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 .
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 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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 17 March 2026. A preliminary amendment was filed on 14 November 2023 amending claims 1-3, 5-9, and 11-20. Claims 1-20 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 14 November 2023, 30 December 2024, 15 January 2026, and 01 July 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (product claims 1-19) in the reply filed on 15 May 2026 is acknowledged. Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings received on 14 November 2023 are acceptable.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 6, 7, 8, 10, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2021/131517 A1. A machine translation of WO ‘517 was relied upon for analysis.
Regarding claim 1, WO ‘517 discloses an adhesive sheet used for electronic components such as chips, see p. 4, [0005]. In an example, the adhesive includes an acrylic polymer reading on the adhesive binder resin, a hydroxyphenyltriazine ultraviolet absorber which has a maximum absorption at 336 nm, and an alpha-hydroxyketone photopolymerization initiator which has a maximum absorption at 365 nm, see p. 63, [0082]. UV laser light is used to subject the adhesive to actinic radiation, see p. 12-13, [0012-0013].
This anticipates the present claim, as the ultraviolet absorber compound absorbs light at a wavelength range within the claimed range of 250 to 350 nm, and the photoinitiator is activated by light at a different wavelength than that of the laser used to supply UV light for decreasing the adhesive strength of the adhesive sheet.
Regarding claim 3, the UV absorber compound is a hydroxyphenyltriazine ultraviolet absorber which is a triazine-based compound. See Example 1 at p. 63, [0082].
Regarding claim 6, Example 1 uses 3 parts by weight of the photopolymerization initiator compound based on 100 parts by weight of the adhesive base polymer, see p. 63, [0082].
Regarding claims 7 and 8, Example 1 uses an acrylic base adhesive polymer formed from 100 parts by weight of 2-ethyhexyl acrylate, 12.6 parts by weight of 2-hydroxyethyl acrylate, and 0.25 parts by weight of benzoyl peroxide polymerization initiator. 13.5 parts by weight of methacryloyloxyethyl isocyanate was added to carry out an additional reaction, see p. 61, [0078] and p. 63, [0082]. This includes a (meth)acryloyl group-containing isocyanate-based compound meeting the limitation of claim 7. The content of the 2-ethylhexyl acrylate component is 100 parts out of a total of (100+12.6+0.25+13.5) parts by weight, which is about 79.1 wt. % of the 2-ethyhexyl acrylate which is a C8 alkyl group containing (meth)acryl based monomer based on the total weight of the monomer mixture. This anticipates the claimed range.
Regarding claim 10, the adhesive used in Example 1 includes 12.6 parts by weight of 2-hydroxyethyl acrylate (which has a molecular weight of about 116.1 g/mol) and 13.5 parts by weight of methacryloyloxyethyl isocyanate (which has a molecular weight of about 155.1 g/mol). The molar amount of the isocyanate-based compound is about 80 mol% based on 100 mol% of the polar-group containing (meth)acrylate-based monomer.1
Regarding claim 14, WO ‘517 teaches that the adhesive is cured by irradiation, see p. 21, [0024]. The Examiner has interpreted this to mean fully cured (100% cured).
Regarding claim 15, as shown in Table 1 of the original document, the adhesive of Example 1 has an initial adhesion of 8.37 N/20 mm and an adhesion of 0.06 N/20 mm after being photocured. The adhesive force of 0.06 N/20 mm is about 7.8 gf/inch.2
Regarding claim 16, as shown in Table 1 of the original document, the adhesive of Example 2 has an initial adhesion of 2.43 N/20 mm (equivalent to A1) and an adhesion of 0.07 N/20 mm after being photocured (equivalent to A2). Using Equation 2, the value of (A1-A2)/(A1) is (2.43-0.07)/2.43 = 0.97 which is within the claimed range.
Regarding claim 17, as shown in Table 1 of the original document, the adhesive of Example 4 has an adhesion of 0.21 N/20 mm after being photocured (equivalent to 27.2 gf/inch).
Regarding claim 18, WO ‘517 teaches applying the adhesive composition to a substrate to form a film, see p. 15-16, [0016] and p. 51, [0063]. The adhesive sheet is used for electronic components such as chips, see p. 4, [0005]
Regarding claim 19, WO ‘517 further teaches that the adhesive sheet may be provided with a release liner on the outside of the adhesive layer (not shown in the figures), see p. 8-9, [0009].
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 2, 4, 5, 9, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/131517 A1. A machine translation of WO ‘517 was relied upon for analysis.
Regarding claim 2, WO ‘517 discloses an adhesive sheet used for electronic components such as chips, see p. 4, [0005]. The adhesive includes an acrylic polymer, a hydroxyphenyltriazine ultraviolet absorber and a photopolymerization initiator as described above, see Example 1 at p. 63, [0082].
WO ‘517 teaches suitable UV absorber compounds at p. 41 [0050] which include commercial products TINUVIN 400, TINUVIN 405, TINUVIN 460, TINUVIN 1577, ADEKA Stab LA-46, TINUVIN 479 and TINUVIN 477. ADEKA Stab LA-46 is 2-(4,6-diphenyl-1,3,5-triazine-2-yl)-5-[2-(2-ethylhexanoyloxy)ethyoxy]phenol, see id. ADEKA LA-46 is the same UV absorber compound used in Example 1 of the present specification, see p. 6, [0078] of the published application. Thus, using this compound as the UV absorbing compound will be capable of absorbing an excimer laser wavelength of 300 to 320 nm as claimed.
Note also that TINUVIN 400, TINUVIN 460, TINUVIN 405, and TINUVIN 479 are also disclosed as suitable UV absorbers in the present application, see p. 2, [0031] of the published application.
Regarding claim 4, WO ‘517 discloses an adhesive sheet used for electronic components such as chips, see p. 4, [0005]. In an example, the adhesive includes an acrylic polymer reading on the adhesive binder resin, a hydroxyphenyltriazine ultraviolet absorber which has a maximum absorption at 336 nm, and an alpha-hydroxyketone photopolymerization initiator which has a maximum absorption at 365 nm, see p. 63, [0082]. UV laser light is used to subject the adhesive to actinic radiation, see p. 12-13, [0012-0013].
The example uses 20 parts by weight of the UV absorber compound and 3 parts by weight of the photopolymerization initiator compound, see p. 63, [0082], for a ratio of 3:20 or 1:6.67 which is outside of the claimed range. However, WO ‘517 teaches other amounts of these compounds. The amount of photopolymerization initiator may be from 0.5 to 10 parts by weight, preferably 1 to 8 parts by weight, based on 100 parts by weight of the base adhesive polymer, see p. 36, [0044]. The amount of UV absorber compound is from 1 to 50 parts by weight, preferably 5 to 20 parts by weight. See p. 46, [0056].
Thus, it would have been obvious to have used amounts of the photopolymerization initiator and UV absorber compound in different amounts than exemplified to arrive at amounts which are within the claimed ratio. For example, using 8 parts by weight of the photopolymerization initiator and 10 parts by weight of the UV absorber is a weight ratio of 8:10 or 1:1.25 which is within the claimed range. More generally, the preferred ranges of initiator and absorber allow for their use in a weight range of from (1 to 8) to (5 to 20), for a ratio range of from 8:5 (1:0.625) to 1:20. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 5, WO ‘517 teaches using from 1 to 50 parts by weight of the UV absorber based on 100 parts by weight of the base adhesive polymer, which overlaps the claimed range. See p. 46, [0056].
Regarding claim 9, Example 1 uses an acrylic base adhesive polymer formed from 100 parts by weight of 2-ethyhexyl acrylate, 12.6 parts by weight of 2-hydroxyethyl acrylate, and 0.25 parts by weight of benzoyl peroxide polymerization initiator. 13.5 parts by weight of methacryloyloxyethyl isocyanate was added to carry out an additional reaction, see p. 61, [0078] and p. 63, [0082]. This includes a (meth)acryloyl group-containing isocyanate-based compound meeting the limitation of claim 7. The content of the hydroxyethyl acrylate component is 12.6 parts out of a total of (100+12.6+0.25+13.5) parts by weight, which is about 10.0 wt. % of the polar group-containing monomer based on the total weight of the monomer mixture. This is outside of the claimed range.
However, WO ‘517 teaches generally that the amount of the copolymerizable monomer should be 60 parts by weight or less (preferably 40 parts by weight or less) per 100 parts by weight of the base polymer, see p. 24-25, [0028]. It would thus have been obvious to have used a larger amount of the polar-group containing monomer to be within the claimed range of 15 to 40 parts by weight to arrive at the claimed invention.
Regarding claim 11, WO ‘517 teaches including from 0.5 to 10 parts by weight, preferably 1 to 8 parts by weight of a crosslinking agent based on 100 parts by weight of the base polymer of the adhesive, see p. 37, [0046].
Regarding claims 12 and 13, WO ‘517 teaches suitable UV absorber compounds at p. 41 [0050] which include commercial products TINUVIN 400, TINUVIN 405, TINUVIN 460, TINUVIN 1577, ADEKA Stab LA-46, TINUVIN 479 and TINUVIN 477. ADEKA Stab LA-46 is 2-(4,6-diphenyl-1,3,5-triazine-2-yl)-5-[2-(2-ethylhexanoyloxy)ethyoxy]phenol, see id. ADEKA LA-46 is the same UV absorber compound used in Example 1 of the present specification, see p. 6, [0078] of the published application. Thus, using this compound as the UV absorbing compound will be capable of meeting the UV transmittance limitations of claims 12 and 13.
Note also that TINUVIN 400, TINUVIN 460, TINUVIN 405, and TINUVIN 479 are also disclosed as suitable UV absorbers in the present application, see p. 2, [0031] of the published application.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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, Curtis Mayes can be reached on (571) 272-1234. 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.
/Scott R. Walshon/ Primary Examiner, Art Unit 1759
1 Sample calculation: 13.5 weight parts of methacryloyloxyethyl isocyanate ÷ 155.1 g/mol = 0.087 molar parts and 12.6 weight parts of 2-hydroxyethyl acrylate ÷ 116.1 g/mol = 0.108 molar parts. The molar ratio is thus 0.087 / 0.108 = about 80 mol% of the isocyanate compound based on 100 mol % of the polar acrylic monomer.
2 Sample calculation: 1 N = 101.97 gf and 1 inch = 25.4 mm. Thus 0.06 N ÷ 20 mm × (101.97 gf/N) × (25.4 mm / inch) = 7.77 gf/inch
Prosecution Insights