of a result of testing the cured body recited in claim 22, which is obtained by curing the composition recited in claim 1. Denki is silent as to performing such tests. However, the claimed materials are the same and presumed to therefore have the same properties. The burden is shifted to the applicant to prove otherwise. In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP Sections 2112-2112.02. The courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on prima facie obviousness" under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Regarding claim 26, Denki teaches a method for releasing a substrate from a cured adhesive, the method comprising: adhering the substrate using an adhesive composition ([0046] of Denki).
The composition of Denki includes a bifunctional (meth)acrylate monomer identified as component (B), such as 1,3-butylene glycol di(meth) acrylate (para [0024]), i.e., a (meth)acrylate not having a cyclic structure, i.e., component (A) of claim 1.
The composition of Denki further includes a component identified as (A) that is preferably bifunctional, having two (meth)acryloyl groups ([0018] of Denki) and having a phenol-ether structure ([0018]-[0021] of Denki).
The composition of Denki further includes a photo radical polymerization initiator as component D (para [0028] teaching two examples).
As set forth above with respect to claim 1, Kurimura provides motivation to include a UV absorber (i.e., component (D) of claim 1) in the composition of Denki thus rendering the composition of claim 1 obvious (see analysis of claim 1 above).
Regarding the recitation of "wherein the adhesive for temporary bonding is cured with light having a wavelength of 350 nm or more," Denki discloses irradiating with light at a wavelength of 365 nm to bond the substrates together (para [0045]).
Regarding the final recitation of “and releasing the substrate by laser light having a wavelength of less than 385 nm,” Denki discloses irradiating with light having at a wavelength of 365 nm to generate radicals from the unreacted (C) component, causing curing distortion and reducing the bonded area and the bond strength, so that the bonded body can be disassembled (para [0045]).
Regarding claim 29, the recitation of "whose application is UV laser release" is a statement of future use that does not further limit product claim 29 that depends from product claim 20, both directed to an adhesive, not a method of use.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Denki in view of Kurimura as applied to claim 1 above and further in view of Mihoya et al. (Japanese Patent Publication No. JP 2007-326917 A, machine language translation provided and cited below).
Regarding claim 9, Denki does not disclose the composition for temporary bonding, wherein the component (B) has a fluorene structure. Moreover, Denki discloses generally a polyfunctional (meth)acrylate having a bisphenol structure ([0022] of Denki) but does not specifically disclose such (Meth)acrylates having a fluorene structure. Mihoya, however., discloses a peelable (i.e., temporary) adhesive composition comprising a compound having at least two ethylenically unsaturated groups in one molecule including epoxy (meth)acrylates ([0036] of Mihoya). According to Mihoya, suitable epoxy (meth)acrylates include bisphenol A (meth)acrylates and bisphenol fluorene (meth)acrylates ([0043] of Mihoya). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use a bisphenol fluorene (meth)acrylate as the polyfunctional (meth)acrylate having a bisphenol structure in the modified composition since Mihoya establishes that it was known to use such compounds as polyfunctional (meth)acrylates in temporary adhesive compositions ([0043] of Mihoya). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Claims 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Denki in view of Kurimura as applied to claim 20 above and further in view of Goto et al. (U.S. Patent Application Publication No. 2013/0092326, made of record by Applicant).
Regarding claims 27 and 28, Denki discloses that its adhesive may be used in a high temperature atmosphere, for example, in a method for depositing thin electrically conductive and optically transparent films (e.g., ITO films) onto substrates (para [0048]). Denki further teaches the substrates may include quartz, glass and plastic (para [0050]).
A method according to Denki includes the steps of:
applying an adhesive according to Denki between two substrates (para [0045]), i.e., as a single layer of adhesive in the resulting bonded body;
irradiating with light at a wavelength of 365 nm (i.e., between 350 nm and 700 nm) to cure the adhesive and bond the substrates together (para [0045]); and
irradiating with light having at a wavelength of 365 nm (i.e., less than 385 nm) to generate radicals from the unreacted (C) component, causing curing distortion and reducing the bonded area and the bond strength, so that the bonded body can be disassembled (para [0045]).
Denki is silent as to substrates being bonded being a semiconductor wafer substrate and a support member and thus, also silent that the method is for producing a semiconductor wafer. Denki teaches any known energy irradiation source can be used (para [0046]), but does not explicitly teach using a laser.
Goto teaches a method for separating a bonded body that includes irradiating with light with a central wavelength of 1 to 300 nm (Abstract), i.e., less than 385 nm. The adhesive used to prepare the bonded body is formed by one type or two or more types of (meth)acrylate that have on or more (meth)acryloyl groups, the adhesive further including a radical photopolymerization initiator, including phosphine oxides (Abstract and paras [0050]-[0062]). Bonded parts according to Goto include optical lenses and silicon wafers (para [0087]). Goto further teaches excimer light used to irradiate the bonded part is not particularly limited as long as the center wavelength of the light source is in a range of 1 to 300 nm, the light source being for example a lamp or a laser (paras [0080]-[0087]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the method of Denki to utilize the adhesive of Denki on a semiconductor wafer in a method of bonding such wafer to another substrate, and to further utilize a laser for applying light at between 1 and 300 nm as taught by Goto for debonding the wafer from the substrate, as a predictable and suitable use for the acrylic adhesive of Denki. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Allowable Subject Matter
Claims 16, 32, 35 and 36 are 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.
Claims 30, 33 and 34 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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:
Regarding claim 16, the closest prior art is to Denki. Denki discloses a composition as recited in claim 1 except for the UV absorber which is suggested by Kurimura (see analysis of claim 1 above). Neither Denki, Kurimura nor any of the other prior art references of record teach or reasonably suggest a composition as recited in claim 16 not comprising a (meth)acrylate other than the component (A) and the component (B). Moreover, Denki discloses that the composition also comprises a mono functional (meth)acrylate (Abstract of Denki).
Regarding claim 30 (and 33-34 that depend therefrom), if claim 30 is amended to clearly recite that the first cured layer is obtained by curing the composition according to claim 1, such claim would be allowable as Shimada, although teaching the inclusion of a UV absorber in its composition, does not teach or suggest providing a UV absorber in a separate, second layer of a cured body. Furthermore, neither Shimada, Denki, nor the other prior art of record teach or suggest a component concentration distribution that varies in the thickness direction as recited in the claim.
Regarding claim 31, neither Shimada, Denki, nor the other prior art of record teach or suggest a cured body that includes a second cured layer that is a UV absorber located on the first cured layer and wherein a component concentration distribution varies in the thickness direction.
Regarding claim 32, neither Shimada, Denki, nor the other prior art of record teach or suggest a cured body having a second light heat converting cured layer.
Regarding claim 35, if this claim is amended to clearly recite that the composition applied to the wafer is the composition according to claim 1, such claim would be allowable as neither Shimada, Denki or the other prior art of record teach or suggest a method that includes the step of applying the composition according to claim 2 on the partially cured composition according to claim 1.
Regarding claim 36, if this claim is amended to clearly recite that the composition applied to a wafer is the composition according to claim 1, such claim would be allowable as neither Shimada, Denki or the other prior art of record teach or suggest a method that includes the step of applying the composition according to claim 2 on a transparent substrate followed by a step of firmly attaching faces of the wafer and the transparent substrate.
Response to Arguments
Applicant's arguments have been fully considered to the extent that they apply to the new grounds of rejection but they are not persuasive.
The applicant asserts that Denki does not disclose a UV absorber as recited in claim 1 (pg. 12, 1st full ¶ of the amendment). The Office Action, however, is relying upon the newly cited Kurimura reference to address this limitation.
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 CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746
Prosecution Insights